Refusal of application for a European Union trade mark

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

Alicante, 25/10/2016

SERJEANTS LLP

Dock

75 Exploration Drive

Leicester LE4 5NU

REINO UNIDO

Application No:	015575111
Your reference:	M239.003.00
Trade mark:	BE BLUSH
Mark type:	Word mark
Applicant:	Be Blush Limited 8 Geoff Monk Way, Birstall Leicester Leicestershire LE4 3BU REINO UNIDO

The Office raised an objection on 05/08/2016 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 applicant submitted its observations on 03/102016, which may be summarised as follows:

1. The Applicant submits that the Office has chosen one potentially descriptive use of the word “blush” from the dictionary, and ignored the other meanings. The average consumer will perceive the word as a reference to blusher.

2. The mark is grammatically unusual and memorably fanciful.

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 partial 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.

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.(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

In the first place, the applicant is at idem with the Office that the dictionary meaning actually supplied is potentially descriptive. In the context of cosmetics, it is apposite. Therefore, the mark is not registrable. According to settled case-law, it is irrelevant that there is more than one meaning in question:

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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The Office based its objection on primary dictionary definitions of the individual word elements making up the mark. The definitions come from Collins English Dictionary, an objective source of the English language as spoken and perceived. The combined definitions make sense together in the context of the objected goods. There is no perceptible difference between the meanings supplied and the meaning perceived. No further corroboration is required. The mark is entirely made up of terms which actually

As previously stated, “taken as a whole, the words ‘BE BLUSH immediately inform the targeted consumers, without further reflection, that the cosmetics and make-up goods applied for facilitate or permit a rosy tint.

Therefore, the mark conveys obvious and direct information regarding the nature, intended purpose and quality of the goods in question.”

The term “Be Blush” conveys a “sufficiently direct and specific” message which the average English-speaking consumer is capable of immediately perceiving in relation to cosmetics and make-up. (judgment of 20/07/2004, T‑311/02, ‘LIMO’, paragraph 30).

As a whole, the mark will be perceived as a meaningful expression, which imparts a clear message about the goods applied for, that the consumer can use them to be rosy-tinted. The descriptive meaning will be grasped by the average English-speaking consumer, immediately. Therefore, the mark is neither an unusual combination, nor is it fanciful. It is a basic word combination, entirely obvious and meaningful and as such cannot in any way be shown to be memorable in relation to products which may include blusher and other complexion goods.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C‑104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

Furthermore, the influence of US English on the European consumer cannot be underestimated in the context of cosmetics, given the popularity of American brands in the market. “Be blush“ is no more unusual than saying “Be tan”. While the average English-speaking European consumer might use the word tanned, US parlance would be immediately understood and potentially used in common parlance in this particular sector.

Given that the mark has a clear descriptive meaning in relation to the goods applied for within the English-speaking territory of the EU, 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. The mark does not feature any additional element other than the message imparted, which could confer upon it the minimum degree of distinctiveness necessary for it to function as a badge of origin.

Furthermore, the separate objection raised by the Office pursuant to Article 7(1)(b) EUTMR is also maintained. For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (judgment of 30/06/2004, T 281/02, ‘Mehr für Ihr Geld’, paragraph 31).

The relevant public would perceive the expression ‘BE BLUSH’ as a promotional laudatory message, the function of which is to describe a characteristic of the goods. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they cosmetic products which promote a rosy glow,. (judgment of 21/01/2010, C 398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 34).

There is nothing about the expression ‘BE BLUSH’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

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 15 575 111 is hereby partially refused, namely in respect of.

Class 3 Cosmetics; make-up

The remaining goods are acceptable.

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.

Keeva DOHERTY