Refusal of application for a European Union trade mark

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

Alicante, 15/11/2016

RECKITT BENCKISER CORPORATE SERVICES LIMITED

Dansom Lane

Hull HU8 7DS

REINO UNIDO

Application No:	015582711
Your reference:	SH/WITHPBLogo/EM
Trade mark:	WITH PREBIOTICS
Mark type:	Figurative mark
Applicant:	LRC Products Limited 103-105 Bath Road Slough Berkshire SL1 3UH REINO UNIDO

The Office raised an objection on 13/07/2016 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 08/09/2016, which may be summarised as follows:

1. The goods are not aimed at a professional public but only at the average consumer so the level of attention of the relevant consumer will not be high.

2. The mark must be assed as a whole

3. The mark is a highly stylised figurative mark, the figurative component is more than a simple geometrical shape and is not obviously a honeycomb at first sight

4. The examiner should have used an everyday meaning rather than a definition from a medical dictionary

5. The word PREBIOTIC is not descriptive for the goods as there are no food products claimed.

6. Honey is not the only foodstuff containing prebiotics so therefor there

is no strong link between prebiotics and honey.

7. The mark is original and distinctive.

8. Other marks with similar figurative elements 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 waive the objection for the following goods:

Class 10 Condoms; contraceptive, hygienic or prophylactic devices; massage apparatus, instruments and appliances; electric and electronic massage apparatus, instruments and appliances; body massagers; personal massagers; vibrators; vibrating rings; marital aids; sex toys; sex aids; parts and fittings for all the aforesaid goods.

The objection is maintained for the remaining goods

General Remarks

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

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

‘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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Specific remarks

The Office disagrees that the level of attention of the relevant consumer will only be that of the average consumer, as the nature of the goods, being for massage, intimate and/or sexual use and being the mayoralty of them for medical use, implies both an average and a more than average level of attention.

The applicant considers the mark as highly stylised. The Office disagrees. As set out in the Notification of 13/07/2016, the mark consist of the purely descriptive words ‘WITH PREBIOTICS’, indicating in a clear and plain manner that the goods contain prebiotics. The fact that the Office has used a definition taken from a medical dictionary is not surprising as the term originates from medicine. The definition of ‘PREBIOTICS’ taken from an ‘every day’ dictionary like the Collins English Dictionary, anyway, does not differ a lot as it reads: ‘natural substances in some foods that encourage the growth of healthy bacteria in the gut’. The figurative element of the mark is, as already mentioned in the Notification, a depiction of a simple honeycomb, enhancing the link between the prebiotics and the honey as an ingredient of the goods. There is nothing in this element that can overcome the descriptive meaning of the word elements of the mark.

It must be clear that prebiotics are ‘food components’, or if you prefer, ‘natural substances in some foods’’ and not food products itself The relation to the contested goods is therefor clear as these components are used as an ingredients in the contested goods and therefor the mark is descriptive for a characteristic of the goods.

Since the trade mark at issue is made up of several components, for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), ECLI:EU:T:2001:226, § 59).

The assessment of the distinctive character is to be based on the sign and the services as applied for. As the sign is descriptive, it is also devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR (12.02.2004, C 265/00, ‘Biomild’, EU:C:2004:87, § 19; 12.02.2004, C 363/99, ‘Postkantoor’, EU:C:2004:86, § 86). English-speaking consumers will perceive the sign as a mere description of the kind and the quality of the services applied for and not as an indication of any commercial origin.

The Office agrees with the applicants comment that there exist many food products that contain prebiotics and that honey is not the only one. The fact that honey is one of these food products that contain prebiotics, has already been illustrated in the Notification of 13/07/2016, although the Office considers that the general public is aware, since centuries, of the beneficial properties of honey and that such an explanation would even be unnecessary.

Furthermore the fact that many beauty and skin care preparation or creams contain honey has been demonstrated. It does not require much time nor fantasy to perceive a honeycomb in the central part of the mark, reinforcing the statement that the prebiotics included in the goods are there in the form of, or are extracted from honey.

The mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. Therefore, a sign consisting of a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) CTMR, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12.02.2004, C 265/00, ‘Biomild’, EU:C:2004:87, §§ 39, 43).

The relevant consumer perceives ‘WITH PREBIOTICS’ as the grammatically correct combination of the two words ‘with’ and ‘prebiotics’. The sign considered as a whole will be easily understood by the English-speaking public as describing an ingredient of the goods applied for, namely prebiotics.

The illustrated fact that the term ‘prebiotic’ serves as a synonym for ‘natural’ or ‘organic’ in marketing language reinforces the non distinctiveness of the sign.

As regards the applicant’s argument that a number of similar registrations 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The registrations mentioned cannot be seen as similar as non of them include a completely descriptive term like ‘probiotics’ for which the figurative elements used in the mark are a mere reinforcement of it. Moreover some refer to different goods and services and most of them are registered more than 5 years ago. so that not only the jurisprudence but also the practice of the Office changed accordingly.

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 015582711 is hereby rejected for the following goods:

Class  3 Massage oils and lotions; massage creams; massage gels; body wash; cleaning preparations for personal use including soaps and toiletries; non-medicated preparations for personal use and for care of intimate parts of the body; moisturising preparations; essential oils.

Class  5 Contraceptive preparations and substances; spermicidal gels, liquids and creams; hygienic lubricants and disinfectants for use in the area of the vagina, penis and anus; personal lubricants; vaginal moisturizers; topical preparations, namely, sprays, gels, liquids and creams for sexual health and / or enhancing sexual arousal; sexual stimulant gels; pharmaceutical preparations and substances, namely supplements for sexual health and / or enhancing sexual arousal; diagnostic preparations and substances all for gynaecological testing purposes or for the diagnosis of sexually transmitted diseases.

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.

Carine CEELEN