Refusal of application for a European Union trade mark

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

Alicante, 09/08/2016

PATRADE A/S

Fredens Torv 3A

DK-8000 Aarhus C

DINAMARCA

Application No:	015036916
Your reference:	V13411EU00
Trade mark:	NATURLI'
Mark type:	Figurative mark
Applicant:	NATURLI' FOODS A/S Gunnar Clausens Vej 40 DK-8260 Viby J DINAMARCA

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 09/06/2016, which may be summarised as follows:

1. The trade mark is distinctive.

2. The trade mark has acquired distinctiveness through use. The following material was submitted as evidence:

1. invoices

2. marketing material

3. extract from Facebook

4. information on market share.

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.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

1. The trade mark is distinctive

In its letter of 09/06/2016, the applicant argues that the mark is inherently distinctive. It submits that the mark is a figurative mark with an unusual spelling, and that the Danish, Swedish and Norwegian National Offices have registered identical marks.

Firstly, the Office maintains that the mark is descriptive and non-distinctive. It is the Office’s clear and unambiguous position that ‘naturli’’ must be seen as a common misspelling. The apostrophe at the end of the mark is a common way, in Danish, of indicating that the last letter of a word has been omitted, and aurally ‘naturlig’ and ‘naturli’’ are identical. Furthermore, the figurative elements of the mark, namely the leaves, will be perceived merely as reinforcing the descriptive character of the words, because they convey the concept of nature. Moreover, the use of a single colour would not be sufficient to confer distinctive character on a descriptive or non-distinctive word element, because the use of colours is common in trade and would not result in the mark being seen as a badge of origin; the same applies to the use of capital letters.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

‘In addition … references to national registrations conferred by Member States which do not have Danish as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

Furthermore, the practice regarding figurative marks has changed since the registration of the Danish mark referred to.

2. The trade mark has acquired distinctiveness through use

The applicant argues that the mark has acquired distinctiveness through use in Denmark, and has submitted evidence to prove this. It further argues that the trade mark has been used in Denmark since 1988.

The Office submits that:

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).

As also stated by the applicant, the mark must have acquired distinctiveness in the Danish-speaking part of the Union, namely Denmark.

Invoices

Annex 1 shows 153 invoices issued during the period 2013-2015. From the invoices, it appears that the goods were distributed to, inter alia, supermarkets and grocery stores.

The word ‘Naturli’’ appears on the invoices; however, the mark as applied for does not appear, and the word ‘Naturli’’ is used in such a way that it could be perceived as descriptive. It is therefore not clear from the invoices that the word ‘Naturli’’ would be perceived as a trade mark.

The invoices cannot, therefore, be ascribed much weight in the assessment of whether or not the mark has acquired distinctiveness through use.

Marketing material

Annex 2 provides evidence of, inter alia, the applicant’s use of the mark , which is different from the mark applied for, and this use is, therefore, irrelevant for the assessment of whether or not the mark applied for has acquired distinctiveness through use.

Furthermore, Annex 2 demonstrates how the mark in question is used on different products, in brochures and in advertisements. Precisely how many of these products and brochures were distributed and where, or how many of these advertisements were displayed and where, is not evident from the evidence or the letter submitted with it, and this marketing material cannot, therefore, be assigned great weight when assessing acquired distinctiveness.

Annex 2 also includes extracts from the applicant’s website and Facebook page. Extracts from the internet, such as from websites or Facebook pages, cannot be assigned much weight, because their content is so easily changed, and what appears in a screenshot might have been changed before or after the screenshot was taken.

It should be noted that the links inserted in the text submitted have not been taken into account in the assessment, because the evidence must be extracted before it is submitted, so that it is clear to the Office what is to be assessed.

Extract from Facebook

Annex 3 includes an extract from the applicant’s Facebook page, which shows that 16 557 people have liked the page. Again, extracts from the internet, such as from Facebook pages, cannot be assigned much weight, because their content is so easily changed, and what appears in a screenshot might have been changed before or after the screenshot was taken.

Information on market share

Annex 4 includes information on the market share of ‘Naturli’’, and from this it appears that the market share for soya-related drinking products is approximately 90%. The market share figures are for 2014 and 2015. This evidence can be assigned considerable weight; however, it cannot stand alone.

After assessing the material submitted by the applicant, it is the Office’s position that the applicant has not demonstrated that the mark has acquired distinctiveness through use. It is not clear from the evidence how many consumers have been exposed to the mark or where the mark has been used, and the material on the market share of the mark spans a mere two years. In addition, the Office finds that the mark is non-distinctive, and the Office disagrees with the applicant that the requirements for documenting acquired distinctiveness through use should be lowered in this case.

It is also noted that the applicant has submitted no evidence of an independent nature, such as statements from trade associations or competitors, or market surveys. Generally, there is a lack of evidence that focuses on the perception of the relevant public.

Further proceedings

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 15 036 916 is hereby rejected for the following goods:

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; soya milk (milk substitute), rice milk (milk substitute), milk beverages based on soya milk or rice milk; Drinks made from dairy products; Milk products; Nut milk (milk substitute); Oat milk (milk substitute); Coconut milk for culinary purposes; Sour cream substitutes; Soya yoghurt; Soy-based snack foods; Soybean oil for cooking; Nut oils; Coconut oil; Beans; Tofu; Tofu-based snacks; Falafel; Vegetable-based meat substitutes, prepared meals consisting primarily of meat substitutes.

Class 30: Pastry and confectionery; ices; desserts based on soya milk or rice milk (confectionery); Coated nuts [confectionery]; Snack foods consisting principally of confectionery; Snack bars containing a mixture of grains, nuts and dried fruit [confectionery]; Ices based on soya milk or rice milk;

Foodstuffs made of rice; Flavorings and seasonings; Vegetable concentrates used for seasoning; Cocoa-based beverages; Extracts of cocoa for use as flavours in beverages.

Class 35: Wholesale services in relation to foodstuffs; Retail services in relation to foodstuffs; Retail services in relation to confectionery; Wholesale services in relation to confectionery; Wholesale services in relation to non-alcoholic beverages; Retail services in relation to dairy products; Wholesale services in relation to dairy products; Arranging of presentations for business purposes.

The application is accepted for the remaining services, namely:

Class 35: Demonstration of goods for promotional purposes; Sample distribution; Administrative processing of purchase orders; Administrative order processing; Business administration in the field of transport and delivery; Advisory services relating to promotional activities.

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.

Cecilie Leth BOCKHOFF