Refusal of application for a European Union trade mark

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

Alicante, 21/09/2016

INLEX IP EXPERTISE

5, rue Feydeau

F-75002 Paris

FRANCIA

Application No:	015019921
Your reference:	MA9163UE264686
Trade mark:	CORE RESTORE
Mark type:	Word mark
Applicant:	KAO KABUSHIKI KAISHA also trading as KAO CORPORATION 14-10, Nihonbashi Kayabacho 1-chome Chuo-ku Tokyo 103-8210 JAPÓN

The Office raised an objection on 25/01/2016 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 25/05/2016, which may be summarised as follows:

1. The terms ‘CORE’ and ‘RESTORE’ each have several different meanings.

2. None of the different meanings of the terms ‘CORE’ and ‘RESTORE’ relate to hair care products or similar goods. These words are not usually used in relation to hair care products; the targeted consumer is not used to seeing these terms in relation to hair care products.

3. The sign ‘CORE RESTORE’ does not give any indication about the product or its characteristic, so it can not be held that the mark conveys obvious and direct information regarding the intended purpose of the goods.

4. The trade mark is not descriptive but rather suggestive, and requires imagination, thought, and perception to arrive at the exact qualities or characteristics of the goods. The different meanings of the words ‘CORE’ and ‘RESTORE’ suggest different possible meanings.

5. The choice of the applicant of the words ‘CORE’ and ‘RESTORE’ is arbitrary and uncommon. Their combination is unusual in relation to hair care preparations.

6. There is a difference between the combination of the word elements in the application and the words which would be commonly used to designate the characteristics of hair care products. This perceptible difference is apt to confer distinctive character on this creative expression, enabling it to function as a trade mark.

7. The applicant is the only undertaking in the cosmetic field to use the term ‘CORE’ in relation with beauty care products.

8. The applicant already has a certain number of registered trade marks that contain the word ‘CORE’.

9. The average consumer would thus associate the term ‘CORE’ with products originating from the applicant.

10. Other marks composed either of the term ‘CORE’ or ‘RESTORE’ have been registered by the EUIPO for Class 3 goods.

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 lift the objection under Article 7(1)(c) EUTMR, but to maintain the objection under Article 7(1)(b) EUTMR.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

In this regard, it should be pointed out that even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, it can still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin (12/07/2012, T-470/09, Medi, EU:T:2012:369, § 22).

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of 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, § 29). In the present case, the goods are hair care preparations. These are everyday consumption goods, mainly aimed at the average consumer. In nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

As indicated in the notification of preliminary refusal of the trade mark application, the trade mark consists of the words ‘CORE’, which will be understood by the English-speaking consumer as ‘the central, innermost, or most essential part of something’¹, and ‘RESTORE’, which will be understood as ‘repair’ or ‘re-inforce’². The relevant consumer will understand the words as a meaningful expression: repair or re-enforce the central part of something, in this case the hair.

The Office does not agree with the applicant’s argument that the trade mark is only suggestive and requires imagination, thought, and perception to arrive at the exact qualities or characteristics of the goods. On the contrary: the expression ‘CORE RESTORE’ provides a clear and straightforward message, namely that the goods are intended to restore the core [of the hair].

According to the applicant, the choice of the words ‘CORE’ and ‘RESTORE’ is arbitrary and uncommon and their combination unusual in relation to hair care preparations. Therefore, there would be a perceptible difference between the trade mark and the words that are commonly used in the market to designate the characteristics of hair care preparations. The relevant consumer would not be used to seeing these terms in relation to hair care preparations. The Office does not agree with these arguments.

Firstly, the Office does not agree that the words ‘CORE’ and ‘RESTORE’ would be unusual, uncommon or striking in relation to hair care preparations. On the contrary, as shown in the Internet search results indicated below, both the words ‘CORE’ and ‘RESTORE’ are commonly used in relation to hair care preparations, even within the same expression.

Secondly, as to the applicant’s argument that the words ‘CORE’ and ‘RESTORE’ can both have several different meanings, the Office would like to point out that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

From: https://www.aghair.com/product/keratin-repair/

From: http://silverscissorshairsalon.co.nz/salon-products/redken/redken-hair-care/

From: http://www.hairbygiulio.com/english/our-products/

From: http://www.redken.com/products/hair-care/extreme/strengthening-hair-mask

From: https://bellatory.com/hair/Restore-hair-after-bleaching

From: http://www.lorealparis.ca/_en/_ca/brands/hair_expertise/

From: http://www.dove.com/in/hair-care/shampoo/intense-repair-shampoo.html

The trade mark ‘CORE RESTORE’ is a common and generic combination of two words that are commonly used in relation to hair care preparations, as demonstrated above, and that conveys a clear and direct message regarding the intended purpose of the goods: that they will restore the core of the hair. There is nothing about this combination that would allow the relevant consumer to distinguish the applicant’s goods from those of a different commercial origin.

As regards the applicant’s argument that the applicant is the only undertaking in the cosmetic field to use the term ‘CORE’ in relation to beauty care products, the Office refers to the Internet search results mentioned above, from which it is clear that the word ‘CORE’ is commonly used in the market in relation with hair care products.

The applicant further argues that other marks containing the words ‘CORE’ and ‘RESTORE’ have been registered by the Office for goods in Class 3, and that the applicant already has a certain number of registered trade marks that contain the word ‘CORE’. In this regard, the Office would like to recall that examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, § 62). More specifically, the fact that the combination ‘CORE RESTORE’ is considered not distinctive in relation to hair care preparations, should not automatically lead to the conclusion that no trade mark containing either the word ‘CORE’ or ‘RESTORE’ can be registered for Class 3 products.

Moreover, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

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 15 019 921 is hereby rejected for all the goods 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.

Kaat SCHEERLINCK