Refusal of application for a European Union trade mark

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

Alicante, 11/07/2016

BARKER BRETTELL LLP

100 Hagley Road, Edgbaston

Birmingham B16 8QQ

REINO UNIDO

Application No:	014993414
Your reference:	LK81851T.EM
Trade mark:	CORN CAPS
Mark type:	Word mark
Applicant:	Cuxson Gerrard & Company Ltd 125 Broadwell Road, Olbury, West Midlands B69 4BF REINO UNIDO

The Office raised an objection on 22/02/2016 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 22/06/2016, which may be summarised as follows:

1- The mark is an invented term coined by the applicant, with no dictionary meaning.

2- The applicant submits evidence to demonstrate that the generic terms used by trade (competitors), the medical profession and the public across the EU for corn treatments brought over the counter, as opposed to standard scalpel treatment by a medical practitioner/ podiatrist, are:

• medicated corn removal plasters (usually abbreviated to corn plasters or corn

removal plasters),

• corn removal pens

• corn removal creams and gels

• corn cushioning products.

He therefore submit that the mark CORN CAPS as a whole is prima facie inherently

distinctive for the goods applied for in class 5.

3- In the event that the Examiner maintains an objection to the subject application, the applicant submits that the mark has acquired distinctiveness by virtue of substantial use across the EU and in particular in the English speaking countries of the EU.

4- The applicant sells over the counter medicated corn removal plasters under its trade mark CORN CAPS. The generic term for corn removal plasters is “CORN PLASTER” or “CORN REMOVAL PLASTER”.

5- The mark diverges from the rule of English grammar and so is lexically incorrect.

6- The term CAPS has multiple meanings.

7- The use of “CORN” in conjunction with the word “CAPS” is unusual.

8- There is no sufficiently direct and specific relationship between the sign and the goods in question.

9- CORN CAPS is not a term the average consumer would use.

10- The mark is aurally distinctive.

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.

General remarks on Article 7(1)(c) EUTMR

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

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Specific remarks concerning the observations of the applicant

1- The mark is an invented term coined by the applicant, with no dictionary meaning.

The dictionary meanings are unequivocal:

CORN: A small, painful area of thickened skin on the foot, especially on the toes

http://www.oxforddictionaries.com/us/definition/american_english/corn#corn-2

CAPS: Plural form of ´cap´ (something that protects or covers)

http://www.collinsdictionary.com/dictionary/english/cap

The Oxford Dictionary also refers to the term CAP as: artificial protective covering

http://www.oxforddictionaries.com/us/definition/american_english/cap

Furthermore, 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 …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the present case there is no perceptible difference between the invented term coined by the applicant and the mere sum of its parts.

2- The applicant submits evidence to demonstrate that the generic terms used by trade (competitors), the medical profession and the public across the EU for corn treatments brought over the counter, as opposed to standard scalpel treatment by a medical practitioner/ podiatrist, are:

• medicated corn removal plasters (usually abbreviated to corn plasters or corn

removal plasters),

• corn removal pens

• corn removal creams and gels

• corn cushioning products.

He therefore submit that the mark CORN CAPS as a whole is prima facie inherently

distinctive for the goods applied for in class 5.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

3- In the event that the Examiner maintains an objection to the subject application, the applicant submits that the mark has acquired distinctiveness by virtue of substantial use across the EU and in particular in the English speaking countries of the EU.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The applicant merely submitted a series of invoices, and examples of the use of trade marks in this particular trade sector. It has been noted that the applicant even submitted several examples of the use of the mark CORN CAPS, in a generic way, and under the brand ´Carnation´.

No information whatsoever has been submitted in respect of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations.

In view of the above, the applicant´s claim that the mark has acquired distinctiveness by use must be rejected.

4- The applicant sells over the counter medicated corn removal plasters under its trade mark CORN CAPS. The generic term for corn removal plasters is “CORN PLASTER” or “CORN REMOVAL PLASTER”.

A search on the internet has revealed that the term CORN CAPS is generic:

5- The mark diverges from the rule of English grammar and so is lexically incorrect.

The Office fails to see in how far the two word elements, conjoined, diverge from English grammar. The applicant has not substantiated this assertion.

The Office also refers to paragraph 20 in Case T-187/14; where the General Court held that:

´It must be recalled that, in the context of Article 7(1)(c) of Regulation No 207/2009, it is not necessary, in order for a sign to be caught by the prohibition laid down by that article, for the sign to be used correctly as regards its grammatical form or its spelling. As the Board of Appeal rightly stated, it is sufficient that the relevant public understand, immediately and without the need of any particular intellectual effort, the word ‘flex’ as an abbreviation of the words ‘flexible’ or ‘flexibility’, contrary to the submissions made by the applicant, even if such usage is unusual or, grammatically or orthographically, incorrect.´

6- The term CAPS has multiple meanings.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

7- The use of “CORN” in conjunction with the word “CAPS” is unusual.

Under point 4-, the Office has demonstrated that the expression CORN CAPS is not unusual, but generic, and will be understood by the relevant public immediately and without the need of any particular intellectual effort.

8- There is no sufficiently direct and specific relationship between the sign and the goods in question.

The goods for which registration is sought include corn caps. It follows that the link between the mark and the goods is direct, clear and unequivocal.

9- CORN CAPS is not a term the average consumer would use.

Under point 4- the Office has demonstrated that the relevant public is familiarized with the generic expression CORN CAPS.

10- The mark is aurally distinctive.

The Office is not familiar with this concept. The EUTMR does not contemplate aural distinctiveness.

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 014993414 is hereby rejected for all the goods claimed.

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.

Jean Marc SCHULLER