Refusal of application for a European Union trade mark

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

Alicante, 26/07/2016

TDA Capital Ltd.

19 West Eaton Place

London SW1X 8LT

REINO UNIDO

Application No:	015176803
Your reference:	Sapordivino
Trade mark:
Mark type:	Figurative mark
Applicant:	TDA Capital Ltd. 19 West Eaton Place London SW1X 8LT REINO UNIDO

The Office raised an objection on 15/03/2016 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 24/03/2016, which may be summarised as follows:

1. The word ‘SAPORDIVINO’ has to be read separately as ‘SAPOR DI VINO’; which means Taste of Wine in Italian. The application is filed for goods and services in classes 33, 35 and 43 and it is related to alcoholic fruit beverages, retail of alcoholic and non-alcoholic beverages as well as provision of drinks in restaurants.

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 (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).

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.)

It is therefore irrelevant that the mark can have other meanings. It is considered descriptive of the goods and services applied for and therefore falls within Article 7(1)(c) EUTMR. As stated in the Office’s letter of 15/03/2016, the mark merely informs that ‘the goods applied for in class 33 and the goods pertaining to the services in class 35 have an ‘excellent or sublime taste/flavour’. For the services in class 43, the mark immediately informs consumers without further reflection that these are rendered in such a way that they enable consumers to ‘achieve an ‘excellent or sublime taste/flavour’.’

***

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 15176803 is hereby rejected for the following services:

Class 33 Alcoholic fruit beverages; Alcoholic beverages except beers; Alcoholic beverages (except beers); Alcoholic beverages, except beer; Pre-mixed alcoholic beverages; Pre-mixed alcoholic beverages, other than beer-based; Edible alcoholic beverages; Cordials [alcoholic beverages]; Alcoholic beverages containing fruit; Alcoholic beverages of fruit; Alcoholic beverages (except beers); Beverages (Alcoholic -), except beer; Alcoholic beverages, except beer; Alcoholic beverages (except beer); Fruit (Alcoholic beverages containing -); Pre-mixed alcoholic beverages; Alcoholic carbonated beverages, except beer; Preparations for making alcoholic beverages; Alcoholic energy drinks; Low alcoholic drinks.

Class 35 Retail services in relation to beer; Retail services in relation to non-alcoholic beverages; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to beer; Retail services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to preparations for making beverages.

Class 43 Restaurants; Tourist restaurants; Delicatessens [restaurants]; Grill restaurants; Self-service restaurants;; Carry-out restaurants; Restaurants (Self-service -); Provision of food and drink in restaurants; Serving food and drink for guests in restaurants; Providing food and drink in restaurants and bars; Serving food and drink in restaurants and bars; Providing food and drink for guests in restaurants.

The application is accepted for the remaining services, namely:

Class 43 Reservation of restaurants; Providing reviews of restaurants; Travel agency services for booking restaurants; Providing reviews of restaurants and bars; Agency services for reservation of restaurants; Provision of information relating to restaurants; Reservation and booking services for restaurants and meals; Making reservations and bookings for restaurants and meals.

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.

Ineta GALUBICKE