Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 21/01/2016

URQUHART-DYKES & LORD LLP

Tower North Central

Merrion Way

Leeds LS2 8PA

REINO UNIDO

Application No:	014758718
Your reference:	T235221EM/SXA
Trade mark:	MAN'STUFF
Mark type:	Figurative mark
Applicant:	Badgequo Limited Number 8, Belton Road Silsden West Yorkshire BD20 0EE REINO UNIDO

The Office raised an objection on 10/11/2015 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 25/11/2015, which may be summarised as follows:

1- The word elements of the mark are MAN'STUFF and not MAN STUFF

2- The figurative element is distinctive.

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 on Article 7(1)(c) CTMR:

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.

(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).

Specific remarks concerning the applicant´s observations:

1- The word elements of the mark are MAN'STUFF and not MAN STUFF

Firstly, both terms are phonetically identical and visually the difference between them is scarcely discernible.

Whereas the applicant accepts that the meaning of MAN STUFF is easily understandable by the relevant consumers, he fails to explain why the meaning of MAN'STUFF isn´t equally straightforward, i.e. ´things designed for, or destined to men´.

2- The figurative element is distinctive.

The shape of the label is banal and commonplace and its function is merely decorative.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 014758718 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.

Jean Marc SCHULLER