Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 23/05/2016

BARDEHLE PAGENBERG PARTNERSCHAFT MBB PATENTANWÄLTE, RECHTSANWÄLTE

Postfach 86 06 20

D-81633 München

GERMANY

Application No:	014655807
Your reference:	M137217EMCE/ang
Trade mark:	The Signature Collection
Mark type:	Word mark
Applicant:	McDonald's International Property Company, Ltd. 2711 Centerville Road, Suite 400 Wilmington, DE 19808 UNITED STATES OF AMERICA

The Office raised an objection on 22/10/2015 pursuant to Article 7(1)(b) and (c) CTMR and Article 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 18/02/2016, which may be summarised as follows:

• The mark ‘THE SIGNATURE COLLECTION’ is vague, requires the average consumer to engage in reflections. and has no direct relation to the goods applied for and therefore not descriptive.

• There is a contradiction between the mark ‘THE SIGNATURE COLLECTION’ meaning products of a high standard which is appropriate to gourmet foods and restaurants and the goods for which protection is sought

• The applicant requests that the Office accepts and publishes the application.

Pursuant to Article 75 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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(c) EUTMR, ‘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) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR 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) EUTMR 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) EUTMR 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).

It has already been established that in the present case, the objectionable goods and the services, covered by the mark applied for are generally available consumption goods and services and are mainly aimed at average consumers. In view of the nature of these goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 30).

The applicant puts forward that the mark ‘THE SIGNATURE COLLECTION’ is vague and requires the average consumer to engage in reflections.

The applicant also submits that the term ‘THE SIGNATURE COLLECTION’ with its meaning of “products of a high standard worthy of being part of a signature dish which is something appropriate to gourmet foods and meals and to gourmet restaurants” but has no direct relation to the ingredients and fast food products applied for. Therefore the mark is not descriptive for these goods.

The Office, however, is convinced that there is a direct descriptive link between the term ‘THE SIGNATURE COLLECTION’ and the objected to goods and services and therefore renders this expression devoid of distinctive character. The expression ‘signature collection’ is widely used in the commercial market to refer to carefully crafted products making use of the highest quality materials and with the greatest care or to services of a high standard or level of luxury. This is definitively so over a broad range of goods and services such as in the field of foods and wines, fashion, complements and even holiday homes. Below are some examples taken from the Internet on of how this expression is used in the commercial market.

https://www.oakhousefoods.co.uk/blog/welcome-to-the-new-signature-collection/	https://www.amazon.co.uk/Taste-Excellence-Cookbook-Signature-Collection/dp/0847828395

http://www.bodnant-welshfood.co.uk/product/lavolio-decadent-spiced-the-collection

http://www.averys.com/jsp/offer/wineclub/uk/avy/signature_collection.jsp	http://www.houseoffraser.co.uk/Waterford+John+Rocha+Signature+collection+red+wine+set+of+2/153928012,default,pd.html

http://www.celtic-manor.com/the-signature-collection

The expression ‘signature collection’ or ‘the signature collection’ is clearly used to show a selection of products that are promoted as being of a better quality. The Office is convinced that there is no contradiction between the mark ‘THE SIGNATURE COLLECTION’ meaning products of a high standard which is appropriate to gourmet foods and restaurants and the goods for which protection is sought.

The public already used to the term ‘signature dish’ for prepared meals being made by cooks and chefs of repute will, without having to make one or more mental steps, be able to understand that the mark ‘THE SIGNATURE COLLECTION’ for food products and catering services offered by the applicant describes a range of fast foods that are above the standard quality of the products on offer. The relevant public will be able to make the same direct association with fast food products and with fast food caterers as it will with foods served at gourmet restaurants. Even the applied for ingredient foods such as ‘eggs, cheese, milk, milk preparations, pickles yogurt, mustard, oatmeal, pastries, sauces and sugar’ could easily form part of a range of quality foods under the common denominator of ‘signature collection’. Also a restaurant or food outlet rendering their services under the expression ‘THE SIGNATURE COLLECTION’ will do nothing more than describe the quality of their foodstuffs on offer.

Therefore the Office maintains that the expression ‘THE SIGNATURE COLLECTION’, describes the quality of the quick meal foodstuffs and the connected restaurant services. Therefore any other trader should be able to freely use this term to describe their foodstuffs or catering services. This means that the mark ‘THE SIGNATURE COLLECTION’ is descriptive of the characteristic and quality of the goods and devoid of distinctive character and cannot, therefore, be accepted as a trade mark in the registry.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14655807 is hereby rejected for all goods and services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Steven C. STAM