Refusal of application for a European Union trade mark

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

Alicante, 04/07/2016

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

REINO UNIDO

Application No:	014924302
Your reference:	CL/CM/T102323EM
Trade mark:	NATURAL CARE
Mark type:	Figurative mark
Applicant:	Out! Pet Care, LLC 2727 Chemsearch Boulevard Irving California 75062 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/02/2016 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 08/04/2016, which may be summarised as follows:

1. The Office has failed to take into account the stylised nature of the mark and the sign „plus“. The mark will be understood by the average consumer as “natural care plus”; this word combination carries the fanciful message that the goods in question are in fact better than natural products.

2. The verbal element does not contain any words that could describe the goods, as the claimed goods do not contain any natural components.

3. The applied for trade mark has at least minimum distinctiveness. The word order and their position, also the graphic stylisation and overall impression given by the unusually combined elements would be perceived by the consumer as an indication of origin, rather than as a descriptive term.

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.

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.2 EU:C:2004:532’, § 25).

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.

The sign which has been applied for immediately informs consumers without further reflection that the goods and services applied for are various kinds of care products made from natural ingredients.

Therefore, the mark conveys obvious and direct information regarding the: kind, quality and intended purpose of the goods in question.

By prohibiting the registration as European Union trademarks 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’, EU:C:2003:579, § 31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § ‘21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, taken as a whole, the mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

As regards the applicant's observations, the Office replies as follows:

1. The Office has failed to take into account the stylised nature of the mark and the sign „plus“. The mark will be understood by the average consumer as “natural care plus”; this word combination carries the fanciful message that the goods in question are in fact better than natural products.

The mark as a whole would immediately inform consumers without further reflection that the goods applied for are various kinds of care products made from natural ingredients. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind and quality of the goods in question. It follows that the link between the words contained in the mark and the services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1) (c) and Article 7(2) EUTMR. There is no need for an additional mental step to understand the connection between the mark and the goods. All the elements in combination indicate the characteristics of the goods as stated by the Office above. Therefore the Office cannot agree with the Applicant that there is no obvious or direct link between the trade mark and the objected goods. Whether there exist other connotations or not is irrelevant since in the context of the claimed goods the trade mark has at least one meaning which is directly descriptive.

2. The verbal element does not contain any words that could describe the goods, as the claimed goods do not contain any natural components.

The fact stated by the applicant, namely that the goods actually do not contain any natural ingredients, is irrelevant, as the list of the goods and services does not contain such a restriction; therefore, the goods might be made of natural ingredients as stated by the Office.

The applied for trademark informs consumers without further reflection that the goods applied for are various kinds of care products made from natural ingredients. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind and quality of the goods in question. The Office considers there to be no need for an additional mental step to understand the connection between the mark and the goods. The Applicant’s consideration is not relevant in the present case as the assessment of the descriptiveness of the applied for trade mark should be focused on the claimed goods and the circumstance in which the relevant public perceives the claimed sign. In relation to the refused goods, the Office maintains that the mark indicates their ability to provide care in a natural, environmentally friendly way, and that the goods include more natural ingredients than goods of the same kind. Therefore the Office cannot agree with the Applicant that the claimed expression is too vague and that there is no obvious or direct link between the sign and the objected goods.

3. The applied for trade mark has at least minimum distinctiveness. The word order and their position, also the graphic stylisation and overall impression given by the unusually combined elements would be perceived by the consumer as an indication of origin, rather than as a descriptive term.

With respect to the Applicant’s claim that the stylisation of the sign’s word element makes it distinctive, the Office notes, that in the examination of a mark, when the verbal element is descriptive and devoid of distinctive character, the question of whether or not the figurative element is striking, surprising or unexpected, or capable of creating in the consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element, must be considered in particular. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element. This is not the case with the present sign, since the trade mark consist of two words, presented in black and white colours placed on top of one another, which do not add distinctiveness to the trade mark; these elements are commonly used and therefore are perceived by the consumer as commonly used standard elements. Contrary to the Applicant’s opinion, a plus sign presented in a trade mark is depicted in a very simple way and is often used to indicate medical goods or the fact that goods have better quality; or, that they contain more than similar products having the same price. In the Office’s opinion this element is too insignificant in its impact to influence the overall impression of the claimed sign in a way which could endow distinctiveness. Consumers will perceive this element as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin. The Office considers the elements, to which the Applicant attributes a high stylisation, as not being able to distinguish the Applicant’s trade mark. The sign is not figurative enough to reach the minimum degree of distinctive character that is requested for registration. Also as stated above there is nothing unusual in the claimed word combination as in the present case there is no perceptible difference between the expression “natural care” and the mere sum of the words natural and care. The overall impression conveyed by the mark is not different from the mere addition of the individual meanings of each of the words composing it. The Applicant did not provide any arguments, evidence, or explanations about the second meaning or any different overall impression of the word combination in question. Therefore the Office maintains its view that the sign is descriptive. The relevant public will not memorise the sign easily and instantly as a distinctive trade mark for the goods in question. The fact is, that the mark is descriptive with respect to the goods applied for and, as a consequence, lacks any distinctive character.

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 14 924 302 is hereby rejected.

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.

Liina PUU