Refusal of application for a European Union trade mark

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

Alicante, 13/01/2017

DURÁN - CORRETJER, S.L.P.

Còrsega, 329 (Pº de Gracia/Diagonal)

E-08037 Barcelona

ESPAÑA

Application No:	015574619
Your reference:	EUTM-5916
Trade mark:	PORK
Mark type:	Figurative mark
Applicant:	NATIONAL PORK BOARD 1776 N.W. 114TH STREET CLIVE - IOWA 50325 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 04/08/2016 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 mark applied for is:

and is considered objectionable for all the services claimed, namely:

Class 35 Association services, namely, promoting the interests of the members of the pork industry.

Class 43 Providing a website featuring recipes, cooking information, and information about pork cuts and nutrition.

The applicant submitted its observations on 04/10/2016, which may be summarised as follows:

• The Office has not proven descriptiveness or lack of distinctive character but has merely written a personal opinion not founded on any objective facts.

• The services in Classes 35 and 43 are addressed to average consumers and a professional public in accordance with what the examiner has considered. The services concerned are services for everyday use and consumption destined to the public composed of average consumer who are deemed reasonably well-informed and reasonably observant and circumspect.

• The relevant public by reference to which the absolute grounds for refusal must be examined is the English speaking consumer in the European Union.

• It cannot be inferred from the definitions provided by the examiner or the Notice of grounds for refusal that ‘pork’ is a descriptive term and as such the Office’s argument that the relevant public will understand the word “PORK” as a meaningful expression, namely the meat from a pig, is unfounded.

• Additionally the mark applied for includes a device element and the EUIPO Guidelines state that the presence of a figurative element may give rise to a distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render the mark eligible for registration as a EUTM.

• The applicant was created by an Act of Congress that established the pork Checkoff. The pork promotion, Research and Consumer Information Act of 1985 is commonly known as the Pork Act.

• The sign applied for is directly related to an association from the United States and not as the mere concept of the animal as stated by the examiner.

• The trade mark does not identify the services claimed in Classes 35 and 43 because of its descriptiveness or lack of distinctive character even if it is composed of a word that can be found in the dictionary.

• The word ‘pork’ refers to goods whereas the subject mark is concerned with services.

• There is no evidence that proves that consumers will not see the sign applied for as an indication of origin.

• The assumption that the sign refers to the intended purpose of the services claimed is not duly justified.

• The burden of proof when objecting to a trade mark falls on the examiner and not the applicant who must reason and show evidence of the reasons for the rejection.

• The applicant ‘NATIONAL PORK BOARD’ already owns the EUTM 926 113, namely:

• This sign was accepted prima facie in 1998, thus the EUIPO has already considered that the sign which is almost identical to the subject mark has enough distinctiveness to be registered, even if ‘pork’ could also be understood as the word referring to the flesh of pigs as food as suggested by the examiner.

• Therefore, the absolute grounds objection invoked by the examiner in regards to the subject mark does not apply on the basis of the previous acceptance of the near identical mark.

• Other similar trade marks have been registered by the EUIPO. These signs also contain the word ’PORK’ and are combined with other words that also appear in the dictionary but they were still considered distinctive enough to be registered.

• The mark at issue has been in use for many years.

• If the objection is maintained the applicant requests further time to submit additional information.

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 (judgment of 16/09/2004, C 329/02 P, ‘SAT.1’, paragraph 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 (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 31.)

Furthermore, 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).

In the present case, the objectionable services covered by the mark applied for are mass consumption services as well as specialised services aimed at both the average consumer as well as a professional public. In view of the nature of the services in question, the awareness of the relevant public will vary from average to high.

Moreover, since the mark applied for contains an English language word, (PORK) the relevant public with reference to which the absolute ground for refusal must be examined is the English language-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 Office notes that the applicant is of the opinion that the Notice of Refusal does not comply with the legal obligations of the rule of law on the basis that the examiner has failed to prove the descriptiveness or the lack of distinctive character but has limited itself to writing down a personal opinion which is not founded on any objective facts. However the Office cannot agree with this viewpoint.

The Office maintains that the word PORK, contained in the mark immediately informs consumers without further reflection that the services applied for directly relates to pork, being the flesh (meat) of pigs used as food. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the characteristics of the services in question.

Furthermore, although the mark applied for contains figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that it fails to endow the trade mark applied for as a whole with any distinctive character. This element does not possess any feature that allows the mark to fulfil its essential function in relation to the services covered by the trade mark application (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 74).

As such, contrary to the applicant’s submissions the Office maintains its viewpoint that in terms of the services applied for the mark at issue conveys a clear, descriptive meaning and thus, 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 on the basis that the link between the word PORK contained in the mark and the services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

The Office notes that the applicant is of the viewpoint that the examiner failed to prove the descriptiveness and lack of distinctive character of the mark but merely wrote a personal opinion not founded on any objective facts. Once again the Office is unable to agree with the applicant’s viewpoint.

To reiterate, the examiner informed the applicant that the word PORK is defined in Collins English Online Dictionary (www.collinsdictionary.com ) as the flesh of pigs used as food. As such, taking into account that the services at issue relate to pork, namely association services, namely, promoting the interests of the members of the pork industry and providing a website featuring recipes, cooking information, and information about pork cuts and nutrition, the Office concluded that on seeing the mark which contains one word, namely PORK, used in connection with such services the relevant consumer, being both the average consumer as well as a professional public will perceive the word PORK, when used in connection with such services as meaningful, namely as directly relating to the flesh of pigs used as food.

The Office confirms that the objection raised equally applies to all the services claimed and on this basis the Office puts forward that where the same ground for refusal is given for a category or group of services, as in this case, the Office may use general reasoning for all of the services concerned (18/03/2010, C-282/09 P, P@yweb card / Payweb card, EU:C:2010:153, §38; 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 37, both judgements quoted in 09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26).

As far as the services in question are concerned, it is reasonable to accept that relevant consumers will not require a high degree of sophistication to make a sufficiently clear link between the mark and the characteristics of the services and therefore to perceive the descriptive message of the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the services in question, but is also a word that might profitably be employed for such services, Moreover, It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate characteristics, e.g., the subject matter, of the services in question. It is important for the applicant to note that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the services concerned, as in this case (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32.)

In addition, the Court has confirmed that where the Board of Appeal finds that a 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 services which are likely to be known by anyone and are in particular known by the consumers of those services. In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (See 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).

It is noted that the applicant is of the opinion that the examiner’s argument that the relevant public will understand the word ‘PORK’ as a meaningful expression, namely the meat from a pig is unfounded. However, the office cannot agree. The Office submits for the reasons already given that it is reasonable to accept that consumers will not require a high degree of sophistication to make a sufficiently clear link between the mark and the services at issue and perceive the descriptive message of the mark.

With regards to the word element ‘PORK’ contained in the mark, the Office is of the opinion that the relevant consumer will understand this common English word as previously defined. A mark which, as in the case at hand, would simply be seen as a descriptive term and which includes banal figurative elements, cannot guarantee the identity of the origin of the mark’s services to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said services from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

The applicant submits that the mark applied for is a peculiar expression different from what is already on the market and has been adopted by the applicant in order to differentiate its products from those of competitors and to use it as a trade mark that identifies the commercial origin of the services at issue. However, it has to be put forward that 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 service in question. The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 88).

As previously stated, the mark applied for contains a readily identifiable term from the English language, namely PORK. Therefore, there is no doubt that the relevant consumer will not perceive the sign as anything other than meaningful on the basis that it is not sufficiently unusual, ambiguous or fanciful to require a measure of interpretation, thought or analysis by the relevant consumer. Furthermore, the message expressed by the sign is clear, direct and immediate to the relevant public and in relation to the services concerned.

In their submissions the applicant puts forward that the mark applied for is not merely a word only mark but in reality includes a device element, adding that the EUIPO Guidelines state that the presence of a figurative element may give rise to a distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render the mark eligible for registration as an EUTM, and therefore the applicant submits that on this basis the Office should deem the mark at issue as sufficiently distinctive and accept the mark for registration. However, the Office remains of the opinion that the black figurative element is merely a banal decorative device that is unlikely to attract much attention from the relevant public and its mundane nature means that it is not particularly memorable.

With respect to the lack of distinctive character of the mark, given that the mark has a clear descriptive meaning in relation to the services at issue, 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. Consequently, taken as a whole, the mark applied for is devoid of any distinctive character and is not capable of distinguishing the contested services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

With regard to the previous EUTM registration to which the applicant has referred, the Office of course should strive for consistency and apply the same criteria to the examination of trade marks. However, it follows from T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65) that the Office cannot be bound by previous decisions. Pursuant to settled case-law, decisions concerning the registration of a sign as a EUTM are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a EUTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of previous Office practice or that of the Boards of Appeal.

Moreover, market practices, languages and registration practices evolve. The mark cited by the applicant may therefore have been previously accepted on the basis that it was considered to be registrable at the time of application, which however may not be the case nowadays. It is noted that the applicant’s prior near-identical registration, namely, EUTM 926 113, was registered in 1998, nearly 20 years ago. The Office is obliged to undertake its examination of trade marks applied for based on the date of application and accordingly registration practices have evolved in the intervening period between the earlier registration and the date of application for the present application in such a way that the mark, although previously capable of registration, no longer is.

In any event, the examination of absolute grounds for refusal must be full and stringent (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59), and may not just consist of the mere repetition of supposedly comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T- 106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign in respect of which registration is sought as an EUTM is composed in a manner identical to that of a mark in respect of which the Office has already approved its registration as an EUTM and which relates to services identical or similar to those in respect of which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

As regards the applicant’s argument that a number of registrations containing the term ‘PORK’ 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 (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).

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).

The applicant claims that the mark at issue has been in use for a number of years. However the Office notes that the applicant has not made a formal request for acceptance of the mark on the basis of acquired distinctiveness under Article 7(3) EUTMR, nor has any evidence in support of acquired distinctiveness been filed.

Consequently, the Office remains of the opinion that the relevant consumer will immediately and without further thought understand that the trade mark applied for conveys obvious and direct information regarding characteristics of the services claimed and as such the application for the European Union Trade Mark must be rejected for all the services at issue.

The Office notes the applicant’s request to submit further information in the event that the objection is maintained. The applicant is duly informed that the request to submit any further information is rejected.

The Office is of the opinion that the applicant has been provided with the opportunity to submit information in support of the application, however the Office finds that the arguments submitted do not justify waiving the objection for the reasons given and it is therefore difficult to see what further information could add to the written debate that has now taken place between the Office and the applicant. Consequently, the request for further time to submit subsequent information is dismissed.

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.

Sam CONGREVE