Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 17/12/2015

INGENIAS

Av. Diagonal, 421,2º

E-08008 Barcelona

ESPAÑA

Application No:	013766811
Your reference:	INT7412
Trade mark:	HEART
Mark type:	Word mark
Applicant:	FMTM Distribution Ltd 3A and 3B Isle of Man Freeport Ballasalla IM9 2AP ISLE OF MAN

I. The Office raised an objection on 15/04/2015, pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character (see the enclosed letter of 15/04/2015).

On 15/06/2015, the applicant submitted its observations.

On 06/08/2015 the Office maintained the objection and extended the scope of the objection to the following goods (see the enclosed letter of 06/08/2015):

Class 14 Horological instruments; watches; chronometric instruments; chronographs (watches); chronometers; apparatus for sports timing (stopwatches); clocks; straps for wristwatches; watch bracelets; components for watches and clocks; buckles for watchstraps; watch crowns; watch cases (components); Parts and fittings for timepieces; Cases for watches and clocks; Cases for the display of timepieces (presentation); Watch boxes; Clock boxes; jewellery; semi-precious articles of bijouterie; jewellery ornaments; fashion jewellery; jewellery cases [caskets]; boxes for Jewellery; jewel cases of precious metal; tie pins; cuff links; key fobs; Boxes for cufflinks; Boxes for tie-pins; Boxes for key fobs [caskets]; Cases for the display of jewellery, cufflinks, and tie pins; presentation boxes and cases adapted to contain and transport timepieces; presentation cases and cases adapted to contain and transport jewellery; presentation cases and cases adapted to contain and transport cufflinks, tie pins and key fobs.

Class 18 Leather straps; leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling bags; garment bags for travel; Purses; Leather cases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; Sports bags; luggage tags; bags; pouches; Leather or leather-board boxes; Cases, of leather or leatherboard.

The applicant was given a further 2 month time to reply to the extension of the objection.

II. The applicant submitted its further observations on 05/10/2015. They may be summarised as follows:

1. The Office stated in its objection of 15/04/2015 that the application will be accepted for the remaining goods. In the letter of 06/08/2015 the Office stated again that the initial objection does not extend to the Class 3 and 18 goods.

2. The applicant did not have the chance to reply to the extension of the objection; the Office did not properly explain the extension of the objection; there is no legal ground to refuse the application for the goods in question.

III. 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.

1. Contrary to the applicant´s belief the scope of an objection can be extended at any time before a final decision on the objection is taken. As is clear from the denomination of the objection letters (“Notice of grounds for refusal”) the statements the applicant refers to do not constitute a final decision of the Office from which any claims could be derived.

2. Contrary to its allegations the applicant had two month time to submit observations in reply to the extension of the objection of 06/08/2015.

The applicant´s argument that ´the mentioned goods in classes 14 and 18 have nothing to do with the possible shapes of a heart´ has to be set aside. The Office has duly explained and justified that hearts are not only commonly used in respect of all types of jewellery but also to goods such as bags, belts and so forth, see page 7 of aforesaid letter and the examples included. All the goods in question can without doubt have the shape of a heart. Therefore the sign can be used to describe a quality of the goods in question, namely their shape, which is sufficient to refuse the application according to Article 7(1)(c) CTMR.

As the Office has found the sign to be descriptive and lacking any further element beyond its descriptive message that might be perceived by the consumer as indicating the commercial origin of the goods in question, the Office consequently maintains its opinion that the sign also lacks the minimum level of distinctiveness to allow registration under Article 7(1)(b) CTMR.

IV. For the above reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community Trade Mark 13 766 811 is hereby rejected for the following goods:

Class 14 Horological instruments; watches; chronometric instruments; chronographs (watches); chronometers; apparatus for sports timing (stopwatches); clocks; straps for wristwatches; watch bracelets; components for watches and clocks; buckles for watchstraps; watch crowns; watch cases (components); Parts and fittings for timepieces; Cases for watches and clocks; Cases for the display of timepieces (presentation); Watch boxes; Clock boxes; jewellery; semi-precious articles of bijouterie; jewellery ornaments; fashion jewellery; jewellery cases [caskets]; boxes for Jewellery; jewel cases of precious metal; tie pins; cuff links; key fobs; Boxes for cufflinks; Boxes for tie-pins; Boxes for key fobs [caskets]; Cases for the display of jewellery, cufflinks, and tie pins; presentation boxes and cases adapted to contain and transport timepieces; presentation cases and cases adapted to contain and transport jewellery; presentation cases and cases adapted to contain and transport cufflinks, tie pins and key fobs.

Class 18 Leather straps; leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling bags; garment bags for travel; Purses; Leather cases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; Sports bags; luggage tags; bags; pouches; Leather or leather-board boxes; Cases, of leather or leatherboard.

It may proceed for the remaining goods.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Tobias KLEE