Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/02/2016

RECKITT BENCKISER CORPORATE SERVICES LIMITED

Dansom Lane

Hull HU8 7DS

REINO UNIDO

Application No:	014648018
Your reference:	VelvetSmoothPurple
Trade mark:
Mark type:	Figurative mark
Applicant:	LRC Products Limited 103-105 Bath Road Slough Berkshire SL1 3UH REINO UNIDO

The Office raised an objection on 18/11/2015 pursuant to Article 7(1)(b) and 7(2) CTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 15/01/2016, which may be summarised as follows:

1- It is also noted that it is well established in CJEU jurisprudence, that it is not permissible to dissect a mark in order to formulate an objection. The CJEU has made it clear that consumers do not do this, and that therefore, a trade mark must be considered as a whole. It is submitted that the Examiner has erred in this regard.

2- It is clear that the Examiner has not given consideration to the overall impact of the figurative mark as a whole (Case T-315/03, “ROCKBASS” paragraph 56). The Examiner has focussed primarily on the figurative representation of a foot file which he considered to be the dominant element. To the contrary, the Applicant asserts that as it is a product, the consumer would not consider it to be indicative of origin, and therefore, the relevant consumer will rely on other elements more heavily. Consumers attach little significance to elements which do not enable the commercial origin to be identified (Case T-490/08 CM Capital Markets Holdings, SA v OHIM). Considering the abovementioned, it is clear that a product should have a minimal impact on the assessment, of the distinctiveness, of the mark as a whole.

3- The Examiner has wrongly categorised this mark as a two-dimensional representation of a three-dimensional mark. Therefore, the assessment of whether the mark has a distinctive shape is no longer relevant.

4- The Examiner did not discuss the overall theme of the packaging featuring the yellow header containing a blue oval (clearly where a logo would be placed), above a blue lower section with both parts separated by a wavy grey line. The purple speckled and sparkly pattern in the bottom left corner in which the handle of the product overlaps is clearly designed to draw a correlation between the packaging and the particular product range.

5- The Applicant is the Proprietor of several other applications/registrations for figurative marks for the same goods as claimed under this application, as seen in Appendix 1. These figurative marks are highly similar to the current application and on this basis the Applicant submits that the mark, as applied for, is evidently distinctive for all of the goods under this application.

6- Furthermore, the Applicant also has two further marks which have passed examination (one registration and one application), where the mark contains only the theme as described above, i.e. there is no wording or product contained within the representation (Appendix 2).

7- The product featured in the representation should not be considered the dominant element and therefore the Applicant does not see the relevance of examining the product in isolation.

8- The handles of these products are essential to its visual impact and are a means of distinguishing between different models of manufacturers. They are, therefore, one of the features that are inherently helpful in visually identifying a model or range, and even for differentiating between the various product ranges of a single manufacturer. These types of products will be sold alongside competing products in crowded display units. Therefore, the colour and theme of the trade dress will be more visible (and recognisable) than the written brand name.

9- “Acquisition of distinctive character, maybe as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designed exclusively by the mark applied for, as originating from a given undertaking”. As seen in Appendix 1, the application has been used extensively alongside the Applicant’s SCHOLL mark, enclosed as Appendix 3.

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.

General remarks

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).

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).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [CTMR]’ (judgment of 12/01/2006, C‑173/04 P, ‘Deutsche SiSi-Werke’, paragraph 31).

The case-law developed for three-dimensional marks that consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of two-dimensional representations of the product or elements of it (see judgment of 14/09/2009, T-152/07, Uhr, EU:T:2009:324).

Specific remarks concerning the applicant´s observations

1- It is also noted that it is well established in CJEU jurisprudence, that it is not permissible to dissect a mark in order to formulate an objection. The CJEU has made it clear that consumers do not do this, and that therefore, a trade mark must be considered as a whole. It is submitted that the Examiner has erred in this regard.

In its assessment, the examiner did examine the sign as a whole, which is not incompatible with an examination of its individual features, for the sake of scrupulously determining if at least one of them could endow the sign (as a whole) with the minimum distinctive character required under Article 7(1)(b) CTMR.

2- It is clear that the Examiner has not given consideration to the overall impact of the figurative mark as a whole (Case T-315/03, “ROCKBASS” paragraph 56). The Examiner has focussed primarily on the figurative representation of a foot file which he considered to be the dominant element. To the contrary, the Applicant asserts that as it is a product, the consumer would not consider it to be indicative of origin, and therefore, the relevant consumer will rely on other elements more heavily. Consumers attach little significance to elements which do not enable the commercial origin to be identified (Case T-490/08 CM Capital Markets Holdings, SA v OHIM). Considering the abovementioned, it is clear that a product should have a minimal impact on the assessment, of the distinctiveness, of the mark as a whole.

The Office agrees with the applicant as so far that ´as it is a product, the consumer would not consider it to be indicative of origin´. Moreover, the product is unmistakably the dominant and eye catching element of the figurative sign applied for, because of its proportions and position.

In its assessment of the distinctive character of the sign as a whole, the Office did thus assess the other elements of the mark as well.

3- The Examiner has wrongly categorised this mark as a two-dimensional representation of a three-dimensional mark. Therefore, the assessment of whether the mark has a distinctive shape is no longer relevant.

The Office refers to the following paragraph of the ´General remarks:

The case-law developed for three-dimensional marks that consist of the representation of the shape of the product itself is also relevant for figurative marks consisting of two-dimensional representations of the product or elements of it (see judgment of 14/09/2009, T-152/07, Uhr, EU:T:2009:324).

4- The Examiner did not discuss the overall theme of the packaging featuring the yellow header containing a blue oval (clearly where a logo would be placed), above a blue lower section with both parts separated by a wavy grey line. The purple speckled and sparkly pattern in the bottom left corner in which the handle of the product overlaps is clearly designed to draw a correlation between the packaging and the particular product range.

In its notification of 18/11/2015, the Office clearly assessed all features of the sign.

For the sake of good order, the Office established the folowing:

´In the case of the present figurative mark, the shape of the depicted foot file is predominant, and will be perceived as no more than an ergonomic representation of the goods, rather than as an indicator of trade origin.

The colour of its abrasive part, which will be applied directly to the skin is dark grey, one of the colours that most contrasts with little brilliant spots, which allude to diamonds, well known to be the most abrasive element available, and a small representation of which is also to be seen when taking a close look at the packaging.

Obviously, consumers of the goods in question acquire them exclusively for their abrasive function. The above mentioned features will thus, if noticed, only be welcomed by the relevant public, but without attributing them a trade origin.

The colour purple of the grip of the foot file may be perceived as a decoration of the goods, as well as for the purpose of attracting attention to the goods, without giving any specific information or precise message as to their commercial origin.

As regards the remaining colours of the figurative mark as well as the representation of tiny stars on the grip, the Office considers that they are no more than decorative elements, meant to embellish both the packaging and the grip of the foot file.´

Regarding the yellow header containing a blue oval (clearly where a logo would be placed, following the applicant), above a blue lower section:

These features merely consist of basic colours, and serve decorative purposes. Furthermore it is obvious that the blue oval will not contain a logo but a word element, which will eventually render the mark distinctive as a whole.

5- The Applicant is the Proprietor of several other applications/registrations for figurative marks for the same goods as claimed under this application, as seen in Appendix 1. These figurative marks are highly similar to the current application and on this basis the Applicant submits that the mark, as applied for, is evidently distinctive for all of the goods under this application.

The marks are indeed similar. Nevertheless, they are not identical, because the mark referred to contains the word element ´Scholl´ (within the oval), and it is precisely this word element that endows the sign with distinctiveness.

6- Furthermore, the Applicant also has two further marks which have passed examination (one registration and one application), where the mark contains only the theme as described above, i.e. there is no wording or product contained within the representation (Appendix 2).

Both signs are utterly dissimilar. It follows that the observance of the principle of equal treatment does not apply.

7- The product featured in the representation should not be considered the dominant element and therefore the Applicant does not see the relevance of examining the product in isolation.

This point has been addressed under point 2- .

8- The handles of these products are essential to its visual impact and are a means of distinguishing between different models of manufacturers. They are, therefore, one of the features that are inherently helpful in visually identifying a model or range, and even for differentiating between the various product ranges of a single manufacturer. These types of products will be sold alongside competing products in crowded display units. Therefore, the colour and theme of the trade dress will be more visible (and recognisable) than the written brand name.

This assertion is in contradiction with the claim of the applicant that ´as it is a product, the consumer would not consider it to be indicative of origin´. (see point 2-)

Nevertheless, as has been confirmed by the Court of Justice, consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not used as a means of identification in current commercial practice (judgment of 06/05/2003, C-104/01, Libertel, EU:C:2003:244). A colour is not normally inherently capable of distinguishing the goods of a particular undertaking (para. 65).

9- “Acquisition of distinctive character, maybe as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designed exclusively by the mark applied for, as originating from a given undertaking”. As seen in Appendix 1, the application has been used extensively alongside the Applicant’s (word mark) SCHOLL mark, enclosed as Appendix 3.

Acquired distinctiveness. General considerations:

Under Article 7(3) [CTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) CTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [CTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) CTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(See judgment of 10/11/2004, T‑396/02, ‘Forme d'un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63.)

In view of the above and on the basis of the supporting documents submitted by the applicant (Appendix 1, 2 and 3), the Office can impossibly conclude that the mark applied for has acquired distinctiveness under Article 7(3) [CTMR].

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 014648018 is hereby rejected for the following goods:

Class 8:

Hand operated household tools and implements for pedicure; hand tools for removing hardened skin; hand tools for exfoliating skin; foot file roller heads for removing hardened skin; foot file roller heads for exfoliating skin; electronic devices used to remove hardened skin; electronic devices used to exfoliate skin; electronic foot file; electronic nail file; roller heads for electronic foot file; roller head refills for electronic foot file; roller heads for electronic nail file; roller head refills for electronic nail file; parts and fittings for all the aforesaid goods.

The application is accepted for the remaining goods.

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.

Jean Marc SCHULLER