Refusal of application for a European Union trade mark

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

Alicante, 19/10/2016

CABINET MEYER & PARTENAIRES

Espace Européen de l'Entreprise 2 rue de Dublin

F-67300 Schiltigheim

FRANCIA

Application No:	015341423
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	KINGSLEY BEVERAGE FZCO PO BOX # 17096 Jebel Ali Free Zone DUBAI EMIRATOS ÁRABES UNIDOS

The Office raised an objection on 10/05/2016 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 11/07/2016, which may be summarised as follows:

1. The mark consists of a Latin word that will not be understood by consumers in the European Union, because Latin is a dead language. The word ‘AQUA’ may be similar to or evocative of the Portuguese and Spanish word ‘AGUA’, but is not descriptive, as it does not actually mean ‘water’ in these languages.

2. A mark with several verbal elements may be distinctive even if each word is individually descriptive; a mark must be assessed as a whole and the Office failed to apply this in its objection. The combination ‘AQUA FRIA’ is either without meaning or evocative of ‘cold water’; therefore, the link between the goods and the expression is at most evocative, and never descriptive.

3. The mark is not descriptive and therefore is also distinctive. It is either a fanciful expression without meaning or an evocative expression with a minimum degree of distinctiveness, depending on the consumer.

4. All the figurative elements in combination are recognisable and will be perceived as a badge of origin by the consumer; as a consequence, the mark is distinctive.

5. The Office has recently accepted several marks containing the word ‘AQUA’, either alone or combined with descriptive words, for the same goods as covered by the mark applied for; nine examples have been submitted. These marks have rightly been accepted by the Office; the same logic should be applied to the mark applied for.

6. The mark can only been seen as evocative for mineral and aerated waters and not for other non-alcoholic beverages; fruit beverages.

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:

Class 32 fruit beverages.

The objection is maintained for the remaining goods.

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).

In response to the applicant’s submissions, the Office states the following:

1.

As regards the fact that ‘AQUA’ is a Latin word, the Office recognises that Latin is not spoken by consumers in the European Union; however, some Latin words are understood, ‘AQUA’ being one of these. The close resemblance to the Portuguese and Spanish word ‘AGUA’ was emphasised because the second word of the mark applied for, ‘FRIA’, has a clear meaning in relation to the goods in question, making the whole mark almost identical to the correctly spelled expression ‘agua fria’. In addition, the word ‘AQUA’ is well known throughout the European Union. The Office is therefore still of the opinion that the relevant consumer will understand the word ‘AQUA’, especially when combined with the word ‘FRIA’, making it a common phrase easily understood in relation to the goods, both because that specific Latin word is understood and because of the close resemblance to the expression ‘cold water’ in Portuguese and Spanish.

2.

The Office disagrees that the verbal combination is not descriptive, and maintains that it will be understood by the relevant consumer. Rather, the Office is of the opinion that the combination reinforces the descriptive meaning of the Latin word ‘AQUA’ for the relevant consumer. The word is in itself understood but the meaning will be even clearer in this context; when it is combined with ‘FRIA’, the idea of ‘cold water’ (‘agua fria’), namely water at a low temperature, will be immediately understood when encountering it in relation to the goods in question.

3.

The Office disagrees with the applicant and maintains that the mark is descriptive. The meaning of the words conveys a straightforward understandable concept, namely that the goods are water and have the desired cold temperature. The expression ‘AQUA FRIA’ immediately informs consumers without further reflection that the goods for which registration is sought are cold water drinks. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind of the goods in question.

Consequently the Office also maintains that the mark is devoid of any distinctive character. Article 7(1)(b) EUTMR makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. The Office admits that the registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying a product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, of being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods/services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive it as a badge of origin to distinguish the origin of the goods for which registration is sought.

4.

In relation to the applicant’s argument that the figurative elements render the mark distinctive, in the examination of a mark, when the verbal elements are descriptive and non-distinctive, as in the present case, an assessment must be made about whether or not the figurative element is striking, surprising or unusual, unexpected, capable of creating in the consumer’s mind an immediate and lasting memory of the sign by diverting attention from the non-distinctive message conveyed by the word element. This means that the stylisation must be of such a nature as to require an effort of interpretation on the part of the relevant public to understand the meaning of the word elements.

The Office disagrees that the figurative elements of the mark render the mark distinctive. The sign consists of the expression ‘AQUA FRIA’, which is written in a lower case, stylised typeface, with the verbal elements forming a wavelike shape with a wavelike line underneath, the letter ‘i’ having a larger than normal dot with two small white lines inside. The mark does not have any other figurative elements and the public’s attention will be concentrated on the meaning of the verbal element, ‘AQUA FRIA’. Although the dot and the wavelike shape give it a certain peculiarity, the design and stylisation of the mark will not divert the consumers’ attention from the descriptive message conveyed by the expression ‘AQUA FRIA’ and will not require mental effort on the part of the relevant consumers to understand its meaning in relation to the goods for which registration is sought

5.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

In addition, it is the opinion of the Office that the meanings of most of these marks differ substantially from the expression ‘AQUA FRIA’. The concept of ‘AQUA FRIA’ is immediately understandable to the relevant consumer. It is normal and usually desired that water is cold when it is being drunk, while expressions such as ‘aqualabria’, ‘aquascore’, ‘aquakid’, ‘aqua marine’ and ‘aqua vecchia’ introduce the consumer to concepts that cannot immediately be linked to drinkable water and, rather, trigger a mental process, making them distinctive. The present mark is in a different category from these previous ones, as the term ‘AQUA FRIA’ is immediately understandable to the consumer. Furthermore, the fact that a part of the present mark is a part of previously registered marks can have no decisive impact when making this decision, as each mark must be assessed solely on its own merits, and how these merits are related to the settled case law and practice must be the decisive factor for the decision, and, as explained above, the Office concludes that the mark is descriptive and devoid of the necessary distinctive character under Article 7(1)(b) and (c) EUTMR.

6.

Having considered the arguments in your letter, the Office waives the previously raised objection on absolute grounds for fruit beverages. However, the Office disagrees with the submissions regarding the part and other non-alcoholic beverages of the term Mineral and aerated waters and other non-alcoholic beverages, class 32 includes several types of water drinks found within the term other non-alcoholic beverages.

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 15 341 423 is hereby rejected for the following goods:

Class 32 Mineral and aerated waters and other non-alcoholic beverages.

The application may proceed for the remaining goods.

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.

Lars Paalgard SOYLAND