Refusal of application for a European Union trade mark

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

Alicante, 20/02/2017

CARPMAELS & RANSFORD LLP

One Southampton Row

London London, City of WC1B 5HA

REINO UNIDO

Application No:	015526122
Your reference:	T039502EM
Trade mark:	GLAMOUR EYES
Mark type:	Word mark
Applicant:	Tish & Snooky's N.Y.C. Inc. 4th Floor 21-07 Borden Avenue, Long Island City New York, New York 11101 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/11/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 23/01/2017, which may be summarised as follows:

1. The sign is an unusual juxtaposition of two nouns without any clear meaning and this strange syntactic structure renders it distinctive.

2. The expression ‘GLAMOUR EYES’ is merely allusive in relation to the goods and services to which the objection has been raised.

3. English-speaking consumers will see the sign ‘GLAMOUR EYES’ as a funny play on the word ‘GLAMORIZE’, which makes the sign distinctive.

4. Consumers’ awareness when selecting and buying these goods and services would be higher than average for reasons explained in the observations.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. The sign consists of two words ‘GLAMOUR’ and ‘EYES’, each of which has a clear meaning in relation to the goods and services to which the objection has been raised. It may be true that the words are not combined in a grammatically correct manner; however, since both words do have a meaning that relates in a direct manner to the goods and services in question, the relevant consumer would not see the sign as a badge of origin. The syntactic structure does not seem particularly relevant in this case, as the sign applied for is composed only of two common words. Since each individually relates to the goods and services, it is not necessary for them to form a grammatically correct English expression for the consumer to understand them in relation to the goods and services.

2. The applicant argues that the sign is only allusive in relation to the goods and services to which the objection has been raised. The Office cannot agree with this conclusion. The words ‘GLAMOUR’ and ‘EYES’ have a strong connection to cosmetics and eye make-up and to the sale of these goods. The word ‘GLAMOUR’ is easily understood in relation to make-up and cosmetics, since it refers to a positive quality of beauty and attractiveness consisting in a desirable look, the implication being that these goods could confer this quality on the consumer. The word ‘EYES’ refers to the place on the face where cosmetics and make-up should be applied or used, so its meaning in relation to the goods and services is clear. The perception of the relevant consumer of the sign as a whole in relation to these goods and services would therefore be that they were eye make-up and cosmetics and the sale of these goods and that they would confer on the consumer beauty and attractiveness, that is, glamour. The sign, consisting only of these two words that have connotations closely related to the goods and services, is therefore without distinctive character and must be refused in accordance with Article 7(1)(b) EUTMR.

3. The play on words referred to by the applicant is not sufficient to give the sign distinctive character. First, it must be assessed whether or not the relevant consumers would immediately perceive the play on words. The Office does not see this as very likely, since the two words are separate elements and each of them individually has connotations closely related to the goods and services. Second, even if the consumer were to perceive the play on words, the word ‘GLAMORIZE’ would not be distinctive for the goods and services in question. This word also has a strong connection to the goods and services and would be perceived as a laudatory promotional indication without distinctive character, falling foul of Article 7(1)(b) EUTMR.

Furthermore, the fact that the sign at issue can be a play on words and that it can be perceived as surprising and unexpected does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

4. Cosmetics and make-up products are generally goods for mass consumption and do not attract a higher than average degree of attention from consumers. They will pay attention to the colour and the nature of the product and its other characteristics, but not more so than when buying food or clothing. They may be generally brand-loyal, but this is not relevant with regard to the intrinsic distinctive character of a sign. As explained above, the sign ‘GLAMOUR EYES’ has a strong connection to the goods and services to which the objection has been raised. Consequently, and due to its basic nature, this sign is devoid of distinctive character in relation to those goods and services. It would not be seen as an indication of commercial origin by the relevant consumer when encountering it for the first time. The familiarity of the consumer with a particular brand is not relevant to the question of intrinsic distinctive character under Article 7(1)(b) EUTMR; it would rather be relevant to acquired distinctive character under Article 7(3) EUTMR, which has not been claimed by the applicant in this case.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 526 122 is hereby rejected for the following goods and services:

Class 3 Cosmetics and cosmetic products; paper guides for eye make-up, eyebrow cosmetics, eyebrow pencils, adhesives for affixing false eyelashes, cosmetics preparations for eyelashes, false eyelashes; make-up, make-up preparations, mascara.

Class 35 Retail and wholesale services connected with the sale of makeup, cosmetics, false eyelashes; Retail and wholesale services connected with the sale of eyelash curlers.

The application may proceed for the remaining goods and services:

Class 3 lipsticks, nail polish, hair care products, hair colors, hair dyes, perfumes and fragrances, soaps; hair mascara, adhesives for cosmetic purposes, bleaching preparations (decolorants) for cosmetic purposes, color- removing preparations, cosmetic kits, cosmetic creams, cosmetic dyes; eau-de-cologne, essential oils, false nails; hair lotions, hair sprays, lotions for cosmetic purposes, make-up powder, make-up removing preparations; nail care products, nail care preparations, nail varnish, oils for cosmetic purposes, cosmetic pencils, perfumery, perfumes, shampoos, cosmetic skin care preparations, toilet water, decorative transfers for cosmetic purposes.

Class 26 Wigs and hair pieces; fashion articles as far as included in class 26, namely, barrettes, clip-in pieces of hair, hair bands, hair ornaments and braids, hair-slides, bows for the hair, false hair, plaited hair, tresses of hair, hair coloring caps, hair pins..

Class 35 Retail and wholesale services connected with the sale of hair cosmetics, hair care preparations, hair setting preparations, hair cream, hair tonic, hair oil, hair wax, hair gel, hair mousse, hair lotions, skin care preparations, hair waving preparations, hair dyes, nail polish, false nails, makeup removing preparations, cleansing preparations for human use, perfume, essential oil, soaps, dentifrices, deodorants for personal use, air perfuming preparations; Retail and wholesale services connected with the sale of hair scissors, hair clippers, shavers, shaver cases, nail clippers, nail scissors, manicure sets, razors, hair curlers, hair rollers, crimping irons, crimpers, curling tongs, tweezers, hand tools, hand operated implements, cutlery; Retail and wholesale services connected with the sale of arcade games, telecommunication devices, electronic machines, computers, printers, laptops, computer programs, computer software, computer hardware, spectacles, sunglasses, spectacle and sunglass cases, CD-ROMs, hand-held games, phonograph records, metronomes, electronic musical instruments; Retail and wholesale services connected with the sale of downloadable music files, digital music, films, downloadable image files, video discs, video tapes, downloadable electronic publications, mobile phones, mobile phone accessories; Retail and wholesale services connected with the sale of books, magazines, periodicals, printed publications, printed matter, handbooks, guidebooks, pamphlets, newsletters, journals, pictures, posters, photographs, cards, catalogues, handouts, manuals, stationery, pens, pencils; Retail and wholesale services connected with the sale of handbags, rucksacks, purses, totes, clutches, purses, backpacks, wallets, suitcases, attaché cases, beauty cases, vanity bags, cosmetic bags, duffel bags, key bags, waist bags, school bags, travelling bags, shopping bags, sports bags, card cases, trunks, umbrellas, parasols, walking sticks; Retail and wholesale services connected with the sale of cloth, fabric, bed clothes, bedspreads, pillowcases, mosquito nets, bed covers, blankets, bed blankets, window curtains, door curtains, covers for cushions, covers for furniture, table cloths, towels, bath towels, handkerchiefs, bathing gloves, washing mittens; Retail and wholesale services connected with the sale of clothing, uniforms, skirts, trousers, pants, underwear, pajamas, swimsuits, masquerade costumes, bridal veils, footwear, scarves, headgear, headbands, hats, neckties, caps, socks, gloves, belts, garters, aprons, sporting wear, gymnastic wear, false hair, wigs, chignon, artificial hair, human hair, false beards; Retail and wholesale services connected with the sale of braids, hair ornaments, hair pins, hair clips, hair bands, hair nets, hair grips, hair tuft, hair curlers, hair colouring caps, brooches; Retail and wholesale services connected with the sale of games, gymnastic and sporting articles, amusement machines and apparatus for use in amusement parks, toys, dolls, board games, playing cards chess, dice, dice cups, checkers, conjuring apparatus, dominoes, game machines and apparatus, billiard equipment, sports equipment, fishing tackle and insect collecting implements; providing information relating to sales of hair, makeup, cosmetics, beauty products, wigs; organization of exhibitions and trade affairs for commercial or advertising purposes; advertising plan, design, production and dissemination of advertising matter; publicity.

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.

Elna ISAKSSON