Refusal of application for a European Union trade mark

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

Alicante, 15/09/2017

MÜLLER FOTTNER STEINECKE Rechtsanwalts- und Patentanwaltspartnerschaft mbB

Prielmayerstr. 3

D-80335 München

ALEMANIA

Application No:	016461923
Your reference:	SO56A12/UM
Trade mark:	DOG+
Mark type:	Word mark
Applicant:	Sony Mobile Communications Inc. 4-12-3 Higashi-shinagawa, Shinagawa-ku Tokyo 140-0002 JAPÓN

The Office raised an objection on 21/03/2017 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 30/05/2017, which may be summarised as follows:

1. A limitation of the goods and services applied for

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 waive the objection for the following services:

Class 39 Providing information relating to the location of things by using telecommunication devices.

The objection is maintained for the remaining services.

A limitation of the goods and services applied for

The applicant has requested to limit the goods and services. However the Office notes that some of the limitations proposed cannot be accepted. The Office objected to all the goods and services of the application in three classes: class 9, class 18 and class 39.

The applicant requested class 18 to be entirely deleted. The request has been accepted and this class will be deleted.

A number of amendments, intended to limit the scope of protection of classes 9 and 39 were put forward. In this regard the Office notes that most of the limitations proposed in class 9 cannot be accepted, because in actual fact they change the scope of protection of the goods and not limit the scope. Thus, save for the good ‘electronic collars to collect information of animals’, which was deleted in its entirety, the other goods for which a limitation has been requested cannot be accepted. The deletion of the word ‘animals’ and instead being replaced by things/objects is not deemed to be a limitation. In actual fact this amendment changes the scope of protection of the goods. ‘Things/objects’ is not considered to have a narrower scope than ‘animals’ and therefore the amendment is not considered to be a limitation, but a change of scope. For the foresaid reasons class 9 will be rejected in its entirety.

In relation to class 39, the limitation is a valid one and thus the limitation will be done which will have the effect of overcoming the objections raised pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR. The application was filed with the said services: Providing information relating to the location of things and animals by using telecommunication devices. The deletion of the words ‘and animals’ is acceptable because the scope of the services will be narrower than the original.

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 16 461 923 is hereby rejected for the following goods:

Class 09 Application software for mobile phone/smartphone; electronic identification apparatus for animals; electronic collars to collect information of animals; Electronic devices for animal locating and tracking programmed to use global positioning systems (GPS) and cellular communications.

Class 18 Collars for animals; animal harnesses.

The application may proceed for the remaining services namely:

Class 39 Providing information relating to the location of things by using telecommunication devices.

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.

Alistair BUGEJA