Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 19/01/2016

Ray Young

Wisteria House

Clarendon Road

South Woodford, London E18 2AW

REINO UNIDO

Application No:	014496517
Your reference:	GTMZC-152138
Trade mark:	VINTAGE
Mark type:	Figurative mark
Applicant:	Ningbo Century EVA Motors Co., Ltd. Xiaoxishan, Beicun, Dongwu Town, Yinzhou, Ningbo Zhejiang REPÚBLICA POPULAR DE CHINA

1. Summary of facts

The Office raised an objection on 08/09/2015 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 23/09/2015, which may be summarised as follows:

1. In the light of the relevant case law, the sign cannot be perceived as descriptive;

2. The word ‘VINTAGE’ has further meanings than the one defined by the Office which do not apply to the goods claimed;

3. Due to the fact that the mark is not descriptive for the goods applied, there exists at least a minimum degree of distinctiveness.

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.

2. Grounds for the decision

1. General remarks

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.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ 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 marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T 79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 65).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T 194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T 305/02, ‘Forme d'une bouteille’, paragraph 34).

2. Response to applicant’s observations

1. In the light of the settled case law, the sign cannot be perceived as descriptive.

The Office agrees that, according to the settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) of CTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and, thus, to distinguish that product from those of other undertakings. Furthermore, the Office agrees that distinctive character must be assessed, first, by reference to the goods in respect of which registration has been applied for and, second, by reference to the perception of the relevant public.

However, it is maintained that the sign conveys obvious and direct information regarding the quality and value of the goods in question and that there is a clear link between the word ‘VINTAGE’ contained in the mark and the goods applied for. The Office maintains that the sign sends a clear message in relation to the goods and, therefore, cannot possess even the minimum degree of distinctive character on the grounds set on the letter on 08/09/2015.

The applicant has not further elaborated its claim that the settled case-law (in particular judgments referred in the applicant’s response, i.e., judgment of 29/04/2001, joined cases C‐468/01 P to C‐472/01 P, para. 32-33; judgment of 21/10/2004, C‐64/02 P, para. 42; judgment of 08/05/2008, C‐304/06 P, para. 66-67; and Audi v OHIM, para. 33-34, as well as and judgment of 14/062012, T‐293/10, ‘Colour per se’, judgment of 12/07/2012, C‐311/11 P, ‘Wir machen das Besondere einfach’, paras 23) conflicts with the Office’s objection in the present case.

2. The word ‘VINTAGE’ has further meanings than the one defined by the Office which do not apply to the goods claimed.

The applicant argues that the mark is not descriptive claiming, that the meaning of the word ‘VINTAGE’ refers to wine and grapes etc. from a good time, and cannot be used to describe goods in class 12 as applied. To support his arguments, the applicant has attached dictionary search results.

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

The Office agrees that the word ‘VINTAGE’ has several meanings as the applicant has exemplified in his observations. However, the Office sees that, in addition to its discernible descriptive meaning in connection to wines and grapes, the mark ‘VINTAGE’ can also be descriptive for various kinds of goods not limited to wines and grapes exclusively. The applicant has e.g. given the following examples extracted from http://www.collinsdictionary.com/dictionary/english/vintage:

‘a time of origin’, ‘a group of people or objects of the same period’, ‘representative of the best and most typical’, ‘old-fashioned; dated’

All the above mentioned definitions can be used describing cars and vehicles of certain time. E.g. the link by the applicant sets an example for the definition ‘a time of origin – a car of Edwardian vintage’. It follows, that the word can be used in order to describe cars, motorcycles, vehicles as well as parts and fittings as set in the letter by the Office on 08/09/2015.

Therefore, the mark consists essentially of an expression that conveys obvious and direct information regarding the quality, value and style of the goods in question. Hence, there is a direct and specific relationship between the goods and the mark. In addition, the definitions for the word ‘VINTAGE’ do have an obvious and direct indication to the goods applied.

3. Due to the fact that the mark is not descriptive for the goods applied, there exists at least a minimum degree of distinctiveness.

As stated above, the Office maintains that the mark in question is descriptive for the goods and services applied. According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, ‘DKV’, paragraph 21).

Moreover, the Office has examined the lack of distinctive character also independently from the descriptive meaning of the sign and maintains its objection on the grounds presented on the letter on 018/09/2015.

3. Decision

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 014496517 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.

Volker Timo MENSING