Refusal of application for a European Union trade mark

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

Alicante, 17/01/2017

BAP IP BVBA - BRANTSANDPATENTS

Pauline Van Pottelsberghelaan 24

B-9051 Sint-Denijs-Westrem (Gent)

BÉLGICA

Application No:	015428717
Your reference:	OYST-05771-T-REG-EM
Trade mark:	ULTRA FREEZE TECHNOLOGY
Mark type:	Figurative mark
Applicant:	OYSTERSHELL, naamloze vennootschap Booiebos 24 B-9031 Drongen (Gent) BÉLGICA

The Office raised an objection on 31/05/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trademark 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 05/10/2016, which may be summarised as follows:

1. The list of goods is limited to the following:

Class 5: Farmaceutische middelen voor wratten, waaronder wrattenstiften.

2. The applicant is of the opinion that the Office has made an error concerning the identification of the relevant public. The notice of grounds for refusal states that the objectionable goods covered by the mark applied for are specialised goods that are mainly aimed at a professional public and that in view of the nature of the goods in question, the awareness of the relevant public will be high.

The applicant claims that the objectionable goods are everyday consumption goods that are mainly aimed at the average consumers and that the awareness of the relevant public will not be high. According to the applicant the average consumer would not immediately understand the wording ULTRA FREEZE TECHNOLOGY.

3. The applicant does not consider the applied trademark descriptive and believes that it can serve as an indication of origin.

4. The applicant refers to previously registered trademarks and is of the opinion that the current applied trademark should be registered on this basis.

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.

Reasons:

1.

The statement, that a mistake is made as regards the relevant public, is made after a limitation of the list of goods. Any conclusion concerning the relevant public is therefore doubtful.

2.

Even in the event that the Office would agree that the relevant public is the average consumer, and basing its opinion on the list of goods after limitation, then it would still be of the opinion that the applied mark is descriptive of the goods and therefore non-distinctive.

The average consumer who is searching for a cure for warts and/or verrucas is specifically looking for a certain specialised product. The fact that these products can be obtained without prescription is in this sense irrelevant. The awareness of said consumer is high and the knowledge concerning the characteristics of cures for warts is more than average. A consumer affected by warts and/or verrucas is perfectly aware that one of the methods for curing warts and/or verrucas is by freezing them. Following this the consumer would immediately perceive the words ULTRA FREEZE TECHNOLOGY on the packaging of a pharmaceutic preparation for warts, as a description of the characteristics of the goods, namely that the goods cure warts using the technology of extreme freezing.

Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 74).

Following the above the Office maintains its opinion that the applied mark cannot serve as an indication of origin.

3.

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).

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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 015428717 is hereby rejected for all the goods 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.

David Christiaan BROEDELET