Refusal of application for a European Union trade mark

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

Alicante, 07/12/2016

FRIEDRICH GRAF VON WESTPHALEN & PARTNER mbB

Kaiser-Joseph-Str. 284

D-79098 Freiburg i. Br.

ALEMANIA

Application No:	015537822
Your reference:	1522/16REKe
Trade mark:	SMOOTHPROTECT
Mark type:	Word mark
Applicant:	Edgewell Personal Care Brands, LLC 6 Research Drive Shelton Connecticut 06484 ESTADOS UNIDOS (DE AMÉRICA)

On 30/06/16 you were informed that the mark applied for, SMOOTHPROTECT, was objectionable on the grounds of Article 7.1 (b) and 7.2 EUTMR (see attached letter)

The holder submitted allegations in reply on 26/08/16 which can be summarised as follows:

1. The examiner pointed out that SMOOTHPROTECT is descriptive of razors and razor blades.

2. A survey conducted by the International Dermal Institute indicates that 97% of male respondents say that they have one or more skin problems that they notice daily. This survey confirms that razor and razor blades harm the skin during the shave and that problems arising while shaving can only be prevented if products like shaving preparations are used in addition.

Once observations have been provided, it is up to the Office, pursuant to Article 73 EUTMR, to take a final decision based on reasons or evidence on which the holder has had the opportunity to present its comments.

1. At no time did the examiner state that the sign SMOOTHPROTECT was descriptive of razors and razor blades An objection on the grounds of 7.1 (c) EUTMR was never raised.

As stated in the standing objection, the words SMOOTH and PROTECT in relation to razors and razor blades, would be perceived at first sight by the average consumer, as a clear indication that they guarantee a smooth shaven skin and also prevent your skin from being damaged by the shaving process. The two words convey a banal promotional message that would not be perceived as the badge of origin for the razors and razor blades, and this is the reason why the mark is considered to be devoid of any distinctive character and refusable on the grounds or 7.1 (b) EUTMR.

2. The holder contends that a survey conducted by the International Dermal Institute indicates that 97% of male respondents say that they have one or more skin problems that they notice daily.

In the Office’s view this would be a strong reason to choose razors or razor blades that guarantee that are not going to harm your skin. It is not only the shaving preparations that prevent the damage. The quality of the razor and razor blades is definitive to the quality of the shaving, this being the reason of enormous differences in price from top of the market razors and razor blades with highly technically developed systems and cheap simple ones.

As a consequence, in the light of the above, protection for the EU is refused on the grounds of Article 7(1)(b) and 7(2) EUTMR, for all the goods listed, namely, for razors and razor blades.

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.

Mercedes SIERRA