Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 15/12/2015

FORUM ΕΚΘΕΣΕΙΣ-ΕΚΔΟΣΕΙΣ-ΣΥΝΕΔΡΙΑ ΑΝΩΝΥΜΗ ΕΤΑΙΡΕΙΑ ΑΝΩΝΥΜΗ ΕΤΑΙΡΕΙΑ

ΒΗΛΑΡΑ 2

GR-10437 Αθηνα

GR

Application No:	014648703
Your reference:
Trade mark:	greek food awards
Mark type:	Figurative mark
Applicant:	FORUM ΕΚΘΕΣΕΙΣ-ΕΚΔΟΣΕΙΣ-ΣΥΝΕΔΡΙΑ ΑΝΩΝΥΜΗ ΕΤΑΙΡΕΙΑ ΒΗΛΑΡΑ 2 GR-10437 Αθηνα GRECIA

The Office raised an objection on 09/10/2015 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 08/12/2015, which may be summarised as follows:

1. The applicant, FORUM SA, has been operating for more than 25 years in the field of professional trade shows and publications.

2. The applicant claims that the stylisation of the mark renders it distinctive. The words “greek food” are written in white and the word “awards” in golden letters. The frame of the mark reminds of a drop of olive oil in dark blue colour and there is also a golden laurel branch which refers to the laurel wreath of ancient Greece as this was the prize for the winners of Pythian Games.

3. The Office has registered in the past many marks containing the term “awards” for the same classes of goods.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see 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 a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) CTMR.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T‑118/00, ‘Procter & Gamble’, paragraph 59).

The sign ‘greek food awards’ is a straightforward combination of three descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. As mentioned in the letter from the Office of 09/10/2015, the sign contains a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark, but as a descriptive indication of the characteristics of the services in question, namely the services applied for are , inter alia the organisation of competitions and awards for the best Hellenic food and the organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes which promote award winning plates of the Greek gastronomy conveying conveys obvious and direct information regarding their kind and geographical origin.

Therefore, it must be confirmed that the expression ‘greek food awards’ is a straightforward combination of three descriptive elements which do not create an impression sufficiently far removed from that produced by the mere combination of its constitutive elements which are descriptive (see 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 43).

As regards the applicant’s claim that the stylisation of the mark - -makes it distinctive, the Office notes the following:

In the examination of a mark, when the verbal element is devoid of distinctive character, it must be examined, in particular, whether the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element. This is not the case with the present mark, since the font of the mark is a standard, easily legible and unmemorable typeface and thus devoid of distinctive character. This is also confirmed by the judgment of 15/09/2005, C-37/03P, ‘BioID’ which stated that the common typeface did not enable the mark in question to serve as an indicator of origin. In other words, in order to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to demand a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed services.

The Office does not agree with the applicant that the stylisation of the mark makes it distinctive and notes that simple labels are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark. In the present case, the verbal element is placed in a common label which is not capable of impressing itself on the consumer’s mind, since it is too simple and commonly used in connection with the services claimed. The blue colour is associated with Greece and it is considered one of its “national colours” which highlights the message of ‘Greek’ and the golden laurel branch is associated with the conceptual notion of “prize/awards” especially in Greece as also mentioned by the applicant itself. All the figurative elements underline visually the descriptive message conveyed by the verbal elements of the mark. Therefore it is concluded that there is nothing striking in the mark which would make it memorable to the relevant consumers.

As regards the applicant’s argument that similar registrations have been accepted by the Office, 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).

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. The examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions. Moreover, the fact that different marks contain elements of the present mark which were registered for completely does not suffice to overcome the present objection as they contain different figurative and verbal elements which render the marks distinctive. The Office also reminds that there are a plead of marks containing the term ‘awards’ which were refused by the Office.

In any event, it must be noted that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its own particularities. It is clear from the Court of Justice’s case-law that the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality according to which no person may rely, in support of his/her claim, on unlawful acts committed in favour of another (see judgment of 27 February 2002, T-106/00, 'Streamserve', para. 67).

It is on the basis of its acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48). The applicant has not done so. Its claims that it has been operating for more than 25 years in the field of professional trade shows and publications has not been backed with any corroborating evidence in respect of acquired distinctiveness of the mark.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 648 703 is hereby rejected for all the 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.

Aliki SPANDAGOU