Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 22/01/2016

HOYNG ROKH MONEGIER SPAIN LLP

Calle Ruiz de Alarcón, 7-2º Dcha

E-28014 Madrid

ESPAÑA

Application No:	013403415
Your reference:	30649-0267-EMO0
Trade mark:	HEAT DON’T BURN
Mark type:	Word mark
Applicant:	PHILIP MORRIS PRODUCTS S.A. Quai Jeanrenaud 3 CH-2000 Neuchâtel SUIZA

1. Following a third party observation, the Office raised an objection on 14/07/2015 pursuant to Article 7(1)(b) and 7(2) CTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

2. The applicant was granted an extension for two months and submitted its observations on 13/11/2015, which may be summarised as follows:

• The third party makes constant references to a different sign and expression than that of the applicant, namely HEAT NOT BURN and HEAT NOT BURN PRODUCTS. Consequently the third party allegations should be disregarded.

• It is clear from the evidence submitted with the third party observations that no third party has been making use of the mark applied for in the EU except for the applicant.

• The fact that a mark is more or less similar aurally or conceptually to another presumably non-distinctive expression does not make the similar expression devoid of distinctive character as well.

• HEAT DON´T BURN is not a common expression in the English language. Enclosed is a copy of allegations filed in the UK by the representatives of the third party where the applicant’s mark is referred to as presenting a “somewhat incorrect grammar”. The expression HEAT DON´T BURN is shocking to the English-speaking consumer who would not expect to see the three words conjoined in this fashion without a pause or a comma between the verb HEAT and the following to terms.

• The mark departs from the usual manner of referring to a tobacco product that is made hot but does not catch fire. No consumer would burn or attempt to burn a heating device. Consumers will therefore perceive the mark as an evocative legend, containing a twist. The imperative format makes it catchy, resonant and easy to remember.

• The public concerned does not immediately perceive a description of the goods or of one of their characteristics when they see the mark at hand. A mental process and a measure of interpretation is required to fully understood the meaning of the mark.

• The applicant refers to case law to support its arguments.

3. Pursuant to Article 75 CTMR, 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.

First, please note that Article 7(1)(c) CTMR was referred to by mistake in the heading of the Notice of grounds for refusal. It is nevertheless clear from the argument’s that follows that the mark is perceived as being devoid of any distinctive character under Article 7(1)(b) CTMR and not as descriptive.

The Office maintains that the mark is devoid of any distinctive character in relation to the goods objected to.

As already mentioned in the Notice for grounds for refusal, the marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

To heat up without burning tobacco is a concept or method evidently existing in the market. Heating tobacco, rather than burning it, may reduce the formation of harmful compounds that are produced at high temperatures.

When applying expressions such as “heat not burn” or “heat don´t burn” to products that heat but do not burn tobacco, it would primarily be perceived by consumers as an informative expression indicating the workings of the tobacco products.

Also, as shown in the previous communication and in the third party observations, the term “heat not burn” is used in the relevant market to refer to an alternative cigarette that heat but do not burn tobacco. Even if the commonly used expression is “heat not burn”, the very similar expression HEAT DON´T BURN would be perceived as conveying the exact same message. Both words “not” and “don´t” has the same connotation. Even if the use of the word “don´t” is somewhat grammatically incorrect in the mark, it would go unnoticed by consumers. An additional distinctive element, such as a brand or the name of a company, would be needed to enable a consumer to distinguish the goods from one undertaking from those of another undertaking.

Even if the applicant is the only one using the exact expression HEAT DON´T BURN, that does not say anything about how consumers will perceive the mark. The distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

See below an example of use of the expression HEAT DON´T BURN in a generic sense, referring to a type of product rather than as a trade mark:

The “heat don’t burn” products developed by the tobacco companies produce secondhand smoke that is like regular combustible tobacco cigarettes.

http://spinfuel.com/second-hand-smoke/

It may be that HEAT DON´T BURN is not a common expression in the English language, however, it will hardly be perceived as “shocking” to the English-speaking consumer. The consumer would not analyse whether or not a pause or a comma is missing in the expression but merely perceive its obvious informative message. The mark does not depart significantly from the usual manner of referring to a tobacco product that is made hot but does burn tobacco.

Obviously, upon seeing the mark, a consumer would not attempt to burn the product but he/she would understand that the mark refers to the concept of heating tobacco without burning it.

The Office is of the opinion that consumers are unlikely to perceive the mark as “catchy, resonant and easy to remember” or that any measure of interpretation is required to understood the meaning of the mark.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant´s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin. (See judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84.)

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 13403415 is hereby rejected for the following goods:

Class 9 Chargers; batteries for electronic cigarettes; batteries for electronic devices that are used for heating tobacco, battery chargers for electronic devices that are used for heating tobacco; USB chargers for electronic devices that are used for heating tobacco; car chargers for electronic cigarettes; car chargers for devices that are used for heating tobacco.

Class 11 Electronic vaporizers; apparatus for heating liquids; apparatus for generating vapor, wired vaporizer.

Class 34 Tobacco, raw or manufactured; tobacco products; including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, kretek; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, pipes, tobacco sticks, heated tobacco products, electronic devices that heat cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes for use as an alternative to traditional cigarettes; electronic nicotine inhalation devices; vaporising devices for tobacco, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes; chargers, extinguishers and accessories, parts and fittings for use in connection with electronic cigarettes or apparatus for heating tobacco; electronic rechargeable cigarette cases.

The application is accepted for the remaining goods, namely for:

Class 34 Chewing tobacco, snuff tobacco, snus; ashtrays, lighters; matches.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Cecilia ALIN