Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/03/2018

TR INTELLECTUAL PROPERTY LTD

Ground Floor, Adamson House, Towers Business Park

Wilmslow Road

Didsbury, Manchester M20 2YY

UNITED KINGDOM

Application No:	14 344 113
Your reference:	MCR/EUTM00075
Trade mark:	GLAMOROUS.COM
Mark type:	Word mark
Applicant:	Kacoo Fashion Ltd Fabrica 269 Great Ancoats Street Manchester M4 7DB UNITED KINGDOM

The Office raised an objection on 29/08/2017, pursuant to Article 7(1)(b) and Article 7(2) EUTMR, because it found that the trade mark applied for is devoid of any distinctive character in relation to some of the goods and services for which registration is sought, for the reasons set out in the attached notice of provisional refusal.

The applicant submitted its observations on 30/10/2017, which may be summarised as follows:

1. The mark applied for, — ‘GLAMOROUS.COM’ —, does not convey obvious and direct information regarding the nature and characteristics of the goods in question, and the subject matter of the services for which registration is sought. The dictionary definition of the word ‘glamorous’ cannot be used as a test of descriptiveness. In addition, all the goods and services to which the being ‘alluring and fascinating’.

2. The applicant has been the proprietor of the domain name www.glamorous.com since 18/08/1996 and has been using it in trade since 2007. Consumers, when purchasing on-line, will automatically search for ‘glamorous.com’. This clearly demonstrates that ‘GLAMOROUS.COM’ is the applicant’s brand and that consumers associate this mark with the applicant.

3. A compound mark, such as ‘GLAMOROUS.COM’, should be considered as a whole, and not dissected into its constituent parts.

4. The Office has already registered similar trade marks, and the applicant refers to a selection of those marks. The Office, when examining an application for registration of a European Union trade mark, must take into account the decisions already taken in respect of similar applications, and act consistently.

5. The applicant reserves the right to submit evidence of use in support of the application.

Pursuant to Article 94 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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT/2, EU:C: 2004:532, § 25).

It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are to be refused registration. In addition, it must be borne in mind that Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product/service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product/service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68). It is also well established that it is not necessary for a slogan to display imaginativeness or creativity which would create surprise, or make a striking impression for it to achieve the minimal level of distinctiveness required under Article 7(1)(b) EUTMR (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47).

Registration of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use (04/10/2001, C-517/99, Bravo, EU:C:2001:510, § 40). Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (11/12/2001, T-138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

The Office has re-considered the mark applied for, — ‘GLAMOROUS.COM’ —, in accordance with the abovementioned case -law, and, after giving due consideration to all the applicant’s arguments, maintains that it is not capable of functioning as a badge of commercial origin of the goods and services to which the objection was raised.

As regards the applicant’s first argument, the Office reiterates that the objection against the mark applied for was raised only under Article 7(1)(b) EUTMR, and not under Article 7(1)(c) EUTMR. The Office found that the mark ‘GLAMOROUS.COM’ is non-distinctive, per se, and not because of its descriptiveness in relation to the goods and services in question. In addition, a finding of descriptiveness is not required in relation to the objection under Article 7(1)(b) EUTMR. It is settled case -law that each of the grounds for refusal listed in Article 7(1) EUTMR is independent and requires separate examination (16/09/2004, C-329/02 P, 'SAT/.2', EU:C:2004:143, § 25).

The Office considers that the mark applied for would be perceived immediately by the

relevant English-speaking part of the public as a promotional formula that indicates to

consumers that the goods concerned, which are essentially connected to the cosmetic, jewellery and fashion sector, are beautiful in a show way, alluring, and fascinating and can be obtained via the internet, and that the services in question are related to such goods and are rendered online, and not as an indication of the commercial origin of those goods and services. In other words, the Office considers that the message conveyed by the mark, in its entirety, is so clearly expressed, and without any hint of fancifulness or resonance, that the relevant public will not remember it as a mark intended to distinguish the commercial origin of the goods and services. This is particularly true because both words of the mark are commonly used in everyday language and in trade, as generic terms (02/11/2015, R 2514/2014 – 4, GLAMOROUS (fig.); R 721/2015 – 4, GLAMOROUS (fig.). As a result, there is nothing in the expression ‘GLAMOROUS.COM’ that might, beyond its basic promotional and laudatory meaning which refers to the goods and services help the relevant public to memorise it easily and instantly as a distinctive trade mark.

As regards the applicant’s second argument, the fact that the applicant is proprietor of the domain name www.glamorous.com and has actively traded by using it, is irrelevant for the assessment of distinctiveness of a mark required by Article 7(1)(b) EUTMR and, consequently, its registrability as a European Union trade mark.

The applicant is correct in stating that a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (15/09/2005, T-320/03, ‘Live richly’, EU:T:2005:325, § 81; 09/07/2003, T-234/01, ‘Orange und Grau’, § 32; 20/11/2002, T-79/01 & T-86/01, ‘Kit Pro / Kit Super Pro’, EU:T:2002:279, § 22), and the Office, hereby, confirms that the mark applied for was assessed for distinctive character, while taking into account the expression ‘GLAMOROUS.COM’ as a whole. Accordingly, the dictionary definition of each word in the mark was considered only with the purpose of determining how the mark will be understood by the relevant public. On the basis of an analysis carried out as described, the Office found that the relevant public will understand the mark ‘GLAMOROUS.COM’ as a meaningful expression: something that is beautiful in a showy way, alluring and fascinating and can be viewed and/or purchased on-line. In addition, it is settled case -law that ‘the assessment of distinctive character of a trade mark consisting of a combination of elements does not preclude prior examination of the trade mark’s individual features’ (09/07/2003, T-234/01, ‘Orange und Grau’, EU:T:2003:202, § 32).

The applicant points out that the Office has already accepted for registration a number of similar trade marks, such as ‘BIZTRAVEL.COM’ (EUTM No 316 547 of 31/07/1996), ‘WEBDEVELOPER.COM’ (EUTM No 788 786 of 02/04/1998), ‘NETGROCER.COM’ (EUTM No 1 123 488 of 21/05/1999 – expired), ‘FASHION4BRANDS.COM’ (IR No 884 129 of 17/03/2006), ‘THE CONFERENCEDESK.COM’ (IR No 889 694 of 05/10/2005) and ‘FLYINTERNATIONAL.COM’ (IR No 1 052 739 of 20/09/2010).

In response to this argument, the Office, firstly, points out that, according to settled case -law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, ‘BioID’, EU:C:2005:547, § 47; 09/10/2002, T‑36/01, ‘Glass pattern’, EU:T:2002:245, § 35).

Secondly, it is also well established that the distinctiveness required by Article 7(1)(b) EUTMR must be assessed in the light of the circumstances of each case. In this regard, the Office emphasises that the trade marks to which the applicant refers, are neither identical nor similar to the mark at issue.

In addition, a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (20/11/2002, T-79/01 & T-86/01, ‘Kit Pro / Kit Super Pro’, EU:T:2002:279 § 22; 19/09/2001, T-118/00, ‘Tabs’ (3D), EU:T:2001:226, § 59). Accordingly, the identification of previously registered marks, that contain, inter alia, a part of the mark for which registration is sought, namely the domain name ‘.com’, cannot be considered relevant.

Furthermore, the Office strives for consistency and the application of the same registration criteria in every case. However, it is unfortunately inevitable that trade marks that are doubtful or even precluded from registration pursuant to Article 7(1)(b) EUTMR are sometimes registered. This is the reason the cancellation system exists.

The principle of legality of administration requires that the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether or not different decisions should have been made in previous cases (27/02/2002, T‑106/00, ‘Streamserve’, EU:T:2002:43, § 67). Moreover, according to the principle of legality, no person may rely, in support of its claim, on unlawful acts committed in favour of another (27/02/2002, T‑106/00, ‘Streamserve’, EU:T:2002:43, § 67).

Finally, concerning the applicant’s request, the applicant was invited to clarify the nature of the claim, namely whether or not the claim is made under Article 7(3) EUTMR and, in the case of a positive response, whether it is intended to be a principal or a subsidiary claim pursuant to Article 2(2) EUTMIR. The time limit to submit the required clarification expired on 15/01/2018, and. the applicant did not submit any clarification. Therefore, the Office considers that no claim under Article 7(3) EUTMR was made (the Office’s letters of 09/11/2017 and 16/01/2018).

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 14 344 113, ‘GLAMOROUS.COM’, is hereby refused for the following goods and services:

Class 3 After-shave lotions; eau de cologne: non-medicated toilet preparations; perfumery; hair care preparations; skin care preparations; suntanning preparations, air fresheners consisting of perfume products; dentifrices; toothpaste; boot cream; boot polish; creams for leather; depilatory preparations; soaps; toiletries; antiperspirants; toiletries; essential oils; flower perfumes in the form of oil and scented waters; bath salts and preparations; cosmetics kits; cosmetics; cotton wool for cosmetic purposes; non-medicated creams; deodorants and deodorant soaps for body and feet; cosmetic dyes; eyebrow cosmetics and preparations; fabric softeners; flower perfumes; hair dyes and hair sprays; incense; ionone (perfumery); rouge; lipsticks; make-up preparations; non-medicated mouth washes; nail polish and nail preparations; cosmetic pencils; potpourris; shampoos; shaving preparations; talcum powders; transfers (decorative) for cosmetic purposes,

Class 14 Jewellery; horological and chronometric instruments; precious stones; watches and clocks; precious metals and their alloys; amulets; bracelets; earrings; brooches; chains; tie clips and tie pins; cufflinks; diamonds; earrings; key rings of precious metal; medallions; medals; necklaces; ornamental pins; pearls; semi-precious stones; silver ornaments; silver plates; snuff boxes of precious metal; toothpick holders of precious metal; trinkets; vases of precious metal; tankards.

Class 18 Leather and imitations of leather; suitcases; travelling bags; umbrellas and umbrella covers; parasols and walking sticks; attaché cases; duffel bags, boot bags; backpacks; bags; beach bags; briefcases; canes; card cases; garment bags for travel; handbags; credit card holders; haversacks; key cases and cases; pocket wallets; purses; school bags; shopping bags; vanity cases; valises; wallets; bands and straps of leather; parts and fittings for all the aforesaid goods.

Class 25 Clothing; footwear; headgear; belts.

Class 35 Advertising services; the bringing together, for the benefit of others, of a variety of goods enabling customers to conveniently view and purchase those goods from a general merchandise catalogue by mail order or by telecommunication or from a general merchandise Internet website, those goods being being after-shave lotions, eau de cologne, perfumery, hair care preparations, skin care preparations, suntanning preparations, air fresheners consisting of perfume products, dentifrices, toothpaste, creams for leather, toiletries, flower perfumes in the form of oil and scented water, cosmetics kits, cosmetics, deodorants and deodorant soaps for body and feet, cosmetic dyes, eyebrow cosmetics and preparations, fabric softeners, flower perfumes, hair dyes and hair sprays, ionone (perfumery), rouge, lipsticks, make-up preparations, nail polish and nail preparations, cosmetic pencils, potpourris, shampoos, shaving preparations, talcum powders, transfers (decorative) for cosmetic purposes, bells; prescription and non-prescription eye glasses and spectacles for adults and children; prescription and non-prescription sunglasses; cases; chains; cords and frames therefor; mobile telephone covers, mobile telephone accessories, jewellery; horological and chronometric instruments, precious stones; watches and clocks; precious metals and their alloys and goods in precious metals or coatedbells therewith; amulets; bracelets; earrings; brooches; cigar cases; cigarette cases; chains; tie clips and tie pins; cufflinks; diamonds; earrings; key rings of precious metal; medallions; medals; necklaces; ornamental pins; pearls; semi-precious stones; silver ornaments; silver plates; snuff boxes of precious metal; toothpick holders of precious metal; trinkets; vases of precious metal; tankards; printed matter, newspapers, magazines and periodical publications, books, photographs, catalogues, decalcomanias, poster magazines. gift bags and bags for packaging; gift wrap; office requisites and diaries; leather and imitations of leather; and goods made of these materials; suitcases; travelling bags; umbrellas and umbrella covers; parasols and walking sticks; attaché cases; duffel bags; boot bags; backpacks; bags; beach bags; belts; briefcases; canes; card cases; garment bags for travel; handbags; credit card holders; cheque book holders; haversacks; key cases and cases; pocket wallets; purses; school bags; shopping bags; vanity cases; valises; wallets; bands and straps of leather; leather shoe and boot linings; parts and fittings for all the aforesaid goods; clothing; footwear; headgear; headgear; belts; hair bands; hair ornaments; artificial flowers; braids; hair extensions; shoe buckles; hair pins; hair grips; hair slides; claw clips for hair; brooches (clothing accessories); ribbons; artificial garlands; feathers (clothing accessories); rosettes (haberdashery); hair bows; clothing buckles; decorative ribbons; hair pieces; ponytail holders and hair ribbons; hair pieces; hair scrunchies; hair fasteners; hair wraps; hair pieces; clips for clothing; hat pins of precious metal; embroidered badges; snap clips for hair; twisters for hair; bows for clothing; hair ornaments (not of precious metal); hat bands; silk flowers; combs for the hair; provision of information to customers and advisory assistance in relation to the selection of goods; customer loyalty schemes.

The application may proceed for the remaining goods and services for which registration is sought.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, 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 720 has been paid.

Mirjana PUSKARIC