BEATS | Decision 0011515 – Trademarkers Legal Blog

CANCELLATION No 11 515 C (INVALIDITY)

Sergio Andres Cattani-Freiherr von der Ropp, Gustav-Freytag-Strasse 25, 60320 Frankfurt am Main, Germany (applicant), represented by LEXTM Rechtsanwälte, Friedensstr. 11, 60311 Frankfurt a. Main, Germany (professional representative)

a g a i n s t

Beats Electronics, LLC, 8600 Hayden Place, Culver City, California 90232, United States of America (applicant), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative).

On 01/03/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 8 370 819 ‘BEATS’ (word mark) (the EUTM). The request is directed against all the goods and services for which the EUTM is registered, namely:

Class 9: Audio and video equipment including audio players, video players, media players, portable media players, DVD players, portable DVD players, CD players, portable CD players, media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players, digital video players, portable digital audio players, portable digital video players; digital audio players for automobiles; digital video players for automobiles; MP3 players; MP4 players; protective carrying cases for portable music players; cell phones; personal digital assistants (PDA); smart phones; headsets for mobile phones; speakers; car speakers; loudspeakers; loudspeaker cabinets; horns for loudspeakers; racks for loudspeakers; electric actuators; floor stands and table tops for loudspeakers; surround sound systems; audio equipment; pre-amplifiers; amplifiers; sound amplifiers; audio amplifiers; racks for amplifiers; high-fidelity stereo systems comprising amplifiers, loudspeakers, receivers and tuners; subwoofers; signal separating distributing, generating and converting circuits all for audio signals, video signals or audio-video signals; electro acoustic transducers; audio mixers; electronic audio mixers; sound mixers; sound mixers with integrated amplifiers; acoustic conduits; acoustic couplers; acoustic coupling devices; acoustic membranes; acoustic meters; acoustic separation units; apparatus for wireless transmission of acoustic information; wave reflectors for acoustic speakers, lighting apparatus, and air flow devices; pickups for use with musical instruments; electronic effects pedals for use with musical instruments; musical juke boxes; musical instrument adaptors; musical instrument amplifiers; musical instrument connectors; metronomes; time clocks being time recording devices; teleprinters; scales; micrometers; signal bells, sound locating instruments, namely, sound alarms, sound level meters; projection screens; automatic switchboards; automatic turnstiles; stereo receivers; stereo tuners; stereo amplifiers; audio equipment components; video equipment; video equipment components; microphones; audio and video electric cables and connectors; power cables and connectors; sound and video recording apparatus; portable telephones and accessories; compact disc players; record players and equipment; stereo players and equipment; eyewear and sunglasses; headphones; laptop computers; computer hardware; computer software; computer accessories; electronic devices, including televisions, radios, MP3 players, MP4 players, video players and audio players, all with sound elements; sound systems and sound elements for televisions, radios, audio equipment, namely, media players, portable media players, DVD players, portable DVD players, CD players, portable CD players, media players for automobiles, DVD players for automobiles, CD players for automobiles, digital audio players, portable digital audio players, digital audio players for automobiles; audio speakers for home theatre systems; audio speakers for computers; audio recordings featuring music; computer software for processing digital music files; digital photo frames for displaying digital pictures, video clips and music; downloadable music via the Internet and wireless devices; downloadable MP3 or MP4 files, MP3 or MP4 recordings and downloadable pod casts featuring music, audio books and news broadcasts; video recordings featuring music; music-composition software; visual recordings and audio visual recordings featuring music; downloadable visual recordings featuring music and musical based entertainment; downloadable cellular phone ringtones; apparatus for recording, transmission or reproduction of sound or images.

Class 25: Clothing, footwear, headgear.

Class 38: Providing online bulletin boards in the fields of media, music, video, film, book and television for the transmission of messages among users; streaming of video content via a global computer network; streaming of audio content via a global computer network.

Class 41: Nightclub services; dance club services; provision of live entertainment and recorded entertainment, namely, live musical performances by musical bands and DJs; non-downloadable ringtones, pre-recorded music, video and graphics to mobile communications devices via a global computer network and wireless network; music studios, namely, sound recording studios; publishing services in the nature of music publishing; musical entertainment in the nature of live visual and audio performances by musical groups and DJs; exhibitions, namely, exhibitions concerning music; providing online music services, namely, providing pre-recorded music; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials, providing on-line reviews, providing pre-recorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network, providing podcasts in the field of music, providing web-casts in the field of music and other multimedia materials.

The applicant invoked Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested sign is not distinctive because the word ‘beats’ is commonly used in trade in Germany in connection with the goods and services for which the trade mark is registered. The contested sign means ‘hits’, ‘tunes’ and ‘songs’. The word will be understood in a similar way in English, although ‘beats’ is not as commonly used as a synonym of ‘tunes’, but usually means the rhythm of music. For the same reasons, the mark is descriptive, at least in German. In addition, the mark consists exclusively of an indication that has become customary in trade.

In support of its observations, the applicant filed the following evidence:

Annex 1: references from German dictionaries about the meaning of ‘beats’ dated 1976, 1980, 1993 and 2004, and an undated entry from http://www.duden.de/rechtschreibung/Grundschlag
Annex 2: references from German internet sources for the use of ‘Beats’ in German dated 2001, 2003 to 2009, inclusive, and 2015.
Annex 3: references from United Kingdom internet sources for the use of ‘Beats’ in English, all dated 2008 or 2009.

The EUTM proprietor argues that the applicant is the owner of the EUTM application No 12 226 072 ‘winbeats’, which the EUTM proprietor opposed in opposition proceedings No B 2 320 607 filed in 2014 and currently suspended due to the present action. Therefore, the applicant was clearly aware of the registration of the EUTM ‘BEATS’ long before the filing of the present action, which was filed on 17/08/2015. The EUTM proprietor questions why the applicant waited for so long and believes that the reason was to delay the decision in the opposition proceedings. It bases this view in particular on the date of the applicant’s observations (06/02/2015, namely six months prior to the date they were sent).

The EUTM proprietor also considers that the evidence sent by the applicant that was not in the language of the proceedings should be dismissed (Annexes 1 and 2, which were filed in German). In addition, none of the definitions submitted were dated after 2004; the definitions of words change over time and the lack of up-to-date definitions suggests that more recent sources do not support the applicant’s case. Regarding the use of the contested ‘BEATS’ on CD covers in Annex 2, the EUTM proprietor considers that, in some cases, the word ‘BEATS’ has been used with other words and the applicant does not explain how these extracts are relevant to its case. The use of ‘BEATS’ with other words is irrelevant and cannot support a descriptive use of ‘BEATS’ for CDs or related goods. Regarding Annex 3, the EUTM proprietor argues that it consists of seven pages, six of which have a .com extension, meaning that they are not based in the EU and do not target EU consumers. Some of the website extracts do not indicate any connection with goods or services and one is an article dated 29/06/2009, namely after the filing of the contested mark (on 17/06/2009). In addition, the word ‘BEAT’ is not shown on its own and ‘BEATPORT’ and ‘BEATPORTAL’ are used without any indication of a connection with any goods or services.

The EUTM proprietor also considers that the evidence lacks weight. It denies that ‘BEATS’ is descriptive. ‘BEATS’ is not a synonym for ‘rhythm of music’, at least in German. The impression conveyed by ‘BEATS’ is sufficiently removed from the goods and services in question. In addition, the mark enjoys an extensive reputation. Furthermore, it is clear that many of the goods and services for which the contested mark is registered have no direct connection with ‘BEATS’. The EUTM has acquired enhanced distinctiveness through intensive use. The mark was not devoid of distinctive character in 2009, which is why it was registered.

The EUTM proprietor quotes case-law to support the view that the mark need not be ‘a work of invention’ to meet this requirement (27/02/2002, T-34/00, Eurocool, EU:T:2002:41; 21/10/2004, C-64/02, Das Prinzip der Bequemlichkeit, EU:C:2004:645; 16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532). It also considers that the mark has not become customary in trade, and quotes C-517/99, Bravo, EU:C:2001:510. It then quotes cases confirming that marks containing the word ‘BEATS’ have distinctive character (10/01/2014, R-2100/2012-2, BEATS/SNEAKER FREAK BEATS (fig.)) and opposition cases in which the trade mark ‘BEATS’ was involved and considered to have ‘at least a normal distinctive character to the English speaking public in the European Union’. It also quotes decisions of other national offices in Germany, Benelux and France that were based on the contested mark.

Finally, the EUTM proprietor indicates that the mark has been intensively used in the European Union since at least 2008 and has become widely recognised. As described in the witness statement and previous EUIPO decisions (in particular 27/07/2015, B 2 254 665, BEATS/beatpower), the brand has acquired a significant reputation, particularly in Austria and the United Kingdom, especially for headphones. The applicant has not proved that the contested ‘BEATS’ is not registrable under Article 7(1)(b)(c) or (d) EUTMR and the application is, therefore, unfounded.

In support of its observations, the EUTM proprietor filed the following evidence:

Annex 1: a list of the contested goods and services in which the goods and services unrelated to music/audio have been highlighted.
Annex 2: copies of EUIPO decisions in which the mark ‘BEATS’ has been considered distinctive and/or reputed (in particular, 10/01/2014, R 2100/2012-2, BEATS/SNEAKER FREAK BEATS (fig.)).
Annex 3: English translations of the German Patent and Trade Mark Office opposition decision No 30 2012 051 (08/12/2015, 550.9/41, BEATS/Jolly Beat), of the Benelux Office for Intellectual Property opposition decision No 2 008 568 (29/09/2015, BEATS/BEATBRAVO (fig.)) and of the French INPI opposition decision No 14-1175/VR (20/08/2014, BEATS/BLUBEATS (fig.)).
Annex 4: worldwide registrations for marks containing the word ‘BEATS’ in the name of the EUTM applicant.
Annex 5: witness statement of Thomas R. La Perle, Assistant Secretary of the EUTM proprietor, dated 22/02/2016, with 17 exhibits (not listed for economy of proceedings). It considers that, due to significant efforts spent on initial promotion of the brand after its launch in 2008 and its intensive use, the trade mark ‘BEATS’ has acquired enhanced distinctiveness for the goods and services for which it is registered.

The applicant answers that it initiated the cancellation proceedings when it became obvious that no agreement could be found in opposition No B 2 320 607, previously mentioned by the applicant. Even though it is not relevant, the date in the statement of grounds is due to a mistake. The excerpts presented in Annexes 1 and 2 have been submitted to demonstrate that ‘BEATS’ has a descriptive meaning in German. The evidence submitted is not in conflict with Rule 38(2) EUTMR. The dictionaries demonstrate that the use of the word ‘BEAT(S)’ is well established in Germany and there are no indications that the use of the word has changed in recent years. There is a concrete and direct link between ‘BEATS’ and music and, therefore, the applicant agrees with the observations of the EUTM proprietor, according to whom the use of ‘BEATS’ with other terms on CD covers is descriptive and is not trade mark use. This is also evident from the evidence in English in Annex 3. The documents submitted are not sufficient to suggest there is acquired distinctiveness for the goods and services for which the mark is registered.

In its rejoinder, the EUTM proprietor reiterates that a mark can have dictionary definitions and, at the same time, be not directly descriptive but distinctive in relation to many goods/services. In addition, the evidence in Annex 2 showing ‘beats’ in connection with titles for CDs is irrelevant, as this does not show that the word ‘beats’ is descriptive of CDs but, rather, at most, demonstrates that there are musical compositions that include the word ‘beats’ in their titles. The applicant’s contention that ‘it is undeniable fact that “beats” simply describes music’ is without merit. In English, music does not mean ‘beats’ and ‘beats’ does not mean music. Moreover, the word ‘beats’ is not included in the English definition of music. There are many thousands of valid marks on the EU Trade Mark Register that have common meanings and dictionary definitions; however, they appear on the Register, in most cases, because they are capable of indicating the origin of the goods/services for which they are registered and they are not directly and exclusively descriptive of the goods/services for which they are registered. In addition, the mark has acquired enhanced distinctiveness in connection with some goods. The EUTM proprietor finally considers that the evidence does not, as the applicant implies, establish that the word ‘BEATS’ is directly descriptive for CDs or related goods. The burden of proof in an application for invalidity of a mark falls on the cancellation applicant and, for the reasons set out above in the EUTM proprietor’s prior submissions, the application falls well short of proving that the contested mark ‘BEATS’ is not registrable under Article 7(1)(b)(c) and (d) of the EUTMR. The Office must examine the application based on the facts and evidence submitted by the applicant without carrying out a fresh examination and, in the light of this, the application lacks any substantive reasoning about why the contested mark should not remain validly registered.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 52(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the Union.

Burden of proof

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which was the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

Article 76(1) EUTMR, second sentence, explicitly states that, in invalidity proceedings pursuant to Article 52 EUTMR, the Office will limit its examination to the grounds and arguments submitted by the parties. The EUTM enjoys a presumption of validity and it is for the invalidity applicant to invoke before the Office the specific facts that call the validity of a trade mark into question (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 27-29).

Consequently, the Office will examine the facts in accordance with Article 76(1) EUTMR, second sentence, within the scope of factual submissions made by the applicant for the declaration of invalidity (13/09/2013, T-320/10, Castel, EU:T:2013:424, § 28). In doing so, it may take into consideration obvious and well-known facts, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

However, it will not go beyond the legal arguments presented by the applicant for the declaration of invalidity.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

No legitimate expectations arising from registration

The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T-108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 18).

Translations

If the applicant does not submit translations of evidence that would not affect the admissibility of the case (e.g. a document in support of the application that is not translated by the applicant into the language of the proceedings within the time limit specified in Rule 38(2) EUTMIR), the documents will be deemed not to have been received by the Office and, therefore, will not be taken into account (Rule 98(2) EUTMIR) (05/03/2012, R 826/2010-4, MANUFACTURE PRIM 1949 (fig.), § 25).

Nevertheless, the evidence in Annex 1 is taken from German dictionaries and it will be duly taken into consideration by the Cancellation Division as far as it is relevant because the meaning of ‘BEAT(S)’ in German is in question. For a non-German speaking reader, this evidence shows that the word ‘BEAT’ is mentioned in several German dictionaries over several years. The observations that accompany them are in the language of the proceedings and explain the meaning of the word in German.

Motivations of the applicant

The EUTM proprietor questions why the applicant waited so long to file the invalidity request and believes that the reason was to delay the decision in the opposition proceedings. It bases this view on the date of the observations of the applicant (06/02/2015, namely six months prior to the date they were sent).

The intentions of the applicant are not relevant in the framework of the present action based on absolute grounds.

Consideration common to all the grounds invoked, namely Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b),(c) and (d) EUTMR.

The contested EUTM was applied for on 17/06/2009 and registered on 20/01/2010. It consists of the word mark ‘BEATS’ in connection with the following goods and services:

Class 25: Clothing, footwear, headgear.

The distinctive character, customary character or descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign 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 or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Goods and services

In the present case, the goods and services to which an objection has been raised and which are covered by the mark in Classes 9, 25, 38 and 41 are mostly audio and video equipment, clothing in general, telecommunication and entertainment services. They are goods and services for everyday consumption and specialised goods and services.

Relevant public

The goods and services target both average consumers and a professional public. In view of the nature of the goods and services in question (some are more expensive and not bought on an everyday basis), the awareness of the relevant public can vary from average to higher than average.

Since the mark ‘BEATS’ consists of an English word, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30). Since the applicant also refers to the use of the word ‘BEATS’ in both English (Annex 3) and German (Annexes 1 and 2), the relevant public also consists of German-speaking consumers.

The number of countries where basic English can be understood is greater than the number of countries where English is the native language or is one of the official languages (the United Kingdom, Ireland and Malta). The Court has already confirmed that a basic understanding of the English language by the public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact (see, for example, 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23). The same applies to Cyprus and Germany. Consequently, the relevant public includes, at the very least, the consumers of those countries. The understanding of the word in non-English-speaking countries (Germany) is the central argument of the applicant.

Relevant point in time

The relevant points in time in respect of which the assessment of the claimed descriptive character, lack of distinctiveness or customary character of the sign ‘BEATS’ must be made are both the filing date and the registration date. In other words, it is necessary to establish whether or not the word ‘BEATS’ was seen as a term describing the goods and services at the time of its filing (i.e. 17/06/2009) or at the time of its registration (i.e. 20/01/2010), at the latest.

Definitions

The trade mark consists of the word ‘BEATS’, which is the plural of ‘BEAT’, which can have different meanings.

According to the Oxford English Dictionary, www.oed.com, ‘beat’ means, for example:

A stroke upon a drum, the striking of a drum with the sound produced; the signal given thereby; also in drum-beat.
The movement of the hand or baton, by which the rhythm of a piece of music is indicated, and by which a conductor ensures perfect agreement in tempo and accent on the part of the orchestra or chorus; also, by analogy, the different divisions of a bar or measure with respect to their relative accent. Grove Dict. Music (1880). Also spec., the strongly-marked rhythm of jazz and popular music.

The applicant argues that, in addition, the word ‘BEATS’ has a slightly different meaning for the German public, and it submits extracts from German dictionaries. Therefore, the applicant argues that, although the word ‘BEATS’ is not a German word but an English one, it has become descriptive, non-distinctive and customary in Germany to designate certain characteristics of the goods and services. In particular, the applicant mentions that the word is synonymous in German with ‘hits’, ‘tunes’ and ‘songs’ and, therefore, it has become descriptive of the characteristics, purpose and nature of the goods for which the mark is registered (without mentioning any specific goods and not mentioning any services in its first observations).

The applicant submits definitions of ‘BEAT’ taken from German dictionaries over several years, namely 1976, 1980, 1993 and 2004 (Annex 1), although none are after 2004. The Cancellation Division, however, considers that the lack of more recent dictionary entries is not decisive. As mentioned by the applicant, the EUTM proprietor has not demonstrated that the meaning of the word is likely to have changed between 2004 and 17/06/2009 (date of filing of the contested mark).

Therefore, for the purposes of the examination of the absolute grounds invoked, the Cancellation Division will take into account not only the meaning of ‘BEATS’ in English but also the meaning in German dictionaries.

Descriptiveness – Article 7(1)(c) EUTMR

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.

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).

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

Taken as a whole, the word ‘BEATS’ does not immediately inform consumers without further reflection that the goods and services for which the mark is registered offer ‘rhythms’, ‘hits’, ‘tunes’ or ‘songs’, which, in addition, are not expected characteristics of the goods and services.

‘BEATS’ does not give information on the purpose or the nature of goods for which the mark is registered. The purpose of audio equipment is to reproduce sounds. ‘BEATS’ is not a synonym of ‘sounds’ (vibrations). Sounds can become music, songs or hits under certain circumstances. Nevertheless, ‘BEATS’ is not an English synonym of ‘music’, either in trade or in common language. As correctly mentioned by the EUTM proprietor, this word is not necessary to describe any essential characteristics of the goods and services for which the sign is registered and the applicant has not demonstrated the contrary.

While it is acknowledged that some of the goods in Class 9 are used to create or play music, it is a step too far to suggest that these goods will be commonly referred to as ‘beats’, including those goods for which the word ‘BEATS’ is allusive, such as metronomes. Metronomes are devices that produce audible beats at regular intervals to produce a regular pulse. ‘BEATS’ can, therefore, be considered as allusive for metronomes but fully distinctive for the remaining goods in Class 9. The word ‘BEATS’ is not commonly used to refer to the physical equipment or support used to create or reproduce music. Consumers will need to think carefully about what a ‘beat’ is and how the equipment in question may be used to create or play that sound before the link between the two is found. The mark applied for is, therefore, not exclusively descriptive.

The same is true of some of the services in Classes 38 and 41. At best, the mark applied for may allude to the rhythm of the music that may be offered under the services, but does not describe the services. Further thought and analysis is required to comprehend the meaning of the word ‘BEATS’ for these services. The services in question would not be referred to as ‘BEATS’ alone.

The rest of the goods and services are not related to music and there is no doubt that ‘BEATS’ is distinctive for clothing in Class 25, for example, as it is not related to any of the relevant goods.

To illustrate the use in trade of the word ‘BEAT(S)’, the applicant submitted Annex 2, which contains internet pages showing the use of ‘BEATS’ with other words, such as ‘BEATS AND LYRICS’, ‘BIG CITY BEATS, ‘BEAT MAKING, ‘COOL BEATS’, ‘SPRINGTIME BEATS PARTY’, ‘CULTURE BEATS PARTY’, ‘HIPHOP BEATS’, ‘BINAURAL BEATS’, ‘WAVE MUSIC- EASY BEATS’, ‘BALKAN BEATS’, ‘BOYS’N’BEATS’, ‘DOPE SEXY BEATS’, ‘JUICY BEATS’, ‘MERCY BEATS’, ‘FREEBEATS’, ‘ITALO BEATS VOL. 6’ and ‘BEATS AROUND THE BUSH’. One of the documents submitted shows, for example, use of the expression ‘BEATS AND LYRICS’ in its title. The article is in German and, therefore, it is not possible to determine the goods and services in connection with which this expression is used; however, as mentioned by the EUTM proprietor, this is not trade mark use. The fact that a word is used in a language does not make that word descriptive or customary in trade if it is used not in relation to goods and services but with its general meaning. The fact that an event was called ‘Springtime Beats Party’ would be relevant if the applicant mentioned for which services for which the mark is registered this word could be descriptive. In addition, the use of a word by itself is not equivalent to its use with other words.

As described above, it is up to the applicant to prove that the word ‘BEATS’ is used as a synonym of ‘hits’, ‘tunes’ and ‘songs’ in the trade.

Since the word ‘BEATS’ is meaningful, its meaning can vary depending on the word(s) accompanying it. There is no doubt that the word ‘BEATS’ refers to rhythm. As an example, the Office refused the application by the EUTM proprietor for the trade mark ‘BEATBOX’ for the following goods in Class 9: audio related products and equipment, including, speakers and speaker components, including woofers, subwoofers, tweeters, midrange, tuner, compression drivers, amplifiers, equalizers, crossovers and speaker housings; and docking stations for portable music players (21/06/2012, R 2123/2011-4, BEATBOX). Nevertheless, ‘BEATBOX’ is not ‘BEATS’. The addition of ‘BOX’ clearly changes the meaning of ‘BEAT’. The contested decision correctly established, by reference to the Oxford Dictionary online, that ‘BEATBOX’ as a noun refers to a ‘drum machine or a radio or radio cassette player used to play loud music, especially rap’ and as a verb means to ‘imitate the sounds of a drum machine with the voice’ (information extracted from http://oxforddictionaries.com/definition/beatbox?view=uk). This is not the meaning of the word ‘BEATS’ per se. The mark is the word ‘BEATS’ used alone, which has a vague meaning. Similarly, ‘BLACK BEATS’, ‘COOL BEATS’ and ‘ITALO BEATS’ are also mentioned in sections of the evidence submitted in German but are not used in trade in the same way as ‘BEATS’ alone. The adjective preceding ‘BEATS’ always qualifies the type of music.

In the English translation of the German Patent and Trade Mark Office appeal of 08/12/2015 against opposition decision No 30 2012 051 550.9/41 (based on EUTM No 8 370 819), submitted as Annex 3 by the applicant, it was considered that ‘The opposing trademark has in any case a normal degree of distinctiveness for the most at hand relevant goods and services, for which it is registered. It is true that the term “beat”, which is part of the basic English vocabulary with the meanings “hit/beat” (“schlagen”) as a verb or “hit/beat/strike” (“SchIag”) as a noun (plural: “beats”), became part of the German language in the field of music as a synonym for an “uniform order of accented beats” (…) or as a short form for “beat music” (Cf. DUDEN, German universal dictionary, 7th edition, p. 264). However, the designation “beats” alone cannot be considered as a descriptive term for most of the goods and services in question. It is irrelevant whether the assumption of a weak distinctive character for individual goods which as, for example, “metronome” or services is justified since the eligible products do not play any role in that assessment’.

Therefore, the mark does not convey obvious and direct information regarding 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 such as the subject matter.

It follows that the link between the word ‘BEATS’ and the goods and services referred to in the application for registration is not sufficiently close in the European Union for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Non-distinctiveness – 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 precludes the registration of trade marks which are devoid of distinctive character which alone renders them incapable of fulfilling their essential function (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 23).

The applicant’s arguments are limited to arguing that the trade mark is descriptive. In other words, it does not put forward any stand-alone arguments/evidence regarding why the trade mark should be considered non-distinctive under Article 7(1)(b) EUTMR other than the generic argument that the trade mark is commonly used in trade in relation to the goods and services. As seen above, the trade mark is not descriptive or used in trade in connection with the goods and services. In addition, the Cancellation Division considers that the trade mark is distinctive for the following reasons.

As previously mentioned, the word ‘beat’ (singular) refers in English, inter alia, to the ‘strongly marked rhythm of jazz and popular music’ and to any measured sequence of the sound produced by strokes (information extracted from http://dictionary.oed.com). ‘BEATS’, which means the rhythmic and metrical foundations of music, is the plural of ‘BEAT’.

In relation to the goods and services at issue, which are not all specifically defined as being in the field of music or connected to the field of music and entertainment, the above meaning of the word ‘BEATS’ means that it is able to perform the essential function of a trade mark, which is to guarantee the origin of the marked products and services.

Therefore, the applicant has failed to substantiate or prove its claim that the mark is devoid of distinctive character in relation to the goods and services for which it is registered. The decision must continue based on the other grounds invoked.

Customary character – Article 7(1)(d) EUTMR

Under Article 7(1)(d) EUTMR, trade marks that consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade shall not be registered.

In the Statement of Grounds accompanying the request for a declaration of invalidity, the applicant referred to the provisions contained in Article 7(1)(d) EUTMR. Nevertheless, nowhere in the observations subsequently filed did the applicant expand on the mention of that article.

Since the applicant did not develop any arguments to apply this specific ground to the goods and services for which the contested mark is registered, this ground must be rejected.

Consequently, the Cancellation Division does not find that the EUTM was registered contrary to Article 7(1)(d) EUTMR.

Acquired distinctiveness – Article 7(3) and 52(2) EUTMR

The EUTM proprietor has claimed that the contested EUTM had acquired distinctiveness before and/or after the filing of the EUTM application/registration of the EUTM and has submitted evidence (not listed for economy of proceedings).

Since the mark has been found to be inherently distinctive for all the goods and services, there is no need to assess the evidence of enhanced distinctiveness.

Conclusion

In the light of the above, the Cancellation Division concludes that the application should be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Rule 94(3) EUTMIR and Rule 94(7)(d)(iv) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Elisa ZAERA CUADRADO

Jessica LEWIS

Pierluigi Maria VILLANI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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