Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 31/08/2018

NORTON ROSE FULBRIGHT LLP

3 More London Riverside

London SE1 2AQ

REINO UNIDO

Application No:	017813205
Your reference:
Trade mark:	Q/A
Mark type:	Figurative mark
Applicant:	Quayeyeware Pty Ltd Unit 1, 40-44 Cook Street Port Melbourne Victoria 3207 AUSTRALIA

The Office raised an objection on 07/03/2018 pursuant to Article 7(1)(b) 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, after an extension request, submitted its observations on 09/07/2018, which may be summarised as follows.

1. The applicant made a subsidiary claim for acquired distinctiveness through use.

2. The Examiner has not provided any good reasons for limiting the relevant consumer of the applicant’s goods to English speakers. The EU contains a large number of English speakers and those who understand English. The applicant submits that the relevant consumer of its goods in will also consist of a portion of consumers who do not speak English and that this portion of the relevant must also be taken into consideration when assessing whether the trade mark is descriptive or devoid of distinctiveness. For those who do not speak English the mark at issue would simply be perceived as the Latin alphabet letters Q and A combined with additional graphic elements.

3. The applicant argues that the average consumer of eyewear would pay a higher degree of attention and care when selecting these types of goods, compared to the average consumer of regular mass produced, fast moving consumer goods (such as supermarket products), due to the nature and purpose of eyewear as goods which enhance vision or protect the eyes.

4. The stylisation of the mark being a combination of the letters Q and A divided by the / symbol and the graphic circle element renders the mark distinctive.

5. The meaning of the acronym has no meaning in relation to the objected goods.

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.

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).

Pursuant to Article 1 EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union. Accordingly, a mark must be refused registration even if it is devoid of distinctive character only in part of the European Union. Therefore, the applicant cannot ask for the protection to cover only the non-English-speaking countries.

The Office disagrees with the applicant that the level of attention for the objected goods which are, inter alia, eyeglasses; spectacles; goggles and frames for sunglasses is high. Even if we were to assume the level of attention would be higher than average, it does not mean that a more attentive public will be not able to perceive any descriptive connotation in the sign under examination. In that regard, it must be pointed out that a higher level of attention and awareness does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, components which might be perceived as rather fanciful and distinctive by the public at large, may be perceived immediately as common and non-distinctive by a more aware and attentive public (see, by analogy, 11/10/2011, T 87/10, Pipeline, EU:T:2011:582, § 27 to 28).

The Office maintains its position that in the present case, the relevant consumers would perceive the sign as providing information that the goods conform to quality assurance procedures providing information about their kind and quality.

Due to the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that, without a substantial use the consumer could perceive it as a badge of origin to distinguish the applicant the origin of the goods applied for.

Therefore, contrary to the assertion of the applicant, the sign lacks any distinctive character in relation to the abovementioned goods and it is not suitable to be registered as a trade mark in respect of goods at hand pursuant to Article 7(1)(b) EUTMR.

It is on the basis of its acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48). The applicant has failed to do so.

As regards to the stylisation of the mark , the Office notes the following:

In the examination of a mark, when the verbal element is descriptive/devoid of distinctive character, it must be examined, in particular, whether the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the non-distinctive message conveyed by the word element. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element. This is not the case with the present mark, since the font of the mark is an easily legible and unmemorable typeface and thus devoid of distinctive character. In other words, in order to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to demand a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed goods.

The Office does not agree with the applicant that the stylisation of the mark makes it distinctive and notes that the font contains no peculiarity and its style is not likely to create an immediate and lasting memory on the part of the relevant public, or to distinguish the applicant’s goods from other suppliers in the market. The Office finds that stylised elements such the ones at issue consisting of a circle placed around the acronym Q/A which a common banal shape of a label cannot confer any distinctive character to the sign.

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 17 813 205 is hereby rejected for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Aliki SPANDAGOU