Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 17/12/2016

LORENZ SEIDLER GOSSEL

Rechtsanwälte Patentanwälte Partnerschaft mbB

Widenmayerstr. 23

D-80538 München

ALEMANIA

Application No:	015625106
Your reference:	02124-16La/rt
Trade mark:	SMART E-BIKE
Mark type:	Figurative mark
Applicant:	Airwheel Holding Limited FLAT/RM A30, 9/F SILVERCORP INTERNATIONAL TOWER, 707-713 NATHAN ROAD MONGKOK, KOWLOON REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 26/07/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for, , is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 19/10/2016, which may be summarised as follows:

1. The sign applied for has distinctive figurative elements, namely a stripe that is not visible in all letters but only in the first elements and a letter style/typeface that is uncommon and fanciful.

2. The element ‘smart’ is fanciful and ambiguous. The word ‘smart’ refers to a person, not to a device, and is not used in relation to goods or products. The applicant refers to several decisions relating to marks containing the element ‘smart’, issued in 2001, 2002 and 2009, all in German (no translation into English was submitted) to support its claims. According to the applicant, the word ‘smart’ was deemed to be, at most, allusive in those decisions. Furthermore, there are numerous trade mark registrations containing the element ‘smart’; the applicant referred to several such European Union trade mark registrations.

3. The expression is obviously not descriptive in relation to the goods at issue. The combination ‘smart e-bike’ is not common and is unusual. In particular, this is because the element ‘smart’ refers to a person, whereas the element ‘bike’ is not a person.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The applicant argues that the sign applied for has distinctive figurative elements. It must therefore be established whether or not this stylisation changes the perception of the mark, which consists only of descriptive/non-distinctive elements, from the point of view of reasonably attentive average consumers. The Office is of the opinion that this is not the case. The sign’s figurative elements merely consist of the use of bold letters in a fairly standard typeface and a thin line at the bottom of all the letters except the last one. The Office considers that these figurative elements will not prompt the relevant consumer to perceive them as characteristics of significance in terms of a trade mark, in that they allow, either on their own or in combination, a commercial origin to be assigned to the goods that feature the trade mark. The figurative elements do not bring any distinctive character to the mark applied for and would not make a lasting impression. These elements do not have any aspect, in particular in terms of fantasy or the way in which they are combined, that will enable the mark to fulfil its essential function as regards the goods applied for (see, for analogy, judgment of 15/05/2014, T‑366/12, Yoghurt-Gums, §30-31).

The applicant argues that the word ‘smart’ is fanciful, ambiguous and not used in relation to devices, but rather to refer to a person. The Office finds this statement incorrect and rather surprising. In the modern world, in which smart devices are ubiquitous (e.g. smart TVs, smartphones; smart is also often used to describe even objects that are not devices in the traditional sense, such as smart paint or smart clothing), such a statement is simply not understandable.

The word ‘SMART’ is a basic English word. The applicant’s argument that the term ‘SMART’ describes the intellectual capabilities of humans, but not the characteristics of goods, is totally incorrect (13/10/2016, R 590/2016-1, SMART RETAIL SECURITY). It is well known that the term ‘SMART’ is frequently used as an indicator of sophisticated goods or services, mainly those goods or services that operate using artificial intelligence or that have a special technical function. In that sense, this term is commonly used in words or phrases, such as ‘smart TV’, ‘smartphone’, ‘smart watch’ or ‘smartcard’, to describe televisions, mobile phones, watches and cards that have certain ‘intelligent additional functions’ (see also 11/12/2013, T‑123/12, Smartbook, EU:T:2013:636). In the field of technology, the adjective ‘SMART’ is understood as ‘operating as if by human intelligence by using automatic control’. The applicant’s argument that the term ‘SMART’ describes the intellectual capabilities of humans, but never the characteristics of goods, is clearly totally unfounded. Moreover, it is irrelevant that this is not a mark in which a verb is conjoined to indicate human activities to be performed (13/10/2016, R 590/2016-1, SMART RETAIL SECURITY).

Even if the word ‘smart’ could be somewhat ambiguous in relation to some goods whose smart features are less known (e.g. smart paper), this is clearly not the case in relation to the goods and services at issue, which are various software, devices, apparatus and vehicles that either commonly include ‘smart’ features (e.g. photography, cameras) or will be expected to include some smart feature.

Therefore, the Office considers that the relevant public would not have to go through various mental steps to perceive a specific link between the expression and the goods in question. No intellectual quantum leap or effort is needed on the part of the English-speaking public to ascertain the combined meaning of the words ‘smart’ and ‘e-bike’, as their combined meaning is straightforward and direct.

The fact that, in the past, some institutions (including EUIPO) have considered this word distinctive only reflects the fact that the word ‘smart’ may have had a certain degree of distinctiveness some time ago, as ‘intelligent’ features were not omnipresent. However, they have become ubiquitous and ‘smart’ features are increasingly common in a wide variety of goods and services.

Furthermore, the office cannot comment on the decisions that are in German, as the applicant did not submit any translations of these documents.

As regards the applicant’s argument regarding previous marks containing the word element ‘SMART’, whether or not the Office was right in accepting these other marks is not at issue in the present proceedings. On the contrary, there are various decisions of the Boards of Appeal that have confirmed refusal for word combinations containing the term ‘SMART’ because of their reference to ‘intelligent’ products (see decisions of the Boards of Appeal of 24/05/2004, R 688/2003-1, SMARTDRIVE; of 09/11/2004, R 436/2004-1, SMART DEVICE MONITOR; of 21/09/2004, R 242/2003-4, SMART BUY; of 04/07/2006, R 1239/2005-4, SMARTPRACTICE; of 01/08/2006, R 392/2005-4, SMART BOARD; of 26/07/2007, R 303/2007-2 SMARTSUCTION; of 20/11/2007, R 1181/2007-4 SMART STRUT; of 07/01/2008, R 732/2007-4 SMARTSOUND; and of 09/12/2008, R 997/2008-4, SMARTCOOL). In any case, it is settled case-law that the legality of the decisions of the Office must be assessed solely on the basis of the EUTM Regulation, as interpreted by the EU courts, and that an applicant cannot rely, in support of his claim, on purportedly more lenient decisions taken in favour of another party (see judgment of 27/02/2002, T‑106/00, Streamserve, § 66 and 67).

As regards the alleged distinctiveness of the signs as a whole the Office notes that for a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31). The Office considers that, in the present case, the combination of the descriptive elements does not result in any expression that is distinctive and is more than just a sum of its parts.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The elements that are combined in the present case, namely ‘smart’ and ‘e-bike’, are meaningful terms and together refer to bikes that can be powered by electricity or propelled by pedals that are programmed to be capable of some independent action (in Class 12) or, as in case of pushchairs/strollers, designed to be used with such bikes. In relation to the goods Class 9, the sign will be seen as indicating merely that they are designed to be used with such bikes and, in relation to the services in Class 35, it will be seen as a subject matter of the services (e.g. promotion of e-bikes, comparison of prices of ‘e-bikes).

As regards the argument that the combination ‘smart e-bike’ is not usual, the Office refers to the case-law, which indicates that, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The applicant claims that the mark is obviously not descriptive; however, its arguments predominantly relate to the distinctiveness of the word ‘smart’ and the figurative elements. As explained above, the word ‘smart’ and the figurative elements of the sign are entirely non-distinctive and are not capable on their own, or in combination with each other and other elements, of functioning as a trade mark.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 625 106 is hereby rejected for all the services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Vita VORONECKAITE