Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 24/01/2018

FIELDFISHER LLP

IP Protection Department

8th Floor

Riverbank House

2 Swan Lane

London EC4R 3TT

REINO UNIDO

Application No:	017319609
Your reference:	UK01-044243.00399/AEE
Trade mark:	LUMINOUS
Mark type:	Word mark
Applicant:	Kabushiki Kaisha Square Enix (also trading as Square Enix Co., Ltd.) 6-27-30 Shinjuku Shinjuku-ku Tokyo JAPÓN

The Office raised an objection on 26/10/2017 pursuant to Article 7(1)(b) and (c) 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 18/12/2017, which may be summarised as follows:

• The applicant argues that “commonplace” signs can be eligible for registration and the sign “LUMINOUS” possesses a minimum, sufficient degree of distinctiveness for the English-speaking consumer in the Union.

• The applicant argues that the sign “LUMINOUS” has no obvious meaning, and is only suggestive in relation to the goods at issue. The goods in question are highly specialised; the relevant consumers are children or adults buying for children and therefore it is not the public at large.

• The Office has previously registered other similar marks.

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 maintain the objection.

General remarks

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 trademarks 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 trademarks.

(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).

Applicant´s remarks

In its submissions the applicant has argued that the subject mark “LUMINOUS” is a “commonplace” sign that can be eligible for registration and possesses a minimum, sufficient degree of distinctiveness for the English-speaking consumer in the Union.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are looking at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the meaning of the term ‘LUMINOUS’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified goods for which registration is being sought, namely that, as explained in the initial notification, they are goods will glow in the dark, as if treated with paint with phosphor in it. It is, therefore, the Office’s view that the term ‘LUMINOUS’ is readily intelligible when taken in conjunction with the specified goods applied for, and viewed by the relevant consumer, who will see the phrase ‘LUMINOUS’ merely as a characteristic of the goods being provided rather than an indication of trade origin.

As regards to the applicant’s arguments regarding the sign “LUMINOUS” having no obvious meaning and has only a suggestive meaning in relation to the goods at issue. The goods in question are highly specialised; the relevant consumers are children or adults buying for children therefore, it is not the public at large.

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 102).

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The mark at issue conveys obvious and direct information regarding the character of the goods in question. The term “LUMINOUS” consists exclusively of a meaningful expression that will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the goods in question.

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

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 reasons mentioned above, and in the previous notifications, the term ‘LUMINOUS’ does not possess any actual distinctive character for the goods pursuant to Article 7(1)(c) and (b) EUTMR and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 017319609 is hereby rejected for the following goods:

Class 28 Dolls; toy figures; plush toys; stuffed toys; inflatable toys; toy scale models; toy vehicles; toy guns; toy swords.

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.

Selin GÜNEL