Refusal of application for a European Union trade mark

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

Alicante, 08/04/2016

Lightbox Sp. z o.o.

Aleja Grunwaldzka 186

80-266 Gdańsk

POLONIA

Application No:	014767008
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Lightbox Sp. z o.o. Aleja Grunwaldzka 186 80-266 Gdańsk POLONIA

The Office raised an objection on 24/11/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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 25/01/2016, which may be summarised as follows:

• The goods and services in Classes 5 and 44 are highly specialised goods and services directed at vigilant and more attentive consumers.

• The marks which are only suggestive or allusive are registrable.

• There is no direct link between the mark and the goods and services for which registration is sought: a box with a handle might be used for packaging of variety of objects which are not destined for take-away.

• Examiner must specifically state which grounds for refusal apply to the mark in question in relation to each claimed good and service.

• The mark possesses minimum degree of distinctiveness.

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.

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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 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 (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 applicant states that, at least part of the relevant goods and services are specialised goods and services and thus the relevant public will be more attentive. As clearly stated in the notification of 24/11/2015, the Office also considers that some goods and services (e.g. dietary supplements; nutrition consultancy) are specialised. However, it is the Office’s view that they are mainly directed at average consumers who are reasonably well-informed and reasonably observant and circumspect. Goods such as dietary supplements are generally vitamins, minerals, herbs etc. Although usually sold in pharmacies, they do not require a medical prescription and are not intended to prevent or treat any disease. They are mainly directed at consumers of the general public without any specific medical and pharmaceutical knowledge whose level of attention is average. Similarly, nutrition consultancy services, although provided by specialists, are directed mainly at average consumers who are reasonably well-informed and reasonably observant and circumspect.

In any case, even if the level of attention in relation to some of the goods or services was higher than average, the Office considers that the higher level of attention does not suffice, on its own, to establish that the consumer will recognise an indication of origin when confronted with a representation of a box with a handle, unless it was represented in a really striking manner, which is not a case. It is the Office’s view that, in the present case, the sign applied for is simple, basic and so lacking in additional distinguishing feature or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the degree of the awareness of the relevant public was higher than average.

Further, the Office agrees with the applicant that trade marks which are merely suggestive or require further interpretation shall not be refused registration. However, the mark in question cannot be perceived as anything other than an indication of the characteristics of the goods and services in question. The message expressed by the sign applied for is clear, direct and immediate to the relevant public. It is not vague in some way or other, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. A simple figurative representation of the box with a handle is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

Take-away services are offered by restaurants and catering companies for all kinds of food and drinks. The Office does not understand why rice-based dishes mentioned by the applicant could not be offered as take-away food. Moreover, it is not uncommon that catering companies/restaurants more often have healthy or diet food and drinks (Class 5) in their take-away offer: they provide a wide range of prepared meals for those with a medical condition that requires a restricted diet, those who want to loose weight or those who just want to maintain a healthy lifestyle. Very often, this is accompanied by a diet plan prepared by specialists in nutrition or nutrition consultancy (Class 44).

There is nothing in the figurative mark at hand that might, beyond its obvious direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense.

The applicant argues that a box with a handle might be used for packaging of variety of objects which are not destined for take-away and that consumers would not have any direct indication of the goods and services on seeing the representation of a box with a handle. In this respect, the Office does not dispute the fact that the mark at hand, taken in isolation and without any goods or services to use as a point of reference for assessment, might be vague. But the mark at issue cannot be examined in isolation. The crux of the question is what the relevant public will think of when they see the sign in relation to the specific goods and services applied for by the applicant.

Descriptiveness and distinctiveness must not be assessed in the abstract without reference to the context in which a mark is likely to be used. As already indicated in the original notification, the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services. Therefore, the mark applied for has to be viewed in connection with the goods and services applied for.

Moreover, the Office agrees with the applicant that when refusing registration of a trade mark, the Office is required to state its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated. However, where the same ground of refusal is given for a category or group of goods or services, the Office may use only general reasoning for all of the goods or services concerned (judgment of 15/02/2007, C-239/05, 'The Kitchen Company, paragraph 38). In the present case, the Office’s notification of 24/11/2015 satisfies that requirement, since the assessment of the goods and services in question was carried out on the basis of a general homogeneous categorisation as take-away food and drinks and services of provision of such food and drinks, as well as services of nutritional advice, information and consultancy relating to take-away food and drinks.

Further, the Office does not agree with the applicant that no reasons were given justifying lack of distinctive character of the mark. In its notification of 24/11/2015, the Office clearly stated that given that the mark has a clear descriptive meaning in relation to the goods and services in question, it is also devoid of distinctive character. It is settled case-law that there is a clear overlap between the scope of the grounds for refusal set out in Article 7(1)(b) to (d). In particular, it is clear from the case-law that a mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTM (see judgment of 12/06/2007, T-190/05 ‘TWIST & POUR’, paragraph 39). This is applicable in the present case.

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 14 767 008 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Anna BAKALARZ