Refusal of application for a European Union trade mark

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

Alicante, 08/04/2016

FORRESTERS

Port of Liverpool Building,

Pier Head,

Liverpool, Merseyside, L3 1AF

UNITED KINGDOM

Application No:	014892806
Your reference:	TM03506EM
Trade mark:	Lite Sweet
Mark type:	Figurative mark
Applicant:	Xlear, Inc. PO Box 1421, 723 South Auto Mall Drive American Fork Utah 84003 UNITED STATES OF AMERICA

The Office raised an objection on 16/12/2015 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 31/12/2015, which may be summarised as follows:

• The examiner clearly dissects the mark into its constituent elements in order to create an objection that would not be raised if the examiner were to view the trade mark as a whole, as the consumer does.

• The average consumer will realistically look at the trade mark and place most attention on the visual elements in particular the colour and logo and deduce it is a badge of origin.

• The sign is distinctive because of the unusual juxtaposition of the words Lite and Sweet.

• The applicant requests that the objections raised are retracted and the application is allowed to go forward to publication in full.

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.

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. (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 applicant argues that “when assessing the distinctive character of a trade mark consisting of a combination of elements the mark needs to be considered as a whole and that artificial dissection of a mark into its various parts in order to formulate an objection is not considered correct”. The applicant further contends that “the examiner clearly dissects the mark into its constituent elements in order to create an objection that would not be raised if the examiner were to view the trade mark as a whole, as the consumer does”.

The Office agrees with the applicant that the distinctive character of a trade mark consisting of a combination of different elements needs to be considered as a whole and the Office always pursues to follow this fundamental requirement when examining trade mark applications on absolute grounds. In the first place however, all separate elements making up a sign need to be identified and their possible meanings explained in order to come to a balanced consideration of the mark as a whole. This notion is supported by, amongst others, the following case law:

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, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts … (See judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32.)

The Office does not follow the applicant’s argument that “the trade mark is distinctive and it is not one that would be expected to be used or needed to be used by others to describe the goods covered by the application, not least because of a. the figurative element, and b. the unusual spelling of LITE and the unusual juxtaposition of LITE together with SWEET”.

In this specific case the Office is of the conviction that the combination of the separate elements of the mark: the word ‘Lite’, the word ‘Sweet’ and the depiction of the two green leaves in between the words are all descriptive and devoid of any distinctive character of the goods for which the mark has been applied for. The relevant consumers looking for sugar substitutes and natural sweeteners will find in the terms ‘Lite’ and ‘Sweet’ nothing more than a description of the desired properties of the said goods namely, that they contain few calories, generally described in the relevant market as ‘light’ or ‘lite’ and that they are still sweet like sugar.

The image of green leaves are nothing more than a direct reference to the fact that the sweeteners are of a natural or vegetal composition. In the food sector it is common practice to market products that are low in fat or refined sugars to fit a, what is considered, healthy diet and still maintain the same taste or consistency of the traditional products. Therefore there is nothing unusual in combining sweet properties with the word ‘Lite’ and indeed it is a quality that contemporary consumers are looking for.

Also it is quite normal for undertakings to use modern shortened, American or simplified spelling in the English language to market their products. The targeted public will readily associate the term ‘Lite’ with the English word ‘light’ and will not be drawn away from the real meaning of the word. The omission of the letters ‘GH’ represents a minor alteration of the word’s syntax which is not even phonetically perceptible. The utilization of misspellings or omissions of mute letter combinations are common practice in trade and particularly used for promotional purposes (see decisions of 27 May 1998, R 20/1997-1, ‘XTRA’, para. 16; of 14 April 2008, R 1871/2007-4, ‘XACT BALANCE’, para. 17; and of 22 April 2009, R 85/2009-4, ‘XTRA CARE’, para. 20).

The applicant also points out the unusual juxtaposition of the combination ‘Lite’ and ‘Sweet’ but fails to explain why this is so. The assumption that the separate descriptive and laudatory elements of the sign are placed in a less usual order or juxtaposition does not take away the fact that the relevant public will perceive the applicant's sign under which the sweetener products are sold as being descriptive and laudatory. An applicant for a trade mark which comprises a combination of words will have to demonstrate that the combination has some unusual variation because of its syntax or the meaning given by the combination. This is clearly not possible in this case. The mere changing of the word order of two extremely descriptive and banal expressions does not make the sign less descriptive nor does it enhance the distinctive character.

Regarding the figurative elements of the mark the Office would like to repeat that it remains of the opinion that the stylization of the word elements ‘Light Sweet’ is not sufficient to render the sign applied for distinctive. The letters although in a purple commonly used typeface do not present any striking originality which could add to the distinctive character of the mark. The typeface used in combination with the green leaves describing the natural quality of the products cannot divert the consumer’s attention from the clear message conveyed by the words ‘Lite Sweet’ which lack distinctiveness. (See judgement 11/07/2012, T-559/10, ‘natural beauty’, par. 27.)

Therefore in this case the relevant consumer of sugar substitutes and natural sweeteners and having an imperfect recollection will not see the combination of a sign with green leaves and the descriptive message of ‘Lite Sweet’ to be a mark of origin distinguishing the products of one undertaking from those of another trader.

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 14892806 is hereby rejected for all goods.

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.

Steven STAM