Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 23/12/2015

HUCKE HUCKE SCHUBERT

An der Fuchskaul 14

50259 Pulheim

GERMANY

Application No:	014415301
Your reference:	115-SAUNA-SPACE
Trade mark:	SAUNA SPACE
Mark type:	Word mark
Applicant:	SaunaSpace LLC 2206 Nelwood Drive Columbia Missouri 65202 UNITED STATES OF AMERICA

The Office raised an objection on 18/08/2015 pursuant to Article 7(1)(b) and (c) and 7(2) 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 19/10/2015, which may be summarised as follows:

1. The Office has misinterpreted the meaning of the sign applied for. A continuous area cannot be a small room. If a sauna is a small room and space is defined as a continuous area or expansion then the word combination ‘SAUNA SPACE’ is a so called oxymoron (that is a figure of speech that juxtaposes elements that appear to be contradictory, such as bittersweet, dark light etc.). Given that the words ‘SAUNA’ and ‘SPACE’ each evoke an impression on the consumer which is quite opposite, the word combination does not fit into the scope of the prohibition against merely descriptive words. Moreover, while a ‘SAUNA’ is a small room in which bathers enjoy a hot-air or steam bath, ‘SPACE’ is given various meanings (such as, according to the Collins Dictionary, unoccupied area or room. Furthermore, as the Office informed that the goods were free, available or unoccupied saunas, the applicant stresses that a trade usually trades with goods that are unoccupied, free or available.

2. The sign applied for is a fanciful neologism. It does not evoke a clear or sensible meaning. The sign applied for contrary to the opinion of the Office enables the relevant consumer to distinguish the marked goods and services as to their commercial origin. Additionally, as the trademark does not need to convey a specific level of linguistic or artistic creativity or imaginativeness, the sign applied for is capable to distinguish the goods and services applied for from those of other undertakings. As the sign applied for is an unusual combination of words, it reveals at least the minimum degree of distinctiveness.

3. The applicant referred the Office to earlier registered CTMs and international registrations containing the verbal element ‘SPACE’. 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).

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)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 (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).

Regarding observation 1

With regard to the applicant’s arguments that the element ‘SPACE’ has various meanings and that the verbal elements ‘SAUNA’ and ‘SPACE’ evoke an impression on the consumer which is quite opposite and therefore the sign applied for is registrable, the Office notes the following.

Firstly, for a trade mark to be refused registration under Article 7(1)(c) CTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

Secondly, the Office maintains its opinion that the relevant consumer will understand the words ‘SAUNA SPACE’ as a meaningful expression, namely a continuous area or small room used as a hot-air or steam bath for cleaning and refreshing the body that is free, available or unoccupied. The applicant, in fact, also contributed to its statement as it referred to the Collins English Dictionary definition, according to which the word ‘SPACE’ means, inter alia room. Therefore, the applicant’s argument that the verbal elements ‘SAUNA’ and ‘SPACE’ evoke different impression, is set aside. Furthermore, as the applicant has mentioned, trade usually trades with goods that are unoccupied, free or available. Therefore, nor this fact could supports that the sign applied for would be perceived as distinctive and not descriptive.

Regarding observation 2

With regard to the other applicant’s argument that the sign applied for is a fanciful neologism, the Office notes that a trade mark consisting of a neologism or 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 itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [CTMR], unless there is 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 or services, the neologism or word creates 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 …(judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32.). However, in the present case the sign applied for ‘SAUNA SPACE’ does not create such an impression. Therefore, the Office reaffirms its statements that the combination of words ‘SAUNA SPACE’ will immediately inform consumers without further reflection that the goods are free, available or unoccupied saunas or their parts, and that the services are closely related to these goods. In addition, the sign applied for does not constitute a play on words, introduce elements of conceptual intrigue or surprise or have some particular originality or resonance, and it conveys a clear message.

Considering all the above, the Office maintains the objection and emphasises that the sign applied for would be considered descriptive and non-distinctive.

Regarding observation 3

The applicant referred the Office to earlier registered CTMs and an international registration. 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).

Furthermore, the signs referred to by the applicant are not identical to the sign applied for, as it contains additional verbal elements, such as ‘CONTROL’, LAB, WAGOM, The Fitness, Baby, Building, Green or figurative element/s. Therefore, the applicant’s argument has to be set aside.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 415 301 is hereby rejected all the goods and services 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.

Simona MACKOVÁ