Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/11/2015

PROCTER & GAMBLE France SAS

Danièle Le Carval

163/165 quai Aulagnier

F-92600 Asnières-sur-Seine

FRANCIA

Application No:	014289318
Your reference:	TM-523366/EM-BB
Trade mark:
Mark type:	Figurative mark
Applicant:	The Procter & Gamble Company One Procter & Gamble Plaza Cincinnati, Ohio 45202-3315 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 08/07/2015 pursuant to Article 7(1)(b) and (c) CTMR 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 01/09/2015, which may be summarised as follows:

1. The applicant argues that the mark - - will not be perceived by the relevant consumer as a pictogram which describes the function of the goods at issue as it is sufficiently stylised and significantly different from a true to life portrayal serving to indicate the kind and intended purpose of these goods. The graphic elements do not conform with the standard depiction of a dipper.

2. The Office has already accepted for registration the applicant’s mark - - which is claimed to be highly similar to the present case.

3. The sign is not communly used by other undertakings to disignate the goods for which registration is sought.

4. The applicant claims that registration of a sign as a trade mark is not subject to finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor.

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.

Under Article 7(1)(c) CTMR, ‘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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

The Office disagrees with the applicant that the mark at issue is not a true to life depiction of a standard dipper and therefore the figurative device would be distinctive. The Office reminds that it raised the objection because the mark at issue is a pictogram which describes the absorbent function of the goods in question. Pictograms are signs and symbols which one will interpret as having purely informational or instructional value in relation to the goods or services concerned. The relevant consumer when confronted with the mark will perceive the mark which consists of a drop of liquid and of three directional arrows showing that the drop/moisture is absorbed by the absorbent paper or cellulose, i.e. the material from which disposable dippers are made of. It is common in the relevant trade to use this type of pictograms either in their packaging or in their promotional material in order to convey characteristics such as the absorbent functions of the goods as the size or number of drops can designate the absorbency degree/capacity of the disposable dippers.

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case‑law, ‘decisions concerning registration of a sign as a Community trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘It is clear from the case-law of the Court of Justice that observance of 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

The mark cited by the applicant is not comparable to the present case as this mark depicts a ‘humanised’ drop, with eyes and nose, which makes the mark distinctive as it departs for the instructional function as the objected mark.

As regards the applicant’s argument that no other competitors make use of the same combination, ‘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 service 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).

It must be noted that Article 7(1)(b) makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) CTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that, without a substantial use the consumer could perceive it as a badge of origin to distinguish the applicant the origin of the goods applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) CTMR, the application for Community trade mark No 14 289 318 is hereby rejected for all the goods claimed.

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.

Aliki SPANDAGOU