Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/08/2019

WILSON GUNN

5th Floor

Blackfriars House

The Parsonage

Manchester M3 2JA

UNITED KINGDOM

Application No:	018033320
Your reference:	T/71262.EM-MG
Trade mark:	ILLUMINATE
Mark type:	Figurative mark
Applicant:	Cascade Holdings Ltd Gorse Mill, Gorse Street, Chadderton Oldham Lancashire OL9 9RJ UNITED KINGDOM

The Office raised an objection on 24/04/2019 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.

The applicant submitted its observations on 06/06/2019, which may be summarised as follows.

1. The sign is not descriptive for the goods applied for. The Office has analysed the constituent elements of the sign in isolation and has not properly assessed how the relevant consumer would perceive as a whole the unusual combination of verbal and figurative elements in the sign.

2. The sign has sufficient distinctive character to serve as a badge of origin for the goods applied for, as it complies with the minimum figurative threshold required for distinctiveness, in accordance with the guidance established by the ‘Common Communication of the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words¹)

3. The sign has been registered in the UK previously with TM number UK3367736 and a priority claim has been registered at the Office which is relevant for the present application, as the requirements for registration in the UK and EUIPO are the same.

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.

Upon re-examination of the application and having given due consideration to the applicant’s arguments, the Office has decided to maintain the grounds for refusal in respect of all the goods applied for.

Addressing in turn the Applicant’s arguments numbered as above, the Office states as follows.

1.

The Applicant contends that the sign is not descriptive and should be registered. Further, it is argued that the Office has not properly assessed the perception of the sign as a whole, but that only an individual separate assessment of the constituent elements of the sign has been carried out. Contrary to what the Office previous communication (attached) maintains, the Applicant points out that the light bulb is not a “naturalistic/faithful representation”, but rather a fanciful, creative and unrealistic cartoonish-like design of a real light bulb.

The light bulb in the sign is depicted in yellow, showing that it is lit up, whereas only the filament glows in a real light bulb. Although the Office has noticed that the light bulb has been placed in the sign replacing the dot over the letter “i”, the Applicant points out that the Office has overlooked the fact that of the two letters “i” contained in the sign, only the middle one has the light bulb replacing the dot. According to the Applicant, this centralisation of the light bulb in the sign is a creative choice that has a strong visual impact and should not be overlooked. Finally, the Applicant is also of the opinion that the Office has downplayed the use of the ‘black/yellow’ contrasting colour combination as a usual way to represent dangers and/or hazards such as, for example, insects.

In summary, the Applicant submits that the sign does not consist exclusively of descriptive indications because the figurative elements confer upon it significant stylisation, in particular, the depiction of a fanciful and creative representation of a light bulb and its centralised position.

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).

Although the Office agrees with the Applicant that the light bulb contained in the sign may not be a ‘naturalistic’ representation of a light bulb, nevertheless it maintains that it is quite a simple and typical representation of a light bulb that will directly and immediately be perceived as such by the relevant consumer. The yellow colour is invariably used to mean light and electricity, and light bulbs are oftentimes depicted using that colour. Therefore, there is nothing fanciful, extravagant or unusual in the way the light bulb has been represented. Although not being a naturalistic representation of a light bulb, nonetheless it consists of quite a banal and ordinary depiction of a light bulb symbol which will be directly and immediately recognisable as such by the relevant consumer.

2.

On the applicant’s argument that the sign is distinctive, the Office maintains that, given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

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). 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).

Further, the examples provided by the Applicant from the Common Practice of Distinctiveness for the figurative threshold of the mark are in reality not comparable to the present case. In the first example provided, three sardines are placed in different sizes and positions to resemble a capital letter ‘F’ and another sardine replaces a lower-case letter ‘i’. The remaining verbal element ‘resh’ has no meaning whatsoever in English, which requires consumers to conduct a further mental effort for interpreting the meaning of the sign and the substitution of two letters in it by several sardines. The second example provided by the Applicant contains a very cartoonish graphic depiction of a sardine bone smiling and walking in two legs, which is obviously far removed from reality and confers the sign with quite a humorous and distinctive character. In addition, the figurative elements in both examples are bigger than the verbal elements, which confer a prominent role to the figurative part of the sign. In the present case though, the light bulb is much smaller, which downplays its importance in the global assessment of the sign.

It is settled case law that where the [Office] finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the [Office] is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19). As mentioned above, the sign contains quite a banal and ordinary graphic depiction of a light bulb symbol, even though it is not a naturalistic representation

It is on the basis of that 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).

In summary, and as mentioned above, the sign contains a true-to-life portrayal of a light bulb, even though not naturalistic as such (08/07/2010, T-385/08, ‘Hund’, EU:T:2010:295, §24-29). There is nothing original, fanciful or striking in the figurative element of a modestly-sized light bulb that could add distinctiveness to a descriptive verbal element, rendering the sign as a whole as non-distinctive (08/07/2019, R618/2019-5, ‘Tetop walls (Fig.), §39-41, 43, 51-55).

3.

Finally, as regards the Applicant’s argument that the contested sign has claimed priority with a previous UK trade mark registration (UK3367736), the Office notes that it is not constrained by national registrations as, according to EU case-law ‘the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

The Office has explained above in a detailed manner why it considers the sign non-registrable. The mere fact that the UKIPO has accepted the sign as UK trade mark no. UK3367736 is, as such, not a decisive argument to change the assessment of the case by the Office. The applicant has failed to provide more relevant information as regards the reasons for which the UKIPO took the decision, such as the reference to UKIPO practice (guidelines) and/or applicable case-law regarding similar signs.

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 18 033 320 is hereby rejected for all the goods 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.

María Mónica TARAZONA RUÁ