Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 06/07/2016

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	013431804
Your reference:	T35803EU/ARG/lh
Trade mark:	TECHNICAL CASHMERE
Mark type:	Word mark
Applicant:	Kit and Ace Designs Inc. 2 - 2108 West 4th Avenue Vancouver, British Columbia V6K 1N6 CANADÁ

The Office raised an objection on 29/02/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) 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 29/4/2016, which may be summarised as follows:

1. The objection is ill-founded in respect of the following goods:

1. Class 18: mesh bags, patio umbrellas

2. Class 20: shelving, mirrors, pillows, picture frames, window blinds, decorative boxes made of wood and plastic, sculptures of plastic, plaster and wood, magazine holders; garden furniture, namely, patio tables, chairs, ottomans, benches, lounge chairs, non-metal garden stakes;

3. Class 25: belts, footwear, namely, shoes, boots, sport and athletic shoes, sandals, slippers.

4. Class 27: Meditation mats

2. By way of example:

1. -mesh bags are made of more durable mesh fabrics than cashmere;

2. -a cashmere patio umbrella would be utterly useless;

3. -Class 20 goods such as mirrors or furniture do not contain cashmere

4. -meditation mats in Class 27 are generally made of more durable materials than cashmere.

3. The objection is as well ill-founded for the following “technical” goods:

1. Class 18: Handbags, mesh bags, messenger bags, cosmetic bags, beach bags, tote bags; luggage, purses, wallets; patio umbrellas.

2. Class 20: Home furnishings and accessories, namely, furniture, shelving, mirrors, pillows, picture frames, window blinds, decorative pillows, decorative boxes made of wood and plastic, sculptures of plastic, plaster and wood, magazine holders; garden furniture, namely, patio tables, chairs, ottomans, benches, lounge chairs, non-metal garden stakes; meditation pillows.

3. Class 27: Meditation mats.

4. All of the above underlined goods fall into the same category as the remaining goods or services for which the application has been accepted.

5. The words TECHNICAL and CASHMERE when used separately could describe characteristics of certain of the goods. But, when the words are combined, they create a different impression in the consumer. A mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is not itself descriptive where there is a perceptible difference between the word and the mere sum of its parts (see ECJ C-363/99)

6. The mark TECHNICAL CASHMERE is more than the sum of its parts. Being a fine, soft, naturally grown fibre, CASHMERE is not and would not be associated with technical attributes or qualities. It is clear from the definition of “technical”, as provided by the Examiner, that the word is used to describe a “textile” or “fabric” that is “designed for use in situations where function and performance are important”. In this regard, cashmere is a wool fibre obtained from the neck region of Cashmere and other goats, collected during the spring moulting season when the goats shed their winter coats; it is not a textile or fabric that is the result of a design process. It is not a technical product or technical ingredient of products.

7. Other marks such as PERFORMANCE CASHMERE have been accepted for registration in the UK IPO.

8. Other similar marks have been accepted by EUIPO.

9. With regard to the non-distinctiveness of the mark, it is submitted that within the mark “TECHNICAL CASHMERE”, the two words are conceptually opposed in that “cashmere” creates a natural, soft and luxurious impression, whereas “technical” creates a hard, designed, manufactured and extreme impression. In this regard, we say that the combination of the two words creates a quite fanciful mark. Hence the mark is imaginative, and holds intrigue and surprise. It raises the question, how can cashmere (a natural product) be technical? It is an unusual juxtaposition that creates a compound with a distinctiveness that is greater than the sum of its parts.

Pursuant to Article 75 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 waive the objection for the following goods:

Class 18: Handbags, mesh bags, messenger bags, cosmetic bags, athletic gym

bags, sport bags, beach bags, backpacks, tote bags; luggage, purses,

wallets; patio umbrellas.

Class 20: shelving, mirrors, picture frames, window blinds, decorative boxes made of wood and plastic, sculptures of plastic, plaster and wood, magazine holders; garden furniture, namely, patio tables, chairs, ottomans, benches, lounge chairs, non-metal garden stakes;

Class 25: belts, footwear, namely, shoes, boots, sport and athletic shoes, sandals, slippers.

Home furnishings and accessories, namely, furniture, shelving, mirrors, picture frames, decorative boxes made of wood and plastic, sculptures of plastic, plaster and wood, magazine holders; garden furniture, namely, patio tables, chairs, ottomans, benches, lounge chairs, non-metal garden stakes

The objection is maintained for the remaining goods.

1. Meditation mats can be made of high quality, technically well-worn and produced cashmere.

2. The combination TECHNICAL and CASHMERE is a combination of two descriptive words of the objected goods. There is not a a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods. The combination or word creates does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. Hence the combination is descriptive. (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

3. Cashmere is certainly is “a wool fibre obtained from the neck region of Cashmere and other goats, collected during the spring moulting season when the goats shed their winter coats”. But it is surely elaborated, and technically manipulated in order to become a “textile” (see Google findings “How is cashmere manufactured here https://is.gd/bONzb6 ).

4. As regards the national decisions referred to by the applicant, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated. (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 47).

5. With regard to the former marks registered at EUIPO, the marks were not applied for the same words, nor for the same goods or services. They cannot be compared. In any event, if “the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 13431804 is hereby rejected for the following goods:

Class 20 Home furnishings and accessories, namely, pillows, decorative pillows; meditation pillows.

Class 24 Textile fabrics; bed and bathroom linens, table linens, kitchen linens, towels; wall hangings of textile; meditation blankets.

Class 25: Clothing, namely, t-shirts, shirts, tank tops, sweatshirts, sweaters, jerseys, jumpers, pants, sweatpants, shorts, skirts, dresses, jackets, coats, vests, underwear, socks, warm-up suits, bodysuits, leotards, tights, leggings, leg warmers, hats; clothing accessories, namely, scarves, bandanas, shawls, shoulder wraps, arm warmers, mittens, gloves.

Class 27 Meditation mats.

The application is accepted for the remaining goods.

According to Article 59 EUTMR, you have 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.

Claudio MARTINEZ MÖCKEL