Refusal of application for a European Union trade mark

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

Alicante, 28/04/2017

WILSON GUNN

5th Floor

Blackfriars House

The Parsonage

Manchester M3 2JA

REINO UNIDO

Application No:	016176109
Your reference:	T/61720.EM-DAS/RZ
Trade mark:	ICONIC LIGHTS
Mark type:	Figurative mark
Applicant:	LSE Retail Group Limited Queens Street Salford M3 7DQ REINO UNIDO

The Office raised an objection on 03⁄01⁄2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 02⁄03⁄2017the use of teh 000000000000000002:"¿beyond the a value statement. The applicant points out that the use of teh 00000000000000000czz, which may be summarised as follows:

1. The applicant argues that the Office has disregarded the mark applied for as a whole and has instead indulged in a simplistic dictionary-based analysis of the meaning of each word taken on its own. This has led the Office to a conclusion that the information will be considered ‘first and foremost’ as laudatory information aimed to communicate a value statement. The applicant points out that the use of the expression ‘first and foremost’ implies that there is a functioning beyond the advertising information conveyed.

2. The meaning of the word ‘ICONIC’ can be compared with the meaning of the word ‘ROYAL’, which has been used as a trade mark for a vast majority of goods and services although in the past the term may have implied some connection with royalty. Similarly, the literal use of the word ‘ICONIC’ is understood to denote an icon, i.e. ‘a person or thing regarded as a representative symbol or as a worthy veneration’. In the applicant’s view, the reasonably informed consumer will not attribute this word the above mentioned meaning when it is used in relation to mass consumption goods, such as lighting products.

3. The Office has completely disregarded the significance of the additional figurative elements on the overall impression conveyed to the relevant public. The applicant points out that the sign consists of an arrangement of the words ‘ICONIC’ and ‘LIGHTS, the first one being emphasized (the term is emboldened in a significantly larger font that makes up the largest surface area of the mark; the most striking is the distinctive spherical device that forms the dot above the second letter ‘I’). Given the differing emphasis on the individual terms, the mark will not be perceived as a phrase that is intended to communicate mere promotional laudatory information.

4. The applicant submitted an extract from its brand book to show that the sign applied for functions as an indicator of origin.

5. The applicant notes that the use of simplistic stylisation does not in itself give a justifiable reason to disregard the figurative elements. In addition, it is now on trend for brand owners to adopt more simplistic logos to adopt their businesses. The applicant submitted examples of some simple brands and information from a website https:⁄⁄www.smashinmagazine.com about principles of effective logo design.

6. The applicant refers to various EUTMs containing the word ‘ICONIC’, which were accepted by the Office, such as EUTM ‘ICONIC GAMES’ (No 4 980 405), EUTM ICONIC PLACES (No 15 306 921).

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.

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (10/10/2008, T‑387/06 - T‑390/06, Pallet, EU:T:2008:427, § 27).

As the General Court has held, the marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T 348/02, ‘Quick’, paragraph 29).

As correctly pointed out by the applicant, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, ‘Orange und Grau’, EU:T:2003:202, § 32). Taking account the abovementioned principles, in the Notice of grounds for refusal dated 03⁄01⁄2017 the Office provided definitions of the words ‘ICONIC’ and ‘LIGHTS’. Accordingly, it was established that the relevant consumer will understand the words as a meaningful expression: a piece of equipment that produces light, such as a lamp or a bulb, which are known and acknowledged especially for their distinctive excellence.

The applicant argues that the word ‘ICONIC’ has the following meaning: ‘a person or thing regarded as a representative symbol or as a worthy veneration’; however, in relation to mass consumption goods, such as lighting apparatus, a reasonably well-informed consumer will not attribute the word ‘ICONIC’ the abovementioned meaning.

Admittedly, the word ‘ICONIC’ might have the meaning on which the applicant has focused its assessment, however in that regard it must be pointed out 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, emphasis added.)

Considering the above, the Office maintains that based on the information extracted from the Merriam Webster Dictionary it is reasonable to assume that the word ‘ICONIC’ will be perceived as meaning ‘widely known and acknowledged especially for distinctive excellence’.

Therefore, the Office maintains that, the relevant public would perceive the expression ‘ICONIC LIGHTS’ as a promotional laudatory message, which merely serves to highlight positive aspects of the goods and services concerned, namely that the goods, which cover a high variety of lighting apparatus, such as ceiling lights, solar lights, shaving lights, halogen light bulbs, candle bulbs, are known and acknowledged especially for their distinctive excellence, in particular what concerns their style and that the services (retail, wholesale and information services) are related to such goods.

The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of syntax, grammar, phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind. There are no mental steps required to deduce the meaning of the words ‘ICONIC LIGHTS’.

As regards the stylisation of the applicant’s sign , the Office acknowledges that the sign applied for contains certain figurative elements that confer upon it a degree of stylisation, that is, the typeface, the arrangement of the words in a square-shaped figure and three overlapping circles above the second letter ‘I’ in the word ‘ICONIC’. However, these elements will not readily lead the consumer to perceive the sign overall as having a meaning as a trade mark in the sense of making it possible to assign, in isolation or jointly, a commercial origin to the goods in question. Consumers will perceive these elements simply as ornamental, decorative elements, and therefore the sense of the generic, laudatory expression will not be changed by them and they will likewise not confer the minimum degree of distinctive character on the whole (decision of 23/02/2015, R 1899/2014-4, § 28).

The applicant has submitted an extract from its website to demonstrate that the sign functions as an indicator of origin; it however must be recalled that distinctive character of a trade mark must be assessed of a representation of a sign as filed and in relation to the goods or services in respect of which registration of the sign is sought. Therefore, for this purpose it is not relevant how the applicant is using the sign. Likewise, the examples of various marks with a simplistic stylization used in the market are of no relevance for these proceedings.

Finally, as regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 176 109 is hereby rejected for all the goods and 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.

Sandra KASPERIŪNAITĖ