Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/07/2018

FilmEngine Europe S.à.r.l.

54, Route de Mondorf

L-3260 Bettembourg

LUXEMBURGO

Application No:	017895020
Your reference:	08T018/W/EU
Trade mark:	SuperCity
Mark type:	Word mark
Applicant:	FilmEngine Europe S.à.r.l. 54, Route de Mondorf L-3260 Bettembourg LUXEMBURGO

The Office raised an objection on 29/05/2018 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 submitted its observations on 25/06/2018, which may be summarised as follows:

1. Request to limit the list of goods and services.

2. The remaining terms are sufficiently broad for the relevant consumers not to link them to the sign ‘SuperCity’, therefore, the mark is distinctive.

Limitation

The following goods and services has been removed from the list of goods and services:

Class 9 Computer architecture enabling smart city management; Computer software enabling smart city management; Computer programs for use in autonomous driving of vehicles; Computer software for enabling real-time Internet of Things; Computer software for enabling smart-home operations; Computer software for enabling smart energy management; Computer software for use in home, factory, and city automation; Computer operating systems for smart city management; Computer software enabling smart energy, water, waste, and bandwidth management.

Class 42 Services for the digitalization of maps; Technological consultancy services for smart city creation; Technological consultancy services for smart city management;

The list of goods and services now reads as follows:

Class 9 Simulation software for use in digital computers; Computer-aided design (CAD) software for the creation of virtual home, factory and city models; Computer software for inputting and editing visual aspects and functionality of real-time virtual replicas of real-world entities; Computer database for storing real-time city virtual models; Computer software for the management of business operations; Augmented reality software; Virtual reality software; Mixed reality software; Augmented reality hardware; Virtual reality hardware; Mixed reality hardware; Cloud computing software.

Class 42 Cloud computing services; Rendering of computer graphics (digital imaging services); Computer aided design services; Providing virtual computer systems through cloud computing; Providing virtual computer environments through cloud computing.

Objection

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 for the remaining goods and services.

Distinctiveness

The applicant argues that after deleting the goods and services that relate closely to smart or advanced cities from the application, the mark is no longer descriptive. The relevant consumers would not link the remaining goods and services with smart cities, or technology that can help cities become more advanced. The remaining goods and services may be used in a broad range of areas.

First, the Office’s objection was not based on the mark being descriptive for the goods and services under Article 7(1)(c) EUTMR, but as being non-distinctive under 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).

Second, a mark cannot be considered distinctive solely by removing the most specific terms from the list of goods and services. The mark will still be devoid of distinctive character for broader terms, as the specific terms are subcategories of the broader terms and that ancillary goods and services still linked hereto.

Therefore, while it is true that the remaining goods and services may be used in a broad range of areas and not only in relation to designing /creating cities and/or to managing cities in a smart way, this is not sufficient to render the mark distinctive.

The distinctive character of a trade mark, within the meaning of Article 7(1)(b) EUTMR, must be assessed, first, in relation to the goods and services in respect of which registration is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods and services (27/11/2003, T-348, Quick, EU:T:2003:318, § 29).

The Office maintains that when encountering the mark ‘SuperCity’ in relation to the remaining goods and services, the relevant consumers would not perceive the mark as an indication of commercial origin, but merely informing that the goods and services are used to design/create or manage more advanced (technology-wise) cities¹, for example by creating virtual models of cities or cloud services adapted to be used in relation to more advanced (technology-wise) cities.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 895 020 is hereby rejected for all the goods and services claimed.

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.

Anja Pernille LIGUNA