Refusal of application for a European Union trade mark

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

Alicante, 02/08/2016

Milan Bella

Železničná 1418/164

SK-90501 Senica

ESLOVAQUIA

Application No:	015343023
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Milan Bella Železničná 1418/164 SK-90501 Senica ESLOVAQUIA

The Office raised an objection on 05/05/2016 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 28/06/2016, which may be summarised as follows:

1. The applicant has applied for the EUTM to protect his business against unfair competition.

2. The name ‘CHEESE BRAIDS’ is unique.

3. The name is not used by any other producers of similar goods.

4. The mark is already registered in the UK. Similar marks, such as ‘Cheese strings’, have also been registered.

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 his comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

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).

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.

‘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).

1. Regarding the first argument put forward by the applicant, preventing unfair competition is one of the main purposes of trade marks worldwide; however, the distinctive character and descriptiveness of a trade mark must be assessed in relation to the goods and services for which protection is sought, and the perception of the relevant public. Therefore, the applicant’s assertion is irrelevant when assessing the descriptiveness and distinctive character of the trade mark in question.

2. Regarding the second argument put forward by the applicant, the Office disagrees. The Office provided, in its notice of 05/05/2014, dictionary definitions of the words ‘CHEESE’ and ‘BRAIDS’, which had been extracted from the Oxford Dictionary. The Office maintains its opinion that the mark is a combination of words that are descriptive of the kind and appearance of the goods in question.

3. As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

4. As regards the national decision 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)

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 15 343 023 is hereby rejected for the following goods:

Class 29 Syr; Mliečne výrobky; Nevyzreté čerstvé syry; Nízkotučný syr; Ovčí syr; Spracovaný syr; Syry obsahujúce bylinky; Syry s obsahom korenín; Tvrdý syr; Zmes syrov; Zmesi syra; Zrejúce syry; Údený syr.

The application is accepted 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.

Jana ENGELOVA PAVKOVA