THE BOARDS OF APPEAL
DECISION of the Fifth Board of Appeal of 8 March 2017
In Case R 1730/2016-5
OSRAM GmbH Marcel-Breuer-Str. 6 80807 München Germany IR Holder / Appellant represented by König Szynka Tilmann Von Renesse Patentanwälte, Partnerschaft Mbb, Machtlfinger Str. 9, 81379 München, Germany
APPEAL relating to International Registration No 1 292 666 designating the European Union
THE FIFTH BOARD OF APPEAL
composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Szanyi Felkl (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 By an international registration dated 10 November 2015 designating the European Union and received by the Office on 17 March 2016, OSRAM GmbH (‘the IR holder’) sought protection in the European Union for the mark
2
for various goods in Classes 9 and 11
2 On 4 April 2016, the examiner sent the IR holder a letter of provisional refusal of protection on the grounds that the application did not appear to be eligible for registration under Article 7(1)(b) and (c) in conjunction with Article 7(2) EUTMR, in respect of all of the goods.
3 On 13 May 2016, the IR holder responded to the provisional refusal stating that:
– The trade mark ‘Submarine’ is not descriptive of the goods claimed since no specific requirements are to be met by products specifically designed for the use in the submarines.
– There is no submarine specific technical descriptive meaning that appears from this word. Therefore, the contested mark in the context of the goods claimed has originality and is fanciful. Moreover, specific submarine products are not claimed in the application.
4 On 1 August 2016, the examiner took a decision (‘the contested decision’) refusing protection of the IR designating the EU in its entirety. The reasoning can be summarised as follows:
– The mark consists of the word ‘submarine’ which means ‘a warship with a streamlined hull designed to operate completely submerged in the sea for long periods, equipped with an internal store of air and a periscope and typically armed with torpedoes and/or missiles’ (http://www.oxforddictionaries.com). The relevant consumer will understand it as meaningful expression.
– Lighting products designed for submarines need to have special technical characteristics. These products have to be designed and manufactured specifically for a submarine environment offering a long operational life and long maintenance free period, advance shock and vibration survival, low profile housing and advanced illumination characteristics which reduce fatigue. They should also deliver a significant reduction in power requirement, a vital consideration for submarines where power is a finite resource in high demand etc.
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– Therefore, when seen on the goods claimed the word ‘submarine’ will be perceived by the professional public not as a fanciful sign but on the contrary, as a direct descriptive word indicating that the goods are designed specifically for submarines and have all required and desired technical characteristics.
– The fact that submarine specific products are not claimed in the application is irrelevant since the specification is broad and the goods can be designed for submarines as well. Irrespective of what kind of products the applicant actually manufactures, the assessment of the distinctiveness and descriptiveness of the mark is done in relation to the goods in respect of which registration is sought.
– The mark ‘Submarine’ conveys obvious and direct information regarding the
kind and intended purpose of the goods in question.
5 On 20 September 2016, the IR holder filed an appeal against the contested decision, requesting that the decision be trade mark applied for set aside. The statement of grounds of the appeal was received on 29 November 2016.
Grounds of Appeal
6 The IR holder’s statement of grounds can be summarised as follows:
– A request is made to limit the list of goods to read as follows:
Class 11 ‒ Lighting apparatus (also on basis of LEDs and/or organic LEDs), namely luminaires for indoor illumination in buildings.
– A long operational life and long maintenance intervals are by no means specific to submarines. They are typical for any professional applications including office lighting, traffic lighting etc. It is not evident why such characteristics would be more important in a submarine compared to another professional vehicle, in particular a ship. Submarines are not typical for a particularly bad accessibility of lighting installations nor can it be understood why the storage of some spare parts should be more difficult in a submarine than, for example, in an airplane.
– The same applies to the criterion of advance shock and vibration survival. This is typical for any application in a vibrating environment, also for a land vehicle. It is further typically less important for submarines than for other ships because submarines do not undergo shock due to the movement of the water on the water surface and submarines are typically designed for very low vibrations of their drive in order not to be detectable by other ships.
– The advanced illumination characteristics with reduced fatigue again apply to any professional lighting application, in particular to professional drivers in vehicles or to pilots or ship captains, but also to people working with monitors in an office or in engineering or graphic work, in control centres of large traffic systems, industrial plants etc.
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– The examiner has failed to show any submarine-typical lighting product criterion and just assumes that there might be something typical for submarines. The underlying assessment of a descriptive understanding of the word submarine in connection with lighting products is arbitrary and not founded.
– The webpages of typical suppliers for lighting products for shops do not
show submarine-specific designations of their products.
– In view of the limitation of the list of goods, any submarine-specific products would be excluded if they existed. There is no indication why the term ‘submarine’ is descriptive for indoor luminaires.
Reasons
7 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible.
8 The appeal is also well founded and the trade mark application can be accepted
under the proposed limitation.
Article 7(1)(c) EUTMR
9 Article 7(1)(c) EUTMR excludes from registration 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 rendering of services, or other characteristics of the goods or services.
10 The descriptiveness of the sign, consequently, has to be assessed in relation to the contested goods or services and by reference to the relevant public’s perception of it.
11 The IR holder has, following the objections raised by the examiner, reduced its original list of goods to the following: Class 11 ‒ Lighting apparatus (also on basis of LEDs and/or organic LEDs), namely luminaires for indoor illumination in buildings.
12 The Board notes that with this limitation the IR holder overcomes the objections raised in the examiner’s decision and the mark SUBMARINE can properly distinguish the products as they are not to be used in submarines or have any connections with them. For all these reasons the limitation is accepted and the mark can proceed to registration.
13 Consequently, the appeal is upheld.
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Order
On those grounds,
THE BOARD
hereby:
1. The appeal is upheld;
2. The mark can proceed to registration for the following goods:
Class 11 ‒ Lighting apparatus (also on basis of LEDs and/or organic LEDs), namely luminaires for indoor illumination in buildings.
Signed
G. Humphreys
Signed
V. Melgar
Signed
A. Szanyi Felkl
Registrar:
Signed
H.Dijkema
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