Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 04/04/2018

BALDER IP LAW, S.L.

Paseo de la Castellana 93

E-28046 Madrid

ESPAÑA

Application No:	017264904
Your reference:	454220-EM
Trade mark:
Mark type:	Threedimensional
Applicant:	Amparin, S.A. de C.V. Av. Torres de Ixtapantongo, 380-P, Col. Olivar de los Padres. Del Álvaro Obregon México City 01780 MÉXICO

The Office raised an objection on 11/10/2017 pursuant to Article 7(1)(b) 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.

Following an extension of two months, the applicant submitted its observations on 29/12/2017, which may be summarised as follows:

• The sign is distinctive per se and is not a variation on the usual shapes of the goods for which registration is sought, since it has at least the minimum degree of distinctive character required to serve as an indication of commercial origin in relation to all the goods in question. It is clear that a minimum degree of distinctive character is sufficient to render the ground for refusal inapplicable. The sign does not depict the goods at issue; it is simply a depiction of an object that could take a three-dimensional shape, which the public would not necessarily perceive as a depiction of the goods. The Office argues that the non-distinctiveness of the mark can be inferred from the definition of the goods and not from the characteristics and elements of the graphic depiction of the mark.

• The Office’s reasoning would imply that no representation of toys, playthings or decorations for Christmas trees can take a distinctive or non-distinctive form. That is, the Office argues that the non-distinctiveness of the mark can be inferred from the definition of the goods and not from the characteristics and elements of the graphic depiction of the mark.

• The mark consists in an unknown and unidentifiable creature with a body structure that does not correspond to that of any animal, plant or human being. It has only one long lock of hair coming out of the top of the head, in a different colour respecting the rest of the creature. The head and body form an entire structure in the shape of a bulb along with two legs, two arms in the lower and thinner half, with no ears, nose or snout, it has a smiling gesture and a mammal belly button, such features cannot be attributed to any concrete animal or being. It should be noted that the Office’s notification does not refer to the mark as depicting a specific type of creature but as a ‘figure’ or ‘good’ because it is not possible to identify it with any particular creature. In other words, the question ‘what is it?’ cannot be answered, as it is not a banal, classic or commonplace shape.

• The goods for which registration is sought are goods for mass consumption and are aimed at the average consumer. In the light of the nature of the goods in question, the degree of awareness of the relevant public will be average, as these are not sophisticated goods.

• A substantial number of similar EUTM applications have been reconsidered and found non-objectionable on absolute grounds, for example EUTM No 14 092 787 for, inter alia, toys and playthings in Class 28; EUTM No 15 240 691 for, inter alia, toys and playthings in Class 28; and EUTM No 12 189 551 for inter alia, toys in Class 28.

Pursuant to Article 94 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 goods:

Class 28 Dolls’ feeding bottles; dolls’ beds; dolls’ clothes; dolls’ houses.

The objection is maintained for the remaining goods, namely:

Class 28 Toys and playthings; decorations for Christmas trees; plush toys; stuffed toys; puppets; toy models; dolls

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

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).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31).

The applicant states that the sign is distinctive per se and is not a variation on the usual shapes of the goods for which registration is sought. It is settled case-law that the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark; nevertheless, the Court of Justice has established that the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign unrelated to the appearance of the products it denotes. A trade mark lacks distinctive character within the meaning of Article 7(1)(b) EUTMR if does not allow the consumer to distinguish the goods which bear that mark from the same goods which originate from other undertakings.

Moreover, the more closely the shape or other elements of the mark for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR (24/11/2016, T‑578/15, DEVICE OF A SOLAR CELL (fig.), EU:T:2016:674, § 16). Under these circumstances, only a mark which departs significantly from the norm or customs of the sector and can thereby fulfil its essential function of indicating origin, is not devoid of any distinctive character (C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 39). A simple departure from the norm or customs of the sector is not sufficient to render inapplicable the ground for refusal given in Article 7(1)(b) EUTMR (12/02/2004, C‑218/01, Perwoll, EU:C:2004:88, § 49).

Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (12/01/2006, C‑173/04 P, Standbeutel, § 27, 28).

Therefore, taken as a whole, the mark applied for consists only of a combination of presentational features that are typical of the shape of the goods in question. This shape is not markedly different from the various basic shapes commonly used in trade for the goods at issue, but is a simply variation thereof.

The sign is a 3D mark that clearly depicts a colourful caricatured figure that will be perceived not as a distinctive sign but only as the shape of the goods at issue and, consequently, it must be seen as clearly related to the appearance of the goods for which registration is sought. Therefore, the Office finds that the sign in question does not depart significantly from the norm or customs of the sector of the goods in Class 28. Moreover, toys and decorations for Christmas trees are offered for sale in a huge diversity of designs. As already stated, the 3D mark at issue merely depicts a colourful caricatured figure and does not have any characteristic elements or eye-catching features likely to confer the required minimum degree of distinctive character on the sign, which would enable the consumer to perceive it as an indication of commercial origin rather than as a mere variation on a shape commonly used in the relevant sector.

When encountering the mark in relation to toys and playthings; decorations for Christmas trees; plush toys; stuffed toys; puppets; toy models; dolls, the relevant public will immediately infer that the goods are in the form of a colourful caricatured figure.

The applicant states that the goods for which registration is sought are goods for mass consumption and are aimed at the average consumer; therefore, the degree of awareness of the relevant public will be average, as these are not sophisticated goods. The Office agrees with the applicant’s assertion that the goods are basic toys aimed at the average consumer, who is deemed to be reasonably well informed, observant and circumspect. The shape applied for is a very basic one that is simply a variation on various basic shapes commonly used for the goods at issue, and the elements of which it is composed, such as the body shape, the single ear on one side of the head, the ribbon, the two eyes and the four extremities, are merely common decorative elements performing an ornamental or aesthetic function; therefore, the sign will not be perceived as an indication of origin and the relevant consumer will not assign the shape in question an identificatory function as to the origin of the goods concerned. In the present case, the sign does not have any specific, recognisable and memorable figurative features that could differentiate it from any of the other numerous depictions of creatures on the market. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for the applicant’s goods and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin. The analysis of the distinctiveness of the sign applied for does not rely on whether or not the figure at issue can be identified with a human being, animal, living being or any known creature, but on its capacity to identify commercial origin. The sign applied for has no such capacity, as explained above.

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).

Regarding the applicant’s EUTM No. 17 258 914 that has been accepted by the EUIPO, perhaps by error, it should be taken into account that prior registered EUTMs do not constitute binding precedents. If a mark has achieved registration when it ought not to have, the Office should not compound that error by allowing a second trade mark to remain in the register. As stated in case-law, no person can rely, in support of his or her claims, on unlawful acts committed in favour of another. Furthermore, such a mark may be challenged within the framework of cancellation proceedings and need not stay on the register contrary to the public interest.

‘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).

Regarding the trade mark registration No. 3 683 477 identical to EUTM No. 17 264 904  granted by the Spanish Patent and Trademark Office for the same goods, according to case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national/international system. Consequently, the registrability of a sign as a European Union trade mark must be assessed only on the basis of the relevant EU legislation. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country; that the sign in question is registrable as a national mark; therefore, the abovementioned registration cannot lead to a different result.

The Office has noted the previously accepted 3D marks. However, several comparable 3D EUTM applications have been refused, for instance EUTMA No 11 298 684 ,

EUTM No 11 649 399 and EUTM No 11 463 072 , all for goods in Class 28.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 260 852 is hereby rejected for the following goods:

Class 28 Toys and playthings; decorations for Christmas trees; plush toys; stuffed toys; puppets; toy models; dolls.

The application will proceed for the following goods:

Class 28 Games, video game apparatus; gymnastic and sporting articles; dolls’ feeding bottles; dolls’ beds; dolls’ clothes; dolls’ houses; balls for games; fairground ride apparatus; kites; board games; masks [playthings]; piñatas; swimming pools [play articles]; jigsaw puzzles; toy vehicles.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Moises Paulo ROMERO CABRERA