Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/08/2018

Niko Group nv

An De Vrieze

Industriepark-West 40

B-9100 Sint-Niklaas

BÉLGICA

Application No:	017882103
Your reference:	N18-016
Trade mark:
Mark type:	Figurative mark
Applicant:	NIKO N.V. Industriepark West 40 B-9100 Sint Niklaas BÉLGICA

The Office raised an objection on 23/04/2018 pursuant to Article 7(1)(e)(ii) and (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.

The applicant submitted its observations on 08/06/2018, which may be summarised as follows:

1. The combination of an electric mechanism and frame and a lock does not have a technical function, as it is fictitious. Even though each separate element has a technical function, the combination of the two has not, as it makes no sense, does not exist and will never exist.

2. The combination is distinctive because a lock at the top of an electric frame does not make sense as a real device. The sign has the meaning that electrical devices’ wires can be quickly and solidly fixed to the electric frame. Protection is sought for the meaning the sign conveys and not for the electric frame and lock combination itself. Moreover, the sign will be used together with a slogan in Dutch or French that means ‘clamped without worry’ or ‘click it’s connected’.

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 pursuant to Article 7(1)(e)(ii) EUTMR; however the Office has decided to maintain the objection pursuant to Article 7(1)(b) EUTMR.

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).

In the present case, the relevant public is the public of the European Union as a whole, which is reasonably well informed and reasonably observant and circumspect.

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).

In the present case, the goods for which registration is sought are electric switches and socket outlets. The sign clearly contains a true-to-life depiction of an electric mechanism and frame of the kind used in combination with, or as an inherent part of, the goods in question. The applicant did not dispute the Office’s findings and indicated several times in its observations that one of the elements of the sign is an electric frame.

Even though there is a shackle, a part of a padlock, at the top of the mechanism, the Office considers that this is not enough to render the sign distinctive. There is nothing in the sign as a whole that can clearly indicate the commercial origin of the goods in question. The fact that, as the applicant argues, such a mechanism (an electric frame with a shackle at the top) does not make sense is of no relevance, since the public, when encountering goods marked with the sign in question in the marketplace, would be incapable of distinguishing the applicant’s goods from those of other undertakings, as demonstrated by the examples in the notification letter, since the addition of the shackle provides no information about the commercial origin of the goods.

It should be noted that a sign has to be distinctive per se and prima facie, in the Office’s view, and, without any evidence on file to prove the contrary, it must be considered that the mark applied for will not permit consumers to determine the origin of the goods, unless they have been previously educated to do so through its intensive use. The applicant’s claim that it will use the trade mark along with a slogan, as shown in two catalogues submitted together with its observations, is of no relevance to the present proceedings, since the sign has to be assessed as it is applied for and not in accordance with the applicant’s intended use of it.

The applicant also argues that it is not the electric frame and padlock combination itself that it wants to protect but the ‘meaning’ that the sign conveys: the contacts of the electric frame are able to quickly and solidly fix electric wires in an electrical device.

The Office reiterates its previous statements. A sign will be perceived as a trade mark in as much as it can identify goods as originating from a specific producer, and for that reason it must be assessed as it is applied for and not in accordance with the applicant’s intended use if it or personal view of its own sign.

As regards figurative signs that portray a true-to-life product, the more closely the sign for which registration is sought resembles the product, the greater the likelihood of that sign being devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR. By contrast, a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character (see, by analogy, 24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 31).

The Office maintains that the sign does not depart significantly from the norms or customs of the electrical components sector as shown in the examples in the notification letter. It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the sign applied for 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’s arguments, apart from indicating that such a device would be nonsensical, do not provide the Office with sufficient evidence to overturn its view and decision. Moreover, the applicant’s efforts to attribute to the sign a far-fetched meaning and its intention of using the sign along with a slogan lead the Office to reinforce its view that the sign is non-distinctive per se.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 882 103 is hereby rejected for all the goods for which registration was sought.

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.

Octavio MONGE GONZALVO