Partial refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/05/2020

FORRESTERS

Skygarden Erika-Mann-Str. 11

D-80636 Munich

ALEMANIA

Application No:	018109915
Your reference:	T36645EM-SJW/DEM/cxc
Trade mark:	AIR Lens
Mark type:	Word mark
Applicant:	Huawei Technologies Co., Ltd. Administration Building Huawei Technologies Co., Ltd. Bantian, Longgang District Shenzhen, Guangdong 518129 REPÚBLICA POPULAR DE CHINA

With the notifications of 30/08/2019 and 15/01/2020 (attached) the applicant was informed, that the sign applied for cannot be registered under Article 7(1)(b), (c) and 7(2) EUTMR.

With the above notice the applicant was given opportunity to submit observations in reply. On 30/10/2019 the applicant submitted observations. The main arguments can be summarized as follows:

1. Given the nature of the goods, the average consumer is observant and circumspect. “AIR Lense” is sufficiently unusual to be perceived as distinctive in at least some cases.

2. The application fulfils a minimum of distinctiveness.

3. The combination is unusual and cannot be described as meaningful, but rather as newly coined. No dictionary definition exists. We do not believe the mark has been considered as a whole since it is not possible. to accurately describe the function or use of a “AIR Lense” object. The term applied for requires further explanation.

4. It has not be explained how the mark is descriptive or non-distinctive in relation to each of the goods under the application.

5. The sign is ambiguous or opaque and suggestive.

6. The Examiner states that consumers would perceive the sign “as providing information that the goods are equipped with or can be used with Air Lenses. Therefore, the sign describes the kind, intended purpose and subject matter of the goods in question.” The Applicant does not agree with the Examiner’s analysis that the goods would automatically be perceived as being for the purpose of being descriptive. In fact, we do not understand how the mark could possibly be descriptive of the queried goods.

General considerations

The Court of Justice has consistently held that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (T-79/00, ‘LITE’).

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and/or services in respect of which registration is sought (20/03/2002, T-356/00, ‘Carcard’). For assessing descriptiveness under Article 7(1)(c) EUTMR, it is sufficient to establish that the mark consists exclusively of a sign or an indication that may serve, in trade, to designate the nature, intended purpose and/or other characteristics of the goods (30/11/2004, T‑173/03, ‘Nurseryroom’).

For the absolute ground for refusal laid down by Article 7(1)(c) EUTMR to apply, it is sufficient that there exists, from the perspective of the intended public, a direct and specific association between the sign and the categories of goods and services in respect of which registration is sought (27/02/2002, T‑106/00, ‘Streamserve’; confirmed by order of the Court of Justice of 05/02/2004 in Case C‑150/02).

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (e.g. judgment ‘Streamserve’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the word is used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, ‘Real People, Real Solutions’; 09/07/2008, T-58/07, ‘Substance for Success’).

Although it is clear from Article 7(1) EUTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1) EUTMR. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b). A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (12/02/2004, C-265/00, ‘Biomild’).

For a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40, upheld on appeal by 05/02/2004, C-150/02 P, Streamserve, EU:C:2004:75; and 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 38). Moreover, account must be taken not only of the explicit and direct meaning of the word, but also of the connotation it can evoke. The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’).

Article 7(2) EUTMR states that paragraph 7(1)(b) and (c) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The relevant public

In the present case, the goods target consumers in general. The public’s level of attentiveness may be heightened insofar as the goods are bought with caution and are normally more expensive than everyday goods (rather medium or high priced). In this respect there is agreement with the applicant.

In terms of language, since the mark applied for is composed of English terms, its distinctiveness must be assessed with respect to, in particular, the English-speaking public in the European Union. This is also undisputed.

The sign’s descriptive character

The applicant submits that the sign AIR Lens does not give rise to the objections under Article 7(1)(b), (c) and 7(2) EUTMR.

The goods, which are refused are:

9 Notebook computers; laptop computers; tablet computers; smartphones; camcorders; cameras [photography]; computer hardware; humanoid robots with artificial intelligence; facial recognition apparatus; thermal imaging cameras; wearable computers; security surveillance robots; selfie lenses; laboratory robots; teaching robots.

The meaning of a mark must be established from the perspective of the consumer targeted and not that of the applicant. The test to be applied is not always whether or not a particular expression exists as such (for example, in a dictionary), but if the expression as a whole is meaningful and what impression it will make for the relevant public. In this regard, it must be stressed that the distinctive character of a trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods and services (consistent case-law on absolute grounds for refusal).

Whether a sign is descriptive can therefore only be assessed in relation to the goods and services claimed and in relation to the understanding which the relevant public has of it (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 56). The examination of the sign does not take place in such a way that a consumer in an empty, dark room would not have any idea of the sign and would have to guess what the goods/services are. The examination takes place precisely the other way round.

Therefore it has to be considered that the consumers will be directly confronted with the goods at issue and see the sign AIR Lens at the same time. This is the situation which is relevant for the examination of the goods.

As set out in the objection letter the principle of an air lens dates back to the late 19^th century.

The goods applied for are altogether classified in class 9 and are computers, phones, robots, cameras or have integrated cameras. From the outset is clear that cameras and other goods which have incorporated cameras can have a lens. The decisive question is therefor if “AIR” has also a meaning in this context.

Furthermore, in the objection letter, examples of actual use of the term has been made. The sources cited show that the term is not opaque or will puzzle consumers, but is rather direct and precise.

www.ikelite.com/blogs/product-tutorials/when-to-use-a-wide-angle-dome-air-lens-wd-3-or-wd-4 (15/01/2020)

Air Lenses are used with thermal cameras:

www.armoroutlet.com/AOvaccess/AOva_flir.html (15/01/2020)

Further examples have been mentioned in the objection letter.

In view of the foregoing and further arguments below, the expression AIR Lens will be understood by the general public in the English speaking countries of the EU.

As regards the arguments, which have not been already answered the following has to be stated:

Argument 1 - “AIR Lense” is sufficiently unusual to be perceived as distinctive in at least some cases.

There is nothing unusual in the construction of the sign applied for. The circumstance that “AIR” is written in capital letters is not enough to endow the sign with the necessary distinctiveness.

It is not denied that in some cases “AIR Lens” is distinctive, this is why a concrete examination has been undertaken in the present case.

Argument 2 - The application fulfils a minimum of distinctiveness.

The sign is built up in an understandable way of common English words. The word “lens” has no distinctive character whatsoever in respect of the goods applied for as all goods can incorporate lenses. Every smartphone, notebook or other device cited above has nowadays a lens incorporated. “Air” indicates how the lens is built up (incorporating an air cell) and this there is no mystery about this part of the sign either. Without being this decisive it might be stated obiter dictum that, an air lens might have an advantage for instance in the context of under-water photography. One product, called, Backscatter M52 Wide Angle Air Lens (cited in the objection letter), provides 80 degrees of wide angle and macro without removing the lens (see also in the objection letter the product called AOI UAL05, which refers to a wide angle air lens.

It is further irrelevant if the sign applied for should not be a standing expression know by the English speaking public. In a recent case the Court held that the circumstance that one competitor already uses a similar sign, is an indication of the potential descriptiveness of the sign. See 13/02/2019, T-278/18, DENTALDISK, EU:T:2019:86, § 70:

„Des Weiteren stellt der Umstand, dass die beiden datierten Dokumente der Recherche (siehe oben, Rn. 35) erwiesen haben, dass ein einziger Marktteilnehmer den Ausdruck „dental disc“ in beschreibender Weise benutzt, ein zusätzliches Indiz für den beschreibenden Charakter der angemeldeten Marke dar“.

Non official translation by Wolfgang Schramek:

“Furthermore, the fact that the two dated documents of the search (see paragraph 35 above) have shown that a single operator uses the term 'dental disc' in a descriptive manner constitutes additional evidence of the descriptive character of the mark applied for”.

The sign is potentially descriptive and non distinctive as it is easily understandable in connection with the goods.

Argument 3 - The combination is unusual and cannot be described as meaningful, but rather as newly coined. No dictionary definition exists. We do not believe the mark has been considered as a whole since it is not possible to accurately describe the function or use of a “AIR Lense” object. The term applied for requires further explanation.

The sign is considered as a whole and not artificially dissected as the examples given in the objection letter show. The sign applied for consists of two rather basic words from the English language. The consumer will be confronted with the sign on the goods mentioned above. In this relevant situation for the examination, there are no mental steps necessary. The sign applied for is clear and not ambiguous as the applicant pretends.

At least in the meaning provided by the examiner in the objection letter, a descriptive meaning exists. Rather, a word mark remains descriptive even if there are several meanings, possibilities of understanding or connotations of the term in question, as long as only one of them is descriptive (12.2.2004, C-363/99, "Postkantoor", EU:C:2004:86, § 97; 23.10.2003, C 191/01 P, "Doublemint", EU:C:2003:579, § 32).

Consumers are aware of new products and in any event specialized trade circles will grasp the meaning of “AIR lens”. There is no need for a consumer to describe the function of the goods. It is the other way round: The consumer will get the product together with an instruction or description of the product. The consumer will in any event perceive rather an informative message then a business origin.

Argument 4 - It has not be explained how the mark is descriptive or non-distinctive in relation to each of the goods under the application.

All goods, to which the partial refusal either consist of a camera or a lens or have an incorporated camera or lens, which is an air lens.

As regards the group of notebook computers; laptop computers; tablet computers, wearable computers, the all have a camera with lens incorporated.

Computer hardware is the collection of physical parts of a computer system. This includes the computer case, monitor, keyboard, and mouse. It also includes all the parts inside the computer case, such as the hard disk drive, motherboard, video card, and many others. For this reasons also the partial refusal applies to this group as the hardware encompasses cameras or other parts of computer hardware, such as a monitor with a camera etc.

Smartphones; camcorders include cameras with air lens.

Cameras [photography]; thermal imaging cameras; selfie lenses have per definition lenses. See also the examples given in the objection letter.

The remaining group of goods consist of robots or specialized apparatus: Humanoid robots with artificial intelligence; facial recognition apparatus; security surveillance robots; laboratory robots; teaching robots. All those goods include cameras with air lens.

As already explained, the whole combination is sufficiently clear in respect of goods applied for. As to the general examination standards, the examiner agrees with the applicant (the sign applied for has been examined as a whole).

Argument 5) - The sign is ambiguous or opaque and suggestive.

As already stated above the sign applied for has a descriptive meaning and is non distinctive. There is nothing in the sign which would only allude to qualities of the goods. The sign is informative and direct.

Argument - 6) The Examiner states that consumers would perceive the sign “as providing information that the goods are equipped with or can be used with Air Lenses. Therefore, the sign describes the kind, intended purpose and subject matter of the goods in question.” The Applicant does not agree with the Examiner’s analysis that the goods would automatically be perceived as being for the purpose of being descriptive. In fact, we do not understand how the mark could possibly be descriptive of the queried goods.

The meaning is clear, despite the statement to the contrary from the applicant. The fact that a word mark is applied for, only leaves the consumer the possibility to perceive the word as a message (no other parts are present in the sign as colour or figurative elements for instance). Some use of the combination “Air lens” has been made already on the market. There is no mystery about this.

A mark consisting of such a neologism remains descriptive if each of the word elements of which it consists is descriptive on its own and if the combination of those elements is not more than the sum of its parts (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 41; 15/05/2014, T-366/12, Yoghurt-Gums, EU:T:2014:256, § 16). Merely bringing two descriptive word elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned, regardless whether the word combination as such is also referenced in dictionaries (Biomild, § 39, 43). Furthermore, Article 7(1)(c) EUTMR is not limited to indications which indicate the goods or services themselves. As the wording of the provision says any indication of a relevant characteristic is covered by it (10/03/2011, C-51/10, 1000, EU:C:2011:139, § 49). This may be for some goods or services the type (nature) of the goods or services, for others their purpose, and yet for others their field of use or their subject-matter. Here the sign describes at least the purpose of the goods. The connotation indeed matters. See the landmark judgments 12.2.2004, C-363/99, „Postkantoor“, EU:C:2004:86, § 97; 23.10.2003, C 191/01 P, „Doublemint“, EU:C:2003:579, § 32).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign AIR Lens will be perceived by the consumers as pointing to the commercial origin of the objected goods. For the reasons mentioned above, the mark does not possess any actual distinctive character for those goods, pursuant to Article 7(1)(b) and (c) and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the aforementioned goods of the applicant from those of other undertakings. Pursuant to Article 7(2) EUTMR, this is true for the English speaking countries of the European Union. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and/or (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 018109915 - AIR Lens is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c), in Ireland, Malta and the United Kingdom for the following goods claimed:

Class 9: Notebook computers; laptop computers; tablet computers; smartphones; camcorders; cameras [photography]; computer hardware; humanoid robots with artificial intelligence; facial recognition apparatus; thermal imaging cameras; wearable computers; security surveillance robots; selfie lenses; laboratory robots; teaching robots.

The application will be released to publication for the remaining goods:

Class 9: Computer memory devices; computer programs, recorded; computer keyboards; computer operating programs, recorded; compute ...Show morer software, recorded; mouse [computer peripheral]; integrated circuit cards [smart cards]; bags adapted for laptops; sleeves for laptops; computer software applications, downloadable; pedometers; scales; modems; transponders; Network communication apparatus; cabinets for loudspeakers; loudspeakers; microphones; sound transmitting apparatus; television apparatus; headphones; portable media players; digital photo frames; Earphones; air analysis apparatus; gas testing instruments; integrated circuits; video screens; Sensors; Electronic chips; batteries, electric; smartglasses [data processing]; smartwatches [data processing]; wearable activity trackers; covers for smartphones; cases for smartphones; Large-screen LCDs; Electronic diaries; Flat panel displays; Liquid crystal displays; Intercoms; Car televisions; Touch screens; Touch screen pens; Electronic pens; Flexible flat panel displays for computers; Stands adapted for tablet computers; Video printers; Stands adapted for mobile phones; USB cables; USB cables for cellphones; Digital door locks; Alarm central units; covers for tablet computers; black boxes [data recorders]; interactive touch screen terminals; electronic sheet music, downloadable; smart rings [data processing]; Downloadable software applications for mobile phones; scales with body mass analyzers; bathroom scales; protective films adapted for smartphones; audio interfaces; virtual reality headsets; Car video recorders; Set-top boxes; infrared detectors; digital weather stations; biochips; personal digital assistants [PDAs]; computer software platforms, recorded or downloadable; thin client computers; hand-held electronic dictionaries; computer screen saver software, recorded or downloadable; downloadable graphics for mobile phones; Portable digital electronic scales; telecommunication apparatus in the form of jewelry; Selfie sticks for use with mobile phones; Wrist-mounted smartphones; wearable video display monitors; Computer styluses; computer programs, downloadable; downloadable emoticons for mobile phones; electric plugs; electric sockets; Computer programs [downloadable software.

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.

Wolfgang SCHRAMEK