Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/01/2020

KUHNEN & WACKER Patent- und Rechtsanwaltsbüro PartG mbB

Prinz-Ludwig-Str. 40A

D-85354 Freising

ALEMANIA

Application No:	018115206
Your reference:	53/TY02G04/EM
Trade mark:
Mark type:	Figurative mark
Applicant:	TOYOTA JIDOSHA KABUSHIKI KAISHA (also trading as TOYOTA MOTOR CORPORATION) 1, Toyota-cho, Toyota-shi Aichi-ken 471-8571 JAPÓN

The Office raised an objection on 11/09/2019 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 08/11/2019, which may be summarised as follows:

1. The sign applied for is fanciful. The sign points directly to the applicant. The pattern itself are symbols in red and white colours which will be perceived as stylized warning signs. The white squares are a bit broader than the red ones which gives the pattern a fanciful impression. The pattern contains the same red colour that is used for the applicant’s corporate logo which is well-known all over the world, the ‘Toyota-Red’. The symbols of stylized warning road signs gives a direct hint to the automotive sector and thus, to the applicant. The fact that the pattern may also have a decorative function is not incompatible with its distinctive function.

2. The Office has accepted a number of conceptually similar pattern trademarks for amongst others goods in class 16 (EUTM 160028, EUTM 9526261; EUTM 15602; EUTM 017699992). All these trademarks are composed of a repetition of identical symbols. Under the principle of equal treatment the mark applied for should therefore be accepted.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

1. While it is true that a figurative mark can be both decorative and distinctive the Office strongly doubts that the pattern in the present case would be perceived as ‘stylized warning signs’ by the average consumer – especially in connection with packaging materials. The average consumer expects packaging materials as wrapping paper, cardboard and cartons to contain patterns. Since the pattern in the present case consists of a repetition of identical symbols in two colours without any noticeable variation that may attract the attention of the consumer, the average consumer will perceive it as the typical outward appearance of the goods at issue. The Office also doubts that the red colour will be perceived as ‘the’ red colour used in the applicant’s corporate logo by the average European consumer as argued by the applicant. Moreover, the applicant has not provided any evidence of such perception by the relevant public. Therefore, the Office maintains that the sign applied for will not be perceived as a badge of origin by the relevant consumer. It is not distinctive.

2. As regards the applicant’s argument that the Office has accepted a number of pattern trademarks for goods in class 16, the Office points out that these cases are not comparable to the present case.

EUTM 000160028 does not show a repetition of identical symbols or shapes; there is no indication that the red line/stripe is repeated as one would expect in a pattern. The sign prima facie shows a combination of two colours – not a pattern.

EUTM 009526261 , 000015602 and 017699992 show patterns that are significantly more complex than the sign applied for, using combinations of stylized letters and/or shapes that may be perceived as a badge of origin in the mind of the relevant consumer; neither of these signs consists of a mere combination of simple geometric forms.

Furthermore, according to settled case‑law,

‘decisions concerning registration of a sign as a European Union trade mark (…) are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 115 206 is hereby rejected for the following goods:

Class 16 Wrapping paper; Cardboard cartons; Cartons of cardboard for packaging, in particular for packaging in the field of automotive industry; wrapping paper for wrapping spare parts in the automobile industry.

The application may proceed for the remaining goods:

Class 12 Automobiles and structural parts thereof; Wheels (land vehicle parts); Fenders (vehicle parts); Windshield wipers (vehicle parts); mirrors (vehicle parts); oil filters (vehicle parts); air filter (vehicle parts); Steering wheels (vehicle parts); transmissions (vehicle parts); seat post (parts of vehicles); brakes (vehicle parts); spare parts for vehicles.

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.

Thorsten Ickenroth