CANCELLATION No C 43 644 (INVALIDITY)

 

Japan Tobacco Inc., 1-1, Toranomon 4-chome Minato-ku, Tokyo, Japan (applicant), represented by Baylos, C/ José Lázaro Galdiano, 6, 28036 Madrid, Spain (professional representative)

 

a g a i n s t

 

British American Tobacco (Brands) Limited, Globe House 4 Temple Place, WC2R 2PG London, United Kingdom  (EUTM proprietor), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative). 

On 25/11/2020, the Cancellation Division takes the following

 

 

DECISION

 

1.	The application for a declaration of invalidity is partially upheld.

 

2.	European Union trade mark No 14 787 923 is declared invalid for some of the contested goods, namely: Class 34: Cigarettes; tobacco; tobacco products; smokers' articles.
3.	The European Union trade mark remains registered for all the remaining goods, namely: Class 34: Lighters; matches.
4.	Each party bears its own costs.

 

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 14 787 923   (figurative mark), (the EUTM), filed on 12/11/2015 with a priority date of 22/05/2015, and registered on 05/04/2016. The request is directed against all the goods covered by the EUTM, namely:

 

Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b)(c) and (d) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that  the goods covered by the contested sign are everyday consumption products that are mainly aimed at average consumers. As the contested mark contains English terms, the relevant public is the part of the public with a good command of this language. It provides the dictionary meanings of both of the words which comprise the sign and insists that the expression ‘FLOW FILTER’ will immediately and directly be understood by the relevant public as referring to cigarettes and tobacco products featuring a flow filter; i.e. indicating a characteristic of the products in Class 34, namely that they consist of a filter which allows to modify the smoke flow contained in the cigarette by delivering the smoke in a more intense and direct flow. The applicant claims that in the tobacco industry the word “flow” is mainly used to describe the basic function of a filter, namely, to allow the passing of air flow and / or smoke flow through the cigarette and thus FLOW term is descriptive and shall remain free to use. Moreover, it is a predefined factor in monitoring the smoker’s intake of air and smoke while smoking both filter or non-filter cigarettes alike. The applicant states that ‘flow filters’ are fairly common in certain types of cigarettes and relies on the decision of the Examination Division 05/07/2018, 17 811 936 ‘FLOW + TRIPLE CORE FILTER’ which was confirmed by the Board of Appeal 10/05/2019, R 1736/2018-1.

The applicant argues that the figurative device, composed of a silver circle and the silver letters are descriptive and non-distinctive elements and are basic shapes which are without trade mark protection. It consists of a basic geometric shape and will be perceived as a merely decorative element which describes the goods at issue without giving any specific information or precise message as to the commercial origin of the goods. The graphical elements of the sign which include several overlapping circles in different colours on a black background, one of which stands out in blue, and the depiction of the verbal element in white capital bold letters, it claims are also descriptive or non-distinctive. The use of different colours or its configuration do not render the sign any more distinctive as they are merely decorative or descriptive. Apart from a simple geometric shape, the consumers who will understand the meaning of the expression ‘FLOW FILTER’ will recognize the figurative element as being a very simple depiction of a filter which cannot indicate the commercial origin. Therefore, instead of adding any distinctive character to the sign, this figurative device reinforces the descriptive nature of the contested trade mark. Therefore, the EUTM consists exclusively of indications which may serve, in trade, to designate the intended purpose or characteristics of the goods in question. There exists a sufficiently direct and specific association between the expression ‘FLOW FILTER’ and the contested goods since the sign would immediately inform consumers without further reflection that these goods are used in connection with smoke flow filters or are intended for such purpose. Given that the sign has a clear descriptive meaning in relation to the goods in question, it is also devoid of any distinctive character under Article 7(1)(b) EUTMR.

The applicant claims that the Office has already raised a partial refusal against the EU No 17 811 936 , which was confirmed by the Board of Appeal. It argues that EU No 1 7811 936 is directly comparable to the contested EUTM in the present proceedings, and that there can be no doubt that the contested registration must be declared invalid on the same basis. Finally, the applicant contends that even if the combination of words “FLOW FILTER” was considered not to be descriptive per se by the date of the application of the contested trade mark, it would have become non-distinctive to the extent that this combination of terms was used before the application date in a descriptive manner, not being sufficient the figurative element to endow it with the required distinctive character to perform the essential function of a trade mark. The applicant states that although some of the evidence submitted is dated after the filing date or not addressed to consumers in the EU, it still shows that a ‘FLOW FILTER’ is a characteristic or part of the goods before the application was filed and thereafter and that this term transcends borders as websites can be accessed from all over the world and remains descriptive.

The applicant goes through the decision ‘FLOW + TRIPLE CORE FILTER’ cited above and argues that the same principles apply in the present case but that it should apply to the full list of goods and lays out the law in relation to descriptive signs. The applicant claims that these goods are mainly directed at smokers (tobacco consumers) which, due to their high loyalty to their preferred brand pay a high level of attention, despite the fact that these products are relatively cheap articles for mass consumption (03/07/2013, T- 205/12, LIBERTE american blend, EU:T:2013:341, § 23). However, just because the degree of attention is high does not necessarily mean that a weaker distinctive character of a sign is sufficient or that they will view any non-distinctive sign as distinctive. The applicant states that cigarettes can be filtered, and tobacco and tobacco products include cigarettes such as filtered cigarettes. Smokers’ articles include cigarette filters. It further states that most tobacco products come marketed prepackaged with a filter (cigarette) or are at least available with a filter-tip (mini-cigars, cigarillos, fake cigarettes). In the 1950’s filter-tip cigarettes were introduced and by the 1960’s filter cigarettes dominated the market. Therefore, all of the objected goods are typically provided with, or may be provided with, a filter.

The word ‘FLOW’ refers to ‘the action or fact of flowing; movement in a current or stream; an instance or mode of this. Originally said of liquids, but extended in modern use to all fluids, as air, electricity, etc.’. It can also be said of a flavor or taste. Due to its dictionary meaning, the term is particularly appropriate to indicate the flow of air and smoke that comes out, with each drag, and the stream of taste that passes by when smoking a cigarette or other tobacco product. The expression ‘flow filter’ is indeed commonly used in this sense. Therefore, the applicant claims that it must be undoubtedly concluded that the combination of the English term ‘FLOW FILTER’ is likely to be understood by the relevant public as referring to cigarettes’ filters having a hard consistence or a compact structure. Indeed, with respect to the tobacco (and like) products at issue it indicates that these goods are endowed with (or consist of) a filter for the smoke flowing between the mouth and the product in question and that those goods are in the nature of, or they comprise a filter that enhances the flow and thus the smoking experience. Consequently, the registered sign being descriptive in its ordinary and plain meaning and shall be refused.

The applicant points to different patents and website extracts to show that the words of the EUTM were in use in a descriptive fashion prior to the time of filing of the EUTM. It claims that while a flow filter is not a current characteristic of some of the contested products, consumers, when facing the contested trade mark in relation to these products in question could perfectly come to the conclusion that they include the said filter. The applicant puts forward that it can be inferred that the term flow filter is used to identify a type of cigarettes and to differ them from the original/regular ones. In the same way that the term original does not indicate the origin of the product but a characteristic of the goods. The applicant points out that this term has been used by consumers in Spanish (for which it submits evidence) but not in a trade mark sense but to refer to the characteristics of the goods also. As such the EUTM must be cancelled not only in relation to the goods for which the sign is clearly descriptive but also in relation to the goods in which the consumers could perceive it as descriptive, irrespective of whether the current technology exists in relation to these goods.

The applicant provides pictures of cigarettes containing filters which are typically round and claims that the figurative element is a simplistic representation of a filter of a tobacco product. This figurative element merely illustrates and emphasis the message conveyed by the descriptive word elements. Therefore, this element is clearly allusive to the goods at hand and not an indication of origin, even in relation to goods for which the current technology can make, or not, it possible to use in relation to these goods. The applicant claims that even if the consumer does not establish any link between the circular figurative element and the filter shape they are not likely to perceive it as distinctive but merely as a decorative simple geometric shape of a circle. It provides a picture of filters in cigarettes as shown below:

It argues that the figurative device in the mark is a simple representation of this filter that is used to control the flow of smoke or merely a simple geometric shape. This element is incapable of diminishing the descriptive message of the EUTM as it merely reinforces the descriptive meaning. The banal typeface, colour and layout also cannot add any distinctive character to the sign and is not capable of creating in consumers’ minds an immediate and lasting memory of the mark by diverting their attention from the descriptive message conveyed by the expression ‘FLOW FILTER’. Therefore, the sign cannot function as a badge of commercial origin for the goods.

The applicant argues that if the Office does not consider the sign to be descriptive then it should consider that it has become customary and descriptive in the current language and in the bona fide and established practices of the trade at the date of filing and must remain free for all to use according to Article 7(1)(d) EUTMR. It also argues that due to the descriptive nature of the EUTM the sign is non-distinctive according to Article 7(1)(b) EUTMR. Therefore, the EUTM must be rejected in its entirety.

In support of its observations the applicant submitted the following evidence:

 Annex 1: Extracts from the online Collins Dictionary (https://www.collinsdictionary.com/) in relation to the definitions of the words ‘flow’ and ‘filter’.

 Annex 2: Extracts from the Internet regarding the use of the term ‘flow’ which consist of extracts from the internet of different articles using the word ‘FLOW’ in relation to tobacco and patents using the term ‘FLOW’ in relation to filters for cigarettes.

 Annex 3: Extracts from the internet regarding the use of the term ‘flow filter’ in different press articles.

 Annex 4: Extracts from Google Image after looking for the term “flow filter” in relation with the goods “tobacco”.

 Annex 5: Extracts from patents including the terms “flow filter”, “flow” and “filter” to refer to an element or a device that could be a part of a smoking system.

 Annex 6: Copy of the partial refusal raised by the Examination Division of 03/07/2018, No 17 811 936, and the copy of its confirmation by the Board of Appeal of 10/05/2019, R1736/2018-1.

The EUTM proprietor did not submit any observations in response to the applicant, although invited to, and provided with a time limit in which to do so, by the Office.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services. 

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union. 

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the European Union trade mark, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings. 

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources. 

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43) or at the date of priority as in the present case.

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 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 (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, § 25).

DESCRIPTIVENESS – ARTICLE 7(1)(c) EUTMR 

Article 7(1)(c) EUTMR prohibits the registration of ‘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’.

By prohibiting the registration as EU 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 for which registration is sought may be freely used by all. That provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR 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 and services such as those for which registration of a mark is sought (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

According to case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and/or services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and/or services in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. It is sufficient that at least one of the possible meanings of a word sign designates a characteristic of the goods concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The existence of the abovementioned relationship must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

In the present case, the contested goods are the following:

Class 34: Cigarettes; tobacco; tobacco products; lighters; matches; smokers' articles.

The relevant public for these goods is the public at large (mainly smokers). The attentiveness of these consumers, due to their high loyalty to their preferred brand, will be high, despite the fact that these products are relatively cheap articles for mass consumption (03/07/2013, T- 205/12, LIBERTE american blend, EU:T:2013:341, § 23)..

The applicant argues that the term ‘FLOW FILTER’ is descriptive of the goods as they may be types of filters that can regulate the flow of smoke. The contested EUTM is comprised of the English term ‘FLOW FILTER’ depicted in standard white capital typeface on a black circle with an outer blue line and with ‘FLOW’ written around the top and ‘FILTER’ on the bottom of said circle. On the inside of this circle appears a series of concentric circles of different sizes, thickness and shades of colors blue, black, grey, blue and again grey in the middle of this is superimposed on a black background. As the contested mark contains an English term and the evidence submitted by the applicant refers to the meaning of the sign in English, the relevant public is the English-speaking consumer in the European Union.

According to the online Collins English Dictionary the words of which the EUTM consists have inter alia the following meanings:

 FLOW – If a liquid, gas, or electrical current flows somewhere, it moves there steadily and continuously; a continuous stream or discharge; to move gently, smoothly and easily; glide.

 FILTER – To filter a substance means to pass it through a device which is designed to remove certain particles contained in it; a filter is a device through which a substance is passed when it is being filtered.

There is no reason to assume that this expression had a different meaning at the filing date of the contested trade mark (12/11/2015) or indeed at the time of priority (22/05/2015).

The contested goods listed above involve tobacco products and related articles some of which could possibly contain a filter which could regulate the flow of smoke to the user when they inhale from the product. Therefore, this combination of words has a descriptive meaning for many of these goods.

However, the sign is a figurative sign which has been described above. The circles are simple geometric shape, but, as has also been shown from the picture of the cigarettes as shown below:

it could also easily be viewed as a filter-tip, especially in relation to goods for which it is registered. The use of different colours and the layout of the sign are not enough to render it distinctive as they are merely decorative and serve to highlight the descriptive term and depiction of a filter. Therefore, this element is descriptive and non-distinctive.

The applicant also relies on the decision of the Examination Division 05/07/2018, 17 811 936 ‘FLOW + TRIPLE CORE FILTER’ which was confirmed by the Board of Appeal 10/05/2019, R 1736/2018-1. In that case the sign involved was the following:

The Cancellation Division agrees that the above cited decision of the Board of Appeal is relevant in this particular case as the depiction of the filter is even more standard in the present case when compared to the image of the goods:

Therefore, the sign is comprised of the descriptive term ‘FLOW FILTER’ and a descriptive image of a filter, or for those who might not view it as such, as a basic geometric shape, which does not have any trade mark significance. As mentioned above, the standard typeface, layout and colours are merely decorative and serve to highlight or emphasis the descriptive word element and the descriptive image of the filter/simple geometric shape and as such cannot serve to add distinctive character.

Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or are likely to create a lasting impression of the mark, the mark is registrable. In the present case, the figurative element is not particularly fanciful or original and the typeface is plain, with the circles which are basic geometric shapes or at best a depiction of a filter. The colour, typeface and layout of the sign do not add any degree of distinctiveness to the sign as they are rather standard and merely decorative and the sign is deemed to be descriptive, but not in relation to all of the registered goods.

The sign as such is descriptive of the goods which contain or may contain filters, which in the present case, include cigarettes, tobacco, tobacco products and smokers' articles While it is clear that a filter is a component of a cigarette, the general categories of tobacco, tobacco products and smokers’ articles are broad enough to cover products such as filtered cigarettes and cigarette filters and, in general, goods (such as tobacco) that can be sold with filters. In addition, although a ‘filter’ is not necessarily part of a tobacco product, the relevant consumers are well aware that most tobacco products, come marketed nowadays prepacked with a filter (cigarettes) or are at least also available with a filter-tip (10/05/2019, R 1736/2018-1, FLOW + TRIPLE CORE FILTER (fig.), § 29). In such respect, it should be recalled that, according to settled case-law, the finding that a mark has descriptive character applies not only to goods for which it is directly descriptive, but also to the more general category to which those goods belong in the absence of a suitable restriction of the trade mark by the applicant (15/09/2009, TAME IT, T-471/07, EU:T:2009:328, § 18; 16/12/2010, Hallux, T-286/08, EU:T:2010:528, § 37; 15/07/2015, HOT, T-611/13, EU:T:2015:492, § 44)

Therefore, the Cancellation Division considers that the sign is descriptive in relation to the following registered goods:

Class 34: Cigarettes; tobacco, tobacco products; smokers' articles.

However, the remaining goods - namely, lighters and matches - do not directly have filters. The applicant has argued that these goods can be used with filters or that they have or can contain filters. However, the Cancellation Division cannot agree with this hypothesis and the mere fact that they can be used in relation to tobacco that contains a filter is not enough to find that the sign is descriptive for these non-filter goods, namely, the following:

Class 34: Lighters; matches.

It follows from the above that the application is upheld in part insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(c) EUTMR. Therefore, the examination of the application must continue in relation to the remaining grounds in relation to the goods for which the sign is not directly descriptive.

NON-DISTINCTIVENESS – ARTICLE 7(1)(b) EUTMR

According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of an individual trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

 

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

It is noted that in relation to the goods for which the EUTM has already been found to be directly descriptive, the sign would also be clearly non-distinctive in relation to those goods as they cannot indicate the commercial origin of the goods but merely their characteristics, ie that they contain a filter. Therefore, this ground is also upheld in relation to the above mentioned goods which for the sign has already been found to be descriptive.

However, as seen above, it cannot be concluded that the contested sign is descriptive for the remaining goods, namely:

Class 34: Lighters; matches.

The applicant’s arguments regarding the lack of distinctiveness of the contested mark are the same as those mentioned above and they are based on the assumption that the sign is descriptive. However, as seen above, it cannot be concluded that the contested sign is descriptive for the abovementioned goods. Therefore, no lack of distinctiveness of the contested mark can be affirmed on account of its alleged descriptiveness as regards those goods. The applicant has not provided any other arguments or evidence for the lack of distinctiveness of the contested mark.

 

Consequently, the application must be rejected insofar as it is based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR in relation to the above mentioned remaining goods.

 

CUSTOMARY CHARACTER – ARTICLE 7(1)(d) EUTMR

Pursuant to Article 7(1)(d) EUTMR, a sign that consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established trade practices cannot be registered as a trade mark.

 

The assessment of the alleged customary use of a sign must be carried out in relation to the goods or services for which the trade mark is registered and in relation to the relevant public’s perception of the sign (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 49). In addition, actual customary use, not mere potential use as in the case of descriptive character, must be established. Marks covered by Article 7(1)(d) EUTMR are excluded from registration not on the basis that they are descriptive, but on the basis of current usage in trade sectors covering trade in the relevant goods or services (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 51).

 

The customary use of the sign must be proved at the relevant point in time, that is, the time of filing of the contested mark (12/11/2015) or in the present case at the date of priority (22/05/2015).

Although the sign is descriptive in relation to some of the contested goods, as seen in the examination of Article 7(1)(c) EUTMR above, the same cannot be said for the remaining goods which do not contain filters. The applicant submitted no evidence whatsoever that the sign was used at the time of the priority filing of the contested mark in relation to the remaining contested goods or was the customary term used in relation to these goods. Therefore, it cannot be established that the mark, at the time of the priority filing, consisted exclusively of signs or indications which had become customary in the current language or in the bona fide and established trade practices for the remaining goods.

 

Consequently, the application must be rejected insofar as it was based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(d) EUTMR in relation to the above mentioned remaining goods.

Conclusion

The contested mark was descriptive pursuant to Article 7(1)(c) EUTMR and non-distinctive pursuant to Article 7(1)(b) EUTMR at the time of its priority filing in relation to some of the contested goods.

Moreover, the EUTM proprietor did not demonstrate that it had acquired distinctive character either before its priority filing date or before the filing date of the application for invalidity in relation to those goods.

 

In light of the above, the application is partially successful insofar as it is directed against the following goods:

Class 34: Cigarettes; tobacco; tobacco products; smokers' articles.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs. 

 

The Cancellation Division

 

Ioana MOISESCU

Nicole CLARKE

María Belén IBARRA DE DIEGO

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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.