Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/05/2020

ELZABURU, S.L.P.

Miguel Angel, 21

E-28010 Madrid

ESPAÑA

Application No:	018117917
Your reference:	CE-20190253
Trade mark:	10
Mark type:	Figurative mark
Applicant:	Tenlegend LLC 2150 Lincoln Park W, Apt. 1410 Chicago Illinois 60614 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04/11/2019 pursuant to Article 7(1)(b) and (c) 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 16/12/2019, which may be summarised as follows.

• The sign applied for is a figurative mark composed of the number 10 inside a pentagon. Whilst the relevant average consumer will understand the meaning (ten) of the number (10) inside the pentagon, he will not perceive the sign immediately and without doubt as a description of the size of the product.

• Clothing sizes are indicated exclusively by numbers and not by a special figurative representation like the one applied for. Product sizes do not appear on a product in the same way as a trademark: they are stated on very small labels and do not appear in prominent places.

• Consumer decisions will not be based on the understanding of the sign as a size indication, but on recognizing the mark as the applicant’s mark.

• The existence of this mark in the market will not prevent competitors from using the number 10 to identify one size of their goods since this special representation is not usually used to indicate the size of a fabric.

• Reference is made to previous decisions of the Board of Appeal 11/05/2015, R 3257/2014-4, No. 10 and 18/07/2016, R 582/2016-4, 10.

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.

The goods and services for which protection is sought are the following:

EN-25

Clothing, namely, polos, shirts, bottom shirt, sweaters, and belts.

The goods are directed at the public at large with an average degree of attention.

The application consists of the figurative mark .

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).

Furthermore, ‘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).

In the present case the relevant consumers would understand the sign as a clothing size. The relevant goods are clothing, namely, polos, shirts, bottom shirt, sweaters, and belts; therefore the sign describes a characteristic, namely the size (e.g. UK women’s size) of the polos, shirts, bottom shirt and sweaters in question, while in the case of belts the sign indicates that they are suitable for size 10 users.

The applicant has not disputed the meaning (ten) of the numeral (10) contained in the sign. As regards the applicant’s argument that consumers will not automatically and without any further thought perceive ‘ten’ as a clothing size, it has to be held that whether a sign is descriptive or not can only be assessed in relation to the goods and services for which protection is sought (emphasis added) and in relation to the understanding that the relevant public has of it (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 56).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Moreover, it should be noted that ‘it has been established that measurement (size) is one of the characteristics of ‘clothing, footwear, headgear’ taken into account by the consumer when making a purchase’ . In addition an ‘…indication of size …, whether it exists or might exist, would naturally be understood and connected to measurement (size) by the relevant public’ (23/09/2015, R 553/2015‑4, 60, § 17-19, emphasis added). In view of the different measurement systems within the European Union and their widespread use, it is reasonable to assume that within the European Union measurement systems the number 10 might be understood to indicate the size of the goods in question.

The applicant argues that clothing sizes are generally indicated exclusively by numerals, not by “special figurative representations”; also, unlike trademarks, they do not appear in prominent places. The examples presented by the applicant, however, indicate that the size indications are typically – as in the present case - set against the background of geometrical shapes.

A numeral may be registered as a European Union trade mark only if it is distinctive for the goods and services covered by the application for registration and is not merely descriptive or otherwise non-distinctive for those goods and services, as also indicated in decision 18/07/2016, R 582/2016-4, 10, quoted by the applicant:

“The fact that a sign is composed of numerals is in itself not enough to prevent registration as a trade mark. Article 4 EUTMR expressly lists numerals among the signs of which a trade mark may consist which nevertheless must be capable of distinguishing the goods or services of one undertaking from those of other undertakings, Article 4(a) EUTMR. Numerals which are descriptive for the goods applied for within the meaning of Article 7(1)(c) EUTMR are also devoid of distinctive character (10.03.2011, C-51/10, 1000, EU:C:2011:139, §§ 29 – 33).”

In the present case the stylisation of the sign would not alter the perception or confers distinctiveness to the sign: The numeral 10 lacks any stylisation in terms of both typeface and colour. It is set within a simple geometric shape (a pentagon) that merely serves as a background; it has a purely decorative function and is devoid of distinctiveness. Hence, there is no special characteristic conveyed by the combination of the descriptive numeral and the non-distinctive figurative element that would defer the attention of the consumer from the descriptive meaning of the sign and endow it with the minimum degree of distinctiveness required for registration.

The applicant’s argument that the existence of the mark in the market will not prevent competitors from using the numeral ‘10’ to identify a clothing size is also not indicative of distinctiveness in the present case.

References to previous decisions of the Board of Appeal are noted, however, they do not have common features with the mark in question. While in case of 11/05/2015, R 3257/2014-4, No. 10, the numeral is accompanied by the verbal element “No.” (number) which is not typically used as an indication of size/measurement, in case of 18/07/2016, R 582/2016-4, 10, neither the goods and services nor the reference made by the numeral (packaging vs. size) are comparable.

Whilst the applicant argues that the consumer will recognize the mark as the applicant’s, no evidence to this end was submitted; acquired distinctiveness was not claimed.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR, the application for European Union trade mark No 18 117 917 is hereby rejected for all goods.

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.

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