Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2019

Taliens

33 rue de Miromesnil

F-75008 Paris

FRANCIA

Application No:	17 596 412
Your reference:
Trade mark:	1X
Mark type:	Word mark
Applicant:	TCT Mobile International Limited 5th Floor, Building 22E, Hong Kong Science Park, 22 Science Park East Avenue Shatin, New Territories REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised a partial objection on 08/04/2019 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.

Upon request of 05/06/2019 from the applicant, the Office extended on 06/06/2019 the time limit for submitting observations with two months till 08/08/2019.

The applicant submitted its observations on 08/08/2019 which may be summarised as follows:

1. Descriptiveness/distinctive character in relation to the goods

2. Similar marks registered by the Office

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.

1. Descriptiveness/ distinctive character in relation to the goods

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 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).

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Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Applicant’s remarks

It is denied that the sign has such a direct, concrete and specific relationship with the goods in class 9 that it would immediately be perceived by the relevant public, without further reflection, as providing information about the goods applied for. ‘ The term ‘1X’ does not have a clear, evident, prima facie meaning and, therefore, it cannot have any direct and concrete link with the designated goods in class 9.

The possible different meanings the sign may have are not substantiated by the Office with any actual examples or evidence relating to the perception of the relevant public which is accustomed to short alphanumeric signs, being used as trade marks to designate electronic goods, and perceives them as being capable of distinguishing the goods of one undertaking from those of another. The relevant public is used to class 9 goods such as smartphones or tablets being branded under alphanumeric marks such as the sign at issue. This distinctive character, which is only required to be minimal, should enable the sign to proceed to registration for the goods in class 9.

The screenshots provided by the Office - results from an internet search of 08/04/2019, i.e. after the filing date of the sign - are to be set aside as relevantly demonstrating any lack of distinctive character of the sign at the date of filing. Moreover, the first example provided by the Office shows use of the “1X” sign made by the applicant itself/TCT Mobile International Limited. The other screenshots cited by the Office do not demonstrate that the use of the sign at stake is “common” as they contain perceivable differences with the sign at issue, e.g. the letter “x” is not capitalized (example 3, 4 and 5) and the “1x” sign is preceded by the term “version” (example 5). Therefore, the Office fails to demonstrate that “1X” is an ordinary term, commonly used in a descriptive manner to describe class 9 goods.

Office´s comments

The applicant asserts that for the reason that the results of the internet search on the sign at issue/the letter/word combination in question – included in the Office´s notice of grounds for refusal of 08/04/2019 - was conducted on 08/04/2019, i.e. after the filing date of the EU trade mark application, being 14/12/2017, this is sufficient reason to set aside these examples relevantly demonstrating any lack of distinctive character of the sign at issue.

In that respect, the Office would like to point out that according to Article 40(3) EUTMR, the Office can reopen the examination of absolute grounds on its own initiative at any time before registration. Therefore, the relevance of the results of the Office´s internet search on 08/04/2019 on the term/the sign at issue remains undisputed.

On that basis, the Office maintains its’ position that it has been established that the term ‘1X’ is commonly used in marketing of the goods at issue in class 9 (all kind of electronic products, devices and components, hardware and software, computer products, etc.) for indication of a series 1X [of a smart phone], of a [software] version 1X, of the quantity or number [of cameras/monitors] as in 1xCamera, etc.

Moreover, in technical domains such as those involving computers, electronics, etc., it is common that single letters be perceived as technical, model, catalogue references, etc., rather than as indicators of origin.

In the first example

https://www.alcatelmobile.com/product/smartphone/alcatel1/alcatel-1x

featuring the smart-phone Alcatel1X¹, this smartphone is introduced with the descriptive term as follows: …the 1 Series family, home of the best starter smartphones…..

In the example

https://www.konigelectronic.com/security/system/digital-wireless-observation-set-24-ghz-1x-camera-550481093

with the ‘Digital Wireless Observation Set 2.4 Ghz - 1x Camera’, the number of cameras is indicated as 1x Camera under ‘Specifications’, see following excerpt:

In the example:

http://www.infosight.com/support/software/155-labelase-producer-software-version-1x

with software ‘LabeLase® Producer™ Software Version 1x’

it is evident that the term ‘1x’ is an indicator or a precision of the preceding word ‘Version’.

Whether the letter ‘x’ is in capital or small letter or whether the word ‘version’ is in conjunction or not with the term ‘1X’ makes little or no difference to the overall impression.

In line with the results of the Internet search, conducted on 08/04/2019, reference can also be made to an article from ‘Gearnews’ - within the field of music tech and electronics, etc., - entitled ‘Studio Electronics brings back the SE-1X analogue monosynth for a limited time’ which as introduction mentions that…. the original SE-1 was released back in the 1990s….. the SE-1X was an updated limited edition version released in 2014 and now they are having another run with the “SE-1X 2019…….

https://www.gearnews.com/studio-electronics-brings-back-the-se-1x-analogue-monosynth-for-a-limited-time/

Therefore, the Office maintains its position that given that the sign at issue ‘1X’

has a clear descriptive meaning in relation to the goods at issue, it is also devoid of any distinctive character and therefore objectionable under art. 7(1)(b) EUTMR as incapable of performing the essential function of a trade mark which is to distinguish the goods of one undertaking from those of other undertakings.

2. Similar mark registered by the Office

Applicant´s remarks

The applicant refers to Exhibit 3, a list of EU trade mark registrations² registered for class 9 goods by the applicant’s main competitors on the electronic goods market.

Moreover, reference is made to the following EUTM/IR registrations of the word mark ‘X1’:

• IR/WO1037484

• EUTM 4 414 421

• EUTM 6 671 416

• EUTM 17 984 049

Finally, reference is made to the following EU trade mark applications registered by the Office:

EUTM no REPRESENTATION

• 14 741 565 5X

• 14 741 599 6X

• 14 741 607 7X

• 14 741 615 8X

• 14 741 649 9X

• 14 741 681 10X

The above opposing approaches by the Office seem contrary to the principles of equal treatment, non-discrimination and sound administration, which are consistently held by the European Court of Justice. Minimal requirement of coherence in administrative decision-making practice is a transversal principle applicable to any area of public administration, including trade mark law, with reference to Opinion of 02/07/2019 by Advocate General Bobek, §126-127, in pending case C-240/18, P - Constantin Film Produktion v EUIPO/Fack Ju Göhte)

Office´s comments

The applicant refers to Exhibit 3 with a list of appr. 400 EU trade mark registrations - all having in common being a combination of a random letter in conjunction with a random numeral - registered for goods in class 9.

In that context, it can be mentioned that in cases with EU trade mark applications, consisting of single letters and/or numerals, the Office is obliged to in each and every case – and on the basis of a factual assessment – to establish whether the trade mark is acceptable or would be liable to objection. Thus, the examination of a single letter and numerals trade mark should be thorough and stringent, and that each case calls for a careful examination.

At the same time, however, it can also be pointed out that regarding 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).

In addition it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during that period. The Court of Justice is also aware of this market and practice evolution and have stated 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).

Lastly, the Office has taken note of the applicant’s recital of Opinion of 02/07/2019 by Advocate General Bobek, §126-127, in relation to minimal requirement of coherence in administrative decision-making practice is a transversal principle applicable to any area of public administration, including trade mark law. However, this Opinion is issued in a case, still pending before the Court of Justice of the European Union (C-240/18, P - Constantin Film Produktion v EUIPO/Fack Ju Göhte) to which the decision of 24/01/2018, T-69/17, issued by the EU General Court has been appealed. Moreover, the main core issue in this EU Court case deals with the refusal of an application pursuant to art. 7(1)(f) EUTMR regarding a sign considered to be contrary to public policy or to accepted principles of morality.

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 17 596 412 is hereby rejected in part for the following goods:

Class 9 Electronics, namely, televisions, DVD players, laptops, desktop computers, cameras, printers, radios, beepers, video displays, dongles, monitors, facsimile machines, sound recording apparatus, video recorders; electronic products, namely, light-emitting electronic pointers, electronic notice boards, acoustic couplers, electronic agendas, camcorders, electric batteries, photography cameras, battery chargers, chargers for electric batteries, commutators, sound recording apparatus, video recorders, tape recorders, satellite navigational apparatus, teleprinters, television apparatus and video recorders; mobile electronic products, namely, smart phones, mobile phones, tablets, wireless telephony apparatus, wireless telephones sets, wearable electronics devices (smartwatches, smartglasses, headphones), wireless communication network technologies, smart watch phone, fitness trackers, handheld cases for tablets, smart readers; electronic devices, namely, smartwatches, smartglasses, headphones, handheld computing devices with operating systems enabling the use of software applications, Wi-Fi, GPS, NFC (near field communication); consumer electronic products, namely, electric apparatus for commutation, wireless headsets, and wireless in-ear headsets; computer hardware; computer software, namely, communication software for providing access to the Internet, computer software for activating, configuring, supporting, managing, updating, repairing, upgrading of, and provisioning electronic devices and wireless devices, electronic mail and messaging software, computer software for instant messaging, sending and receiving emails and contact information, schedule sharing and contents sharing service, and computer software applications, downloadable; consumer electronic products, namely, telephones, smartphones, cell phones, laptops, desktop computers, tablet computers, music players (mp3, mp4 and the next generations of players), headset with function of short-range transmission of digital voice and data, smart watch phone, fitness trackers, audio equipment, GPS, digital cameras, players and recorders; computer hardware; computer software; virtual reality software; virtual reality software for the creation of computer generated virtual worlds; virtual reality software for playing virtual reality games; virtual reality game software; augmented reality software; augmented reality software for the creation of computer generated virtual worlds; augmented reality software for playing augmented reality games; augmented reality game software; virtual reality products; virtual reality (VR) products namely goggles, gloves, 3D glasses for smartphones, headsets and head mounted displays adapted for use in watching videos and movies, headphones, head trackers, motion trackers, data gloves, 3D controllers, haptic devices, stereoscopic 3D displays, 2D monoscopic lenses, monocular; augmented reality products; augmented reality products namely goggles, gloves, 3D glasses for smartphones, headsets and head mounted displays adapted for use in watching videos and movies, headphones, head trackers, motion trackers, data gloves, 3D controllers, haptic devices, stereoscopic 3D displays, 2D monoscopic lenses, monocular; computer software for databases; computer software for capture and analysis of data, visualization, manipulation, virtual reality immersion and integration of geographic information in interaction with on-line member communities, other applications and the data itself; headsets; virtual reality headsets and head mounted displays adapted for use in watching videos and movies; wearable computers; wearable peripherals for computers, tablet computers, mobile devices and mobile telephones, namely, configurable head-mounted displays; video displays mounted in eyeglasses; computer hardware and computer peripheral devices for use in the field of virtual reality; virtual reality and augmented reality headsets, helmets, display screens, and sound systems comprised primarily of speakers, all adapted for use in playing video games, viewing videos, motion pictures, and participating in virtual reality and augmented reality environments; virtual reality software for telecommunication; virtual reality software for entertainment; hardware and software for use in enabling computers, handheld consoles, tablet computers, mobile devices, and smart phones to provide virtual world experiences; virtual reality software for creating, sharing, and viewing virtual reality content online over the internet; virtual reality headsets for use in visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; computer peripherals; computer peripherals for mobile devices for remotely accessing and transmitting data; computer peripherals for displaying data, video, and virtual reality information and content; electronic and optical communications instruments and components, namely, display screens for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; 3D eyewear; personal video display devices in the nature of wearable displays for viewing digital content including virtual reality, augmented reality, and mixed reality content; media players; cameras; global positioning systems; apparatus for projection; satellite navigation systems; intercommunications apparatus; wearable digital electronic devices (smartwatches, smartglasses, headphones); wearable digital electronic device comprised primarily of software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; wearable activity tracker; remote control devices; digital sensors; photographic instruments and apparatus; computer products, namely wearable computer peripherals and parts and fittings for the aforementioned goods; computer products, namely, satellite navigational apparatus, global positioning system [GPS] apparatus, satellite navigational apparatus, slide projectors, computer keyboards, computer memory devices, computer game programs, computer peripheral devices, computer programs [downloadable software], recorded computer software, recorded computer programs, monitors [computer hardware], computer software for monitors, electronic pocket translators, pocket calculators, USB flash drivers, processors [central processing units], disk drivers for computers, data processing apparatus; personal stereos; computer devices; wireless products, namely, broadband, repeater, Wi-Fi internet USB key, mobile Wi-Fi devices, GPS, wireless computer mice and keyboard, wireless headsets and headphones, cordless telephones; mobile devices, namely, mobile phones, electronic mobile digital telecommunication devices, and personal digital assistants, portable electronic devices, namely, computer peripheral devices, computer hardware for remotely accessing and transmitting data, computer peripherals and wearable computer peripherals; handheld devices namely, smart phones, mobile phones, tablets; wearable electronics devices (smartwatches, smartglasses, headphones); smart phones; mobile phones; telephones; computers; tablet computers; handheld computers; apparatus for recording, transmission or reproduction of sound or images; data processing equipment; portable electronic devices namely, smartwatches, smartglasses, headphones; communications equipment; communications hardware and software; telecommunications equipment; telecommunications hardware and software; telecommunication and communication related products, namely, computers, telephones, mobile phones, smart phones, tablets, laptops, communication satellites, radios, televisions, videophones, videoconferencing, telepresence systems, webcams, codecs, videoconferencing software; computer hardware for remotely accessing and transmitting data; wearable computer peripherals; watchbands that communicate data to smartphones; smartphones in the shape of a watch; smart watches; handheld devices, namely phones, smart phones, mobile phones, tablets, and handheld computer electronic devices with RF technology; wearable electronics devices namely smartwatches, smartglasses and headphones with Wi-Fi capability, Global Positioning System [GPS] apparatus capability, Global Positioning System [GPS] apparatus, NFC (Near Field Communication) capability and RF technology; accessories, namely, docking stations, car holders, cradles, stands, holders and in-car holders for mobile telephones, headphones, headsets, wireless handsets, battery chargers, battery covers, flash drives, SIM cards, armbands specially adapted for personal electronic devices, namely, for attaching mobile telephones and portable media players to the body; carrying cases made especially for carrying mobile phones, smartphones, handheld computing devices, tablets, and smart readers; colored cases made especially for carrying phones, smartphones, mobile phones, handheld computing devices, tablets, and smart readers; fitted protective skins, namely covers for phones, smartphones, mobile phones, handheld electronic computing devices, tablets, and smart readers; cases, namely hard and soft covers for handheld devices (smartphones, mobile phones, tablets) and wearable electronics devices (smartwatches, smartglasses and headphones); smart controllers; capacitive pens; electronic stylus; electronic pens and light pens; non-downloadable software; cloud based software; SaaS software; PaaS software; software and applications for health and fitness purposes notably for the monitoring and recording of heart rate; mobile device cases to cover, protect or contain smart phones, mobile phones, tablets; parts and fittings for the aforementioned goods.

The application may proceed for the remaining services, namely:

Class 38 Telecommunications; telecommunications technology services, namely, telephone services and videoconferencing services; telecommunications services; communications services; online communications services; transmitting services; transmission services; telecommunications; voice mail services; providing access, namely, providing user access to global computer networks; providing electronic telecommunication access; providing access to websites on mobile and Internet; providing access to information via mobile devices; providing access to wireless internet via a smartphone; providing application access via the wireless local area network; providing access to a global computer network; providing access to databases; providing access to the internet; providing access to telecommunications networks; electronic (communication) services, namely, the conveyance of signals on electronic communication network; electronic services, namely, electronic mail, paging services [radio, telephone or other means of electronic communication]; electronic services, namely, providing electronic transmission of data, sound and images, over the Internet; electronic services. namely electronic mail, electronic bulletin board services [telecommunications services]; communications through online platforms such as websites; providing information in the field of telecommunications; sending and receiving data, sound, signals and information; digital network telecommunications services; broadcasting; mobile communication; electronic messaging services; consulting services and advisory services in relation to all the aforementioned services.

Class 42 Providing temporary use of non-downloadable computer software; rental of computer software; application service provider; software as a service [SaaS]; providing information in the field of information technology; communications websites, namely hosting computer sites (websites) and hosting of communication websites; design and development of homepages and websites; computer software services; research, development, design, repair, maintenance and support services in connection with software; services related to computer hardware and software, namely, providing on-line platforms, via global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; design and development of computer hardware and software to facilitate communication in a computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; designing, creating, maintaining, and hosting communications websites for others; technical support services; computer services; data encryption services; design and development of software and applications for health and fitness purposes notably for the monitoring and recording of heart rate; development and design of virtual reality software; design and development of computers and mobile devices; design and development of computer game software and virtual reality software; development and design of virtual reality hardware and peripheral products; providing a website in the field of technology; rental of computers, handheld computers and tablet computers; design of software, development of computer software application solutions, updating of software, maintenance of software; monitoring services relating to telecommunications networks; information technology services; consulting services and advisory services in relation to all aforementioned services.

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.

Finn PEDERSEN