Refusal of application for a European Union trade mark

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

Alicante, 03/10/2016

Butterfly Loom ltd

156 Croft Road

Swindon Wiltshire SN1 4DT

REINO UNIDO

Application No:	15 370 109
Your reference:
Trade mark:	Butterfly Loom
Mark type:	Word mark
Applicant:	Butterfly Loom ltd International House, 24 Holborn Viaduct London EC1A 2BN REINO UNIDO

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 12/05/2016, which may be summarised as follows:

1. The expression ‘Butterfly Loom’ is the name devised by Carolyn Jenner in Australia for a wooden folding loom designed and patented in the USA under the patent number 6834682 by her; it has been on sale since 2001. In 2004, the applicant bought the company Butterfly Loom from Mrs Jenner. The trade name ‘Butterfly Loom’ has been successfully registered in the UK.

2. The name ‘Butterfly Loom’ is only suggestive of its design (which vaguely resembles a butterfly) and the relevant consumers would be sure of what a ‘Butterfly Loom’ is only if they were already familiar with the products.

3. Consumers will not understand the words as a meaningful expression, namely as a description of a piece of apparatus made of two pieces of wood bound together to form a cross that is used for producing textiles, rugs, blankets, wall hangings, etc., by weaving thread or yarn into cloth. Furthermore, the expression ‘Butterfly Loom’ is not descriptive in the sense presented by the Office, that is, of a generic device. The trade mark applied for is descriptive only of the applicant’s products, due to the previous owner’s and the applicant’s efforts in promoting them.

4. The ‘Butterfly Loom’ has been on sale since around 2001 and has acquired a distinctive character through use, including due to advertisements in magazines, its appearance at many craft shows, its online presence on eBay and on the applicant’s website, and its appearance on a craft-based television show in the near future.

5. The word ‘butterfly’ has several meanings and there are many types of loom, but the expression ‘Butterfly Loom’ refers only to the applicant’s products.

6. There are no other companies making or selling the ‘Butterfly Loom’ or any weaving devices that use the same fold and/or back brace construction.

7. The applicant and the product’s previous owner have invested time and money into promoting the ‘Butterfly Loom’ and any recognition it now has is purely due to these efforts.

8. With regard to the internet search results, the first site refers only to the applicant’s products and is used to purchase the goods from the previous owner of the ‘Butterfly Loom’. In addition, the ‘Butterfly Loom’ is referred to as a proper noun (namely its products), rather than as a generic product.

9. With regard to internet links numbers 2 and 3, those sites refer to a pin loom (pin looms are generic devices) that is sold by a company that happens to have the word ‘butterfly’ in its name (‘Blue Butterfly Originals’); the expression ‘Butterfly Loom’ does not appear on these websites and they do not refer to any product similar to the ‘Butterfly Loom’.

10. With regard to internet link number 4, the website mentions the ‘Butterfly Loom’ and, with links given concerning the ‘Butterfly Loom’ (the looms and patterns), points to sites owned by the applicant (Croft Looms/Butterfly Loom).

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).

With regard to the applicant’s submission that the trade name ‘Butterfly Loom’ has been successfully registered in the UK, the fact that the mark has been accepted for registration elsewhere is not an indication that the mark is distinctive. 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.)

Furthermore, with regard to the applicant’s arguments that the name ‘Butterfly Loom’ is only suggestive of its design (which vaguely resembles a butterfly), that relevant consumers would be sure of what a ‘Butterfly Loom’ is only if they were already familiar with the products, and that the expression ‘Butterfly Loom’ is not descriptive in the sense presented by the Office, that is, of a generic device, it should be pointed out that:

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), ECLI:EU:T:2001:226, § 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes. A word 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 and 20/03/2002, T-355/00, Tele Aid, EU:T:2002:79, § 30).

The descriptiveness of a mark must be assessed not only in relation to the goods or services concerned, but also in relation to the relevant public. In the present case, the goods and services to which an objection has been raised and which are covered by the mark applied for are goods and services for general and mass consumption and are mainly aimed at average consumers. In view of the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘Butterfly Loom’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

The mark applied for consists of two basic English words, ‘Butterfly’ and ‘Loom’, joined together as ‘Butterfly Loom’. According to ArtLex Lexicon of Visual Art Terminology Dictionary, the words in the mark have the following meanings:

Butterfly: ‘two pieces of wood bound together to form a cross, suspended from an armature as an extra internal support for the weight of the modeling material.’

Loom: ‘an apparatus for producing textiles, rugs, blankets, wall hangings, etc., by weaving thread or yarn into cloth.’

Based on the above definitions, it can be concluded that the relevant consumer will understand the words as a meaningful expression: a piece of apparatus made of two pieces of wood bound together to form a cross that is used for producing textiles, rugs, blankets, wall hangings, etc., by weaving thread or yarn into cloth. Consequently, the expression ‘Butterfly Loom’ is a mere combination of descriptive words that is descriptive in itself as a whole. Therefore, when perceived in connection with the contested goods and services, the sign applied for merely informs the relevant public without further reflection that goods are butterfly weaving looms and that the services of weaving are connected to the butterfly looms.

The sign applied for consists of two English words, each of which has a meaning. The Office fails to see how the sign applied for, as a whole, could create in the relevant consumers’ minds an overall impression that is sufficiently far removed from that produced by the mere combination of the descriptive meanings lent by the words ‘Butterfly’ and ‘Loom’.

The contested goods (hand weaving looms) and services (weaving) clearly concern and/or are directly related to weaving thread or yarn using butterfly looms. Therefore, the sign applied for will immediately inform consumers without further reflection of characteristics and, in particular, the kind and/or intended purpose of the abovementioned goods and services.

In summary, the sign is an expression formed in agreement with English grammar rules that is easily understood by the relevant public. It is the simple combination of two descriptive words. The mere combination of these two elements, each of which is descriptive of characteristics of the goods and services for which registration is sought, itself remains descriptive of those characteristics, even if the combination creates a neologism.

The applicant argued that the mark applied for, from the perception of the target consumer, is not used in common parlance and does not in itself have any obvious meaning relating to the goods and services for which registration is sought, making the mark entirely fanciful and allusive. The Office, however, in the light of the clear meaning of the combined terms in relation to the goods and services in question, fails to perceive the sign applied for as being allusive of characteristics of these goods and services.

Therefore, it follows that the link between the expression ‘Butterfly Loom’ and the goods and services to which an objection has been raised by the examiner is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR.

Although it is clear from Article 7(1) EUTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of that provision. In particular, a word mark which is descriptive of characteristics of certain goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR of that provision. A mark may none the less be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive, as the Court of Justice has recognised (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 18-19 and the judgments cited therein).

A mark that would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods or services bearing that mark to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish the goods and services from others with a different origin, and this is clearly applicable in the present case.

The applicant submitted that the ‘Butterfly Loom’ has been on sale since 2001 and has acquired a distinctive character through use, including due to advertisements in magazines, its appearance at many craft shows, its online presence on eBay and on the applicant’s website, and its appearance on a craft-based television show in the near future. The Office cannot make any statement with respect to this argument because the applicant provided no specific and substantiated information to demonstrate that the trade mark applied for has become distinctive through use, such as the market share held by the mark; how intensive, geographically widespread or long-standing use of the mark has been; the amount invested; the proportion of the relevant class of persons who, because of the mark, identify the goods as originating from a particular undertaking; or statements from chambers of commerce and industry or other trade and professional associations.

With regard to the applicant’s arguments that the word ‘butterfly’ has several meanings and that there are many types of looms, but that the expression ‘Butterfly Loom’ refers only to its products, it should be noted that, 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.)

Furthermore, as regards the applicant’s argument that there are no other companies making or selling the ‘Butterfly Loom’ or any weaving devices that use the same fold and/or back brace construction, ‘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).

The Office does not agree with the applicant’s submission that the first site in the internet search results refers only to the applicant’s products and that on this site the ‘Butterfly Loom’ is referred to as a proper noun (namely its products), rather than as a generic product. First, it should be noted that the name of a company is not mentioned and only the description of the products is given. Furthermore, the site belongs to e-kuckó WebShop. According to the information provided on its website, the e-kuckó WebShop sells products belonging to other manufacturers (http://www.e-kucko.hu/webshop/index.php?main_page=page&id=21&chapter=0 ); however, no connection can be made between the goods presented in internet link number 1 and the applicant.

The Office agrees with the applicant that internet links numbers 2 and 3 refer to a pin loom sold by Blue Butterfly Originals.

With regard to internet link number 4, the applicant argued that the website mentions the ‘Butterfly Loom’ and that, with links given concerning the ‘Butterfly Loom’ (the looms and patterns), it points to sites owned by the applicant. The Office partly agrees with this argument because, from the screenshot presented, it can be seen that the title refers to ‘Butterfly and Tide Waffle Weave Looming’. The links on the website may point to the applicant’s website, but these links, for example, give information about where consumers can buy a butterfly loom. However, the mark is still descriptive and still lacks distinctive character.

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 15 370 109 ‘Butterfly Loom’ is hereby rejected for all the goods and services claimed.

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.

Roxana PISLARU