Refusal of application for a European Union trade mark

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

Alicante, 20/07/2016

jorge miguel de lellis giurfa

urbanizacion la cerca 32 - 2c

E-28400 Madrid

ESPAÑA

Application No:	015286123
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	jorge miguel de lellis giurfa urbanizacion la cerca 32 - 2c E-28400 Madrid ESPAÑA

1. The Office raised an objection on 13/04/2016, pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

2. The applicant submitted its observations on 13/04/2016, which may be summarised as follows:

• The mark is very distinctive and has a clearly defined shape, namely a face carved in rock by a natural process as in natural rock-formation on earth.

3. 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 waive the objection for the following goods and services:

All the goods and services in classes 9, 16, 25, 28 and 41, and for:

Class 14: Pearls; Coins; Boxes of precious metal; Chronometric instruments; Time instruments; Non-monetary coins; Collectible coins; Commemorative coins; Commemorative shields; Decorative boxes made of precious metal; Leather key fobs; Monetary coin sets for collecting purposes.

The objection is maintained for the remaining goods, namely:

Class 14: Jewellery; Gemstones precious metals, and imitations thereof; Jewels; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Charms of precious metals; Charms of semi-precious metals; Rings [jewellery]; Objet d'art made of precious stones; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Prize cups of precious metals; Trophies made of precious metal alloys; Trophies coated with precious metals; Trophies coated with precious metal alloys; Trophies made of precious metals; Works of art of precious metal;; Commemorative statuary cups made of precious metal; Decorative articles [trinkets or jewellery] for personal use; Key charms coated with precious metals; Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Key fobs [rings] coated with precious metal; Metal key fobs; Silver objets d'art; Trinkets coated with precious metal; Trinkets of bronze; Jewels; Statues of precious metals.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

When it comes to jewellery, object d’art and the like, they come in many forms; some of them are symmetrical and ordinary, and others are unsymmetrical and unusual.

The mark at issue is a shape that may be a natural stone or a formed piece of material that intentionally looks unformed. Whether the mark is a face or not is immaterial. Jewellery and art objects etc. can be or contain materials that are worked, semi-worked or unworked and which can have many shapes which may be identifiable (like a face) or unidentifiable.

The relevant consumers are well aware of this and are used to see pieces of jewellery and artworks in an infinite number of shapes, both ordinary and extraordinary, as well as detailed and finely worked pieces, and more rudimentary and coarsely shaped pieces. As far as the Office can determine there is nothing in the shape applied for that would lead the relevant consumers to believe that the mark is an indication of commercial origin in relation to the goods now under objection.

The consumers would simply view the mark at issue as one of those unworked or rudimentarily worked objects and would not give it any trade mark significance unless they have been educated to do so. The Office notes that the applicant never claimed that this is the case.

Therefore, the Office cannot find other than that the mark is devoid of any distinctive character for the goods at issue.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 15286123 is hereby rejected for the following goods:

Class 14: Jewellery; Gemstones precious metals, and imitations thereof; Jewels; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Charms of precious metals; Charms of semi-precious metals; Rings [jewellery]; Objet d'art made of precious stones; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Prize cups of precious metals; Trophies made of precious metal alloys; Trophies coated with precious metals; Trophies coated with precious metal alloys; Trophies made of precious metals; Works of art of precious metal;; Commemorative statuary cups made of precious metal; Decorative articles [trinkets or jewellery] for personal use; Key charms coated with precious metals; Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Key fobs [rings] coated with precious metal; Metal key fobs; Silver objets d'art; Trinkets coated with precious metal; Trinkets of bronze; Jewels; Statues of precious metals.

The application is accepted for the remaining goods and services.

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.

Anne-Lee KRISTENSEN