Refusal of application for a European Union trade mark

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

Alicante, 16/01/2017

Katarzyna Binder-Sony

First Floor, 3 More London Riverside

London SE1 2RE

REINO UNIDO

Application No:	015458615
Your reference:	451911
Trade mark:
Mark type:	Figurative mark
Applicant:	Purity Cosmetics Inc 2221 Oakland Road an Jose California 95131 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 15/06/2016 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 17/10/2016, which may be summarised as follows:

1. A trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the sign. To confirm this statement the applicant referred to the judgement of 21/01/2010, C‑398/08, ‘Vorsprung durch Technik’.

2. The Office did not present any evidence to prove that the sign, notwithstanding certain stylised elements, conveys direct information regarding characteristics of the goods applied for.

3. The sign at issue is at most suggestive and allusive.

4. Taking into consideration all elements comprising the sign, especially graphical elements and the colours used, the mark is distinctive. To confirm this statement the applicant referred to the judgment of 9 October 2002, T-360/00, ‘UltraPlus’.

5. As the word elements have several meanings, they endow the sign as a whole with a distinctive character.

6. Similar signs have been accepted by the Office.

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.

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, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T-118/00, ‘Procter & Gamble’, paragraph 59).

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C-329/02 P, ‘SAT.1’, paragraph 25).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C-363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office will now respond to the applicant’s comments.

The applicant referred to the judgment by the ECJ in the case ‘Vorsprung durch Technik’ (judgment of 21/01/2010, C‑398/08). This judgment stated that Article 7(1)(b) EUTMR does not apply if a measure of interpretation is required on the part of the public to understand the slogan, it is easy to remember and it exhibits a certain originality.

Paragraph 47 of the judgment reads as follows:

‘As regards the General Court’s finding in paragraph 41 of the judgment under appeal that the mark Vorsprung durch Technik can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered, it should be noted that, although the existence of such characteristics is not a necessary condition for establishing that an advertising slogan has distinctive character, as is apparent from paragraph 39 of the present judgment, the fact remains that, as a rule, the presence of those characteristics is likely to endow that mark with distinctive character.’

The mark applied for, , could not be further from the findings of this judgment. There is nothing imaginative or surprising about the mark applied for and neither does it exhibit certain originality. The sign ‘100% PURE’, as a whole, has a very clear message; no interpretation is needed on the part of the public to understand that the goods applied for are completely clean, untainted, not mixed with any other substance or material and/or free from admixture or adulteration.

Furthermore, it was held that the slogan ‘Vorsprung durch Technik’ was distinctive in relation to a wide range of goods and services not only but also due to its distinctiveness acquired through long-standing use as a slogan for promoting the sale of cars (see judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, paragraph 59; and decision of 08/07/2011, R 1798/2010‑G – ‘La qualité est la meilleure des recettes’, paragraphs 28 and 29). Thus, the applicant’s reference to the judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, does not change the outcome in the case at hand and, in fact, serves to confirm the finding that has been reached.

As regards the applicant’s argument that the Office failed to prove that the sign has non-distinctive character the Court has confirmed that:

“Where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience (judgment of 15/03/2006, T 129/04, ‘Forme d'une bouteille en plastique’, paragraph 19).”

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T 194/01, ‘Tablette ovoïde’, paragraph 48).

The Office disagrees with the applicant’s assertion that the term ‘100% PURE’ is at most suggestive and allusive, and it does not have a descriptive meaning in relation to the goods for which registration is sought. Descriptiveness must not be assessed abstractly, without reference to the context in which a mark is likely to be used. In particular, reference must be made to the goods for which the trade mark will be used. The Office has already demonstrated, in its letter of 15/06/2016, that this term will, indeed, be perceived as a meaningful expression. It has sufficiently justified its objections by providing dictionary references and by examining the meaning of the term, firstly, with regard to the goods for which registration is sought and, secondly, with regard to the perception of the term by the relevant public.

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (judgment of 09/10/2002, T 360/00, ‘UltraPlus’, paragraph 43).

As a result, the Office concluded that the expression ‘100% PURE’ will be perceived by the relevant public not as a trade mark but as a descriptive indication of the characteristics of the goods in question, namely are inter alia wide range of cosmetics in Class 3 that are made of unmixed ingredients, that are not harmful in any way, and/or that have a clear colour. In Class 5 the sign describes inter alia cosmetics for medical use and nutritional supplement that are made of ingredients that has nothing mixed with it that might spoil its quality or effect. Therefore, the mark conveys obvious and direct information regarding the kind and quality of the goods in question.

In addition, it is not uncommon for the producers, to place on the packaging of the cosmetics symbols, such a leaf, to indicate the natural origin of the goods and that they do not contain artificial ingredients. The relevant consumer is also familiar with the concept of ‘pure’ or ‘natural’ cosmetics, as they are already available on the relevant market. Therefore, the meaning of the term ‘100% PURE’ is clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is sought.

‘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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Furthermore, by prohibiting the registration as Community 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 for 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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

The Office has examined the trade mark applied for, , with great care, both in its constituent parts and as a whole. However, the Office does not agree that the figurative elements of the mark are sufficiently stylised to bestow distinctive character upon the mark such that the relevant public will recognise the commercial origin of the goods in question. It is a clear and promotional laudatory message, the function of which is to describe characteristics of the goods. The sign at hand merely highlights positive aspects of the goods concerned, namely that they are inter alia skin and body care products that are made of natural, unmixed and clear ingredients that are beneficial to the consumer and its body.

Moreover, presenting a word as a figurative mark, or presenting it in standard typeface or italic, cannot automatically render the mark distinctive. In this sense, standard typefaces are not just Arial and Times New Roman but all typefaces that would be perceived by the average consumer as just another common typeface. Therefore, merely presenting a descriptive term in coloured letters, over two lines, with standard ornaments or with other non-distinctive figurative elements does not render the mark distinctive.

The Office finds that the figurative features comprising the sign, the colour of typefaces, size and arrangement of the words within the sign, together with a figurative element depicting a leaf, do not endow the trade mark applied for as a whole with any distinctive character. This is because the additional elements mentioned by the applicant lack features that might contribute to the distinctive character of the sign, such as elements of fancifulness, a play on words or a subliminal message. The arrangement must be of such a nature as to require a mental effort from the consumer to perceive the link existing between the word elements and the claimed goods and/or services. As a rule, the fact that the word elements are arranged on different lines is not sufficient to endow a sign with the minimum degree of distinctive character that is necessary for registration. In addition, the use of colours that are basic and/or commonly used in the market for the goods in question (purple– popular colour for cosmetics; green – indicating something is related to nature) does not endow the mark with a sufficient degree of distinctive character. The Office points out that the degree of stylisation of the application at hand is neither sufficiently fanciful nor ‘more than the sum of its parts’ and that merely combining a non-distinctive verbal element with another descriptive figurative element cannot make the combination distinctive.

Additionally, the Office does not consider that the examples from the guidelines, mentioned by the applicant are comparable with the sign at issue (EUTM No 10894996 ‘Specialized’ and EUTM No 10834299 ‘ECO’). Contrary to the sign at issue, none of these trade marks contains figurative element that reinforces and further defines the descriptive notion of the word part of the sign.

The applicant argues that the word components of the sign ‘100% PURE’ have several meanings, therefore the sign does not have a descriptive notion. According to settled case-law, the fact that the sign can have several meanings, can be a play on words and can be perceived as ironic, surprising and unexpected does not make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 84).

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 (see judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32).

The Office is not obliged to show that the meaning of the term is immediately apparent to the relevant consumers to whom the goods or services are addressed. It suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a characteristic of the goods and services (judgment of 17/09/2008, T 226/07, ‘PRANAHAUS’, paragraph 36).

As regards the applicant’s argument that a number of similar registrations have been accepted by EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Besides, the mere fact that the Office has at some point, registered a trade mark, perhaps in error, does not entitle even the same applicant to stake out a claim for subsequent registrations. 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’ (judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 67).

Furthermore, the earlier EU trade marks listed by the applicant are not comparable to the sign at issue. For example EUTM No 15358039 is a collective mark, what means that those who produce 100% Italian milk should have the right to use the sign and profit from the label (Art. 67/2 EUTMR).

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 15 458 615 is hereby rejected for all the goods claimed, namely for:

Class 3 After-sun gels; After-sun milks; After-sun oils; Aloe vera gel for cosmetic purposes; Astringents for cosmetic purposes; Bath oils for cosmetic purposes; Bath powder; Beauty creams; Beauty creams for body care; Beauty gels; Beauty lotions; Beauty masks; Beauty milks; Beauty serums; Bleaching preparations for cosmetic purposes; Body and beauty care cosmetics; Chalk for cosmetic use; Cleaner for cosmetic brushes; Cleansing creams; Cocoa butter for cosmetic purposes; Colognes, perfumes and cosmetics; Coloring preparations for cosmetic purposes; Concealers; Cosmetic balls; Cosmetic creams; Cosmetic creams for skin care; Cosmetic facial blotting papers; Cosmetic hair dressing preparations; Cosmetic hair regrowth inhibiting preparations; Cosmetic masks; Cosmetic milks; Cosmetic oils; Cosmetic oils for the epidermis; Cosmetic olive oil for the face and body; Cosmetic pads; Cosmetic pencils; Cosmetic preparations; Cosmetic preparations against sunburn; Cosmetic preparations for body care; Cosmetic preparations for eye lashes; Cosmetic preparations for skin renewal; Cosmetic preparations for slimming purposes; Cosmetic preparations for the care of mouth and teeth; Cosmetic preparations for the hair and scalp; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Cosmetic preparations, namely, skin balsams; Cosmetic products in the form of aerosols for skin care; Cosmetic rouges; Cosmetic soaps; Cosmetic sun-protecting preparations; Cosmetic sun-tanning preparations; Cosmetic suntan lotions; Cosmetic suntan preparations; Cosmetics; Cosmetics and cosmetic preparations; Cosmetics and make-up; Cosmetics for animals; Cosmetics in general, including perfumes; Cosmetics in the form of milks, lotions and emulsions; Cosmetics, namely, compacts; Cosmetics, namely, lip primer; Cosmetics, namely, lip repairers; Cotton balls for cosmetic purposes; Cotton buds for cosmetic purposes; Cotton for cosmetic purposes; Cotton puffs for cosmetic purposes; Cotton sticks for cosmetic purposes; Cotton swabs for cosmetic purposes; Cotton wool and cotton sticks for cosmetic purposes; Cotton wool for cosmetic purposes; Decorative transfers and skin jewels for cosmetic purposes; Eye compresses for cosmetic purposes; Eyebrow cosmetics; Face and body beauty creams; Face creams and cleansers containing benzoyl peroxide for cosmetic purposes; Face creams for cosmetic use; Facial beauty masks; Foams containing cosmetics and sunscreens; Gauze for cosmetic purposes; Gift baskets containing non-medicated bath preparations and cosmetic preparations; Glitter for cosmetic purposes; Grape seed oil for cosmetic use; Greases for cosmetic purposes.

Class 5 Cosmetics for medical use; Creams for medical use; Herbal creams for medical use; Skin care creams for medical use; Antifungal creams for medical use; Cleansing solutions for medical use; Sanitary preparations for medical use; Tissues for medical use; Herbal preparations for medical use; Lotions for medical use; Salts for medical purposes; Nail care preparations for medical use; Foot care preparations for medical use; Balms for medical purposes; Preparations for cleansing the skin for medical use; Dietary and nutritional supplements used for weight loss; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary food supplements; Dietary supplement drink mixes; Dietary supplements for human consumption; Dietary supplement for eliminating toxins from the intestinal tract; Flaxseed dietary supplements; Flaxseed oil dietary supplements; Food supplements, namely, anti-oxidants health food supplements; Herbal supplements; Herbal supplements for sleeping problems; Herbal supplements for boosting energy; Khorasan wheatgrass for use as a dietary supplement; Linseed oil dietary supplements; Liquid herbal supplements; Liquid nutritional supplement; Liquid protein supplements; Liquid vitamin supplements; Mineral nutritional supplements; Natural herbal supplements; Natural supplements for treating depression and anxiety; Nutraceuticals for use as a dietary supplement; Nutraceuticals for use as a dietary supplement for promoting digestion; Nutritional and dietary supplements formed and packaged as bars; Nutritional supplements in lotion form sold as a component of nutritional skin care products; Nutritional supplement in the nature of a nutrient-dense, protein-based drink mix; Nutritional supplement for eliminating toxins from the intestinal tract; Nutritional supplement for eliminating toxins from the body; Nutritional supplements, namely, probiotic compositions; Nutritional supplements for boosting energy, promoting healthy skin; Nutritional supplements, namely, carbohydrates in powdered form; Nutritional supplements in the form of capsules, tablets, caplets, powder, syrups, gummies and gels; Nutritional supplements in the nature of nutritionally fortified soft chews; Nutritional supplement energy bars; Nutritional supplement shakes; Nutritional supplement meal replacement bars for boosting energy; Powdered fruit-flavored dietary supplement drink mix; Powdered nutritional supplement drink mix; Powdered nutritional supplement concentrate; Powdered nutritional supplement drink mix and concentrate; Probiotic supplements; Propolis dietary supplements; Protein dietary supplements; Protein supplement shakes; Protein supplement shakes for weight gain purposes; Protein supplements; Royal jelly dietary supplements; Soy protein dietary supplements; Soy protein for use as a nutritional supplement in various powdered and ready-to-drink beverages; Vegan liquid protein supplements; Vegan protein for use as a nutritional supplement in ready-to-drink beverages; Vitamin and mineral supplements; Weight management supplements; Wheat for use as a dietary supplement; Wheat germ dietary supplements; Wheatgrass for use as a dietary supplement; Cosmetic products taken orally, namely, pills that induce bronzing of the skin.

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.

Monika Karolina SZALUCHO