Refusal of application for a European Union trade mark

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

Alicante, 06/02/2017

ZIVKO MIJATOVIC & PARTNERS

Avenida Fotógrafo Francisco Cano 91A

E-03540 Alicante

ESPAÑA

Application No:	015609415
Your reference:
Trade mark:	Economic
Mark type:	Figurative mark
Applicant:	TPK d.o.o. Carice Milice 79 RS- Paracin SERBIA

The Office raised an objection on 17/08/2016 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 14/10/2016, which may be summarised as follows:

1. The mark is not descriptive and is distinctive

2. The mark is figurative

3. The Office has registered similar marks

4. Other Offices have accepted similar marks

5. Acquired Distinctiveness

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 (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).

The mark is not descriptive and is distinctive

The applicant holds that the mark is not descriptive and is distinctive. The applicant argues that the word ‘economic’ has other definitions, apart from the one cited by the Office, like for example – relating to the economy or government policy. Therefore the applicant argues that consumers will need a mental step to think of the meaning of the mark.

The Office does not dispute the fact that the word economic has more than one meaning, however this is secondary when assessing whether a mark is descriptive or not or whether it posses distinctiveness to function as a trade mark in the EU market.

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, emphasis added.)

The sign in question will be construed in the context in which it is being used. In the case at hand the Office is not convinced that the mark will be understood as referring to economics and financial affairs, if the goods which will be sold are in fact soaps, perfumery and other related products. Therefore the scenario which is described by the applicant of how the mark will be understood is not realistic. The natural way of understanding the mark is that which has been pointed out by the Office in its letter, in other words as something which is cheap and does not cost a lot of money. This will not be seen as a mark by the English speaking consumers in the EU. Such a word is a commonplace on products, boasting that the goods and products are cheap and affordable. Therefore the sign cannot fulfil its purpose, because the mark is actually descriptive and non-distinctive. It gives direct information about the value of the products. Unlike the suggestion of the applicant, there are absolutely no mental steps needed to understand the meaning of the mark, the meaning of the mark is clear and unequivocal.

The mark is figurative

The applicant also holds that the mark is figurative enough to be considered as a distinctive enough. The applicant holds that the figurative element of the mark resembles a flag, and it contains a rectangular piece of elegant fabric with a distinctive design.

The Office however does not find this argument convincing. There is nothing suggesting that the two lines are fabric and moreover there is nothing distinctive about two lines on top of each other. It is common for marks to have simple lines, like the ones contained in the mark applied for. Therefore the Office does not believe that the lines actually add any distinctiveness to the mark in question. The lines are banal and ordinary, and would not serve to distinguish the mark from other marks.

The Office has registered similar marks

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).

Therefore the fact that similar marks have been accepted by the Office in the past does not hinder the Office from raising absolute ground objections like in the case at hand. The Office however notes that the marks cited by the applicant bear very little relation to the mark at hand. The fact that the mark contain the mark ‘ECONOMIC’ does not necessarily means that the mark is similar to the mark applied for. Some of the marks registered and cited by the applicant are more stylized than the sign applied for in this case, or have additional word elements. For example the mark cited ‘ECONOMIC PARFEMI’ which the applicant cites more than once in its observations is composed of two separate words, one of which is a non-English word. Therefore no analogy can be created between the mark applied for and this mark. The mark applied for is solely composed of an English word, whereas the mark cited ‘ECONOMIC PARFEMI’, is composed of two words, one is understandable to the English speaking public, and the other words is a non-English word, which might be considered allusive to perfumes, however it cannot be described as descriptive. In a nutshell, the two marks are not comparable, because the marks differ substantially from each other.

In addition, the applicant holds that the applicants and the owners of ‘ECONOMIC PARFEMI’ are under negotiation for the total transfer of the mark. This fact is irrelevant when considering whether a trade mark fulfills the obligations as a EUTM. Thus the alleged negotiations are irrelevant for the purposes of this objection.

Other Offices have accepted similar marks

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Thus, the fact that the UK or US Offices have accepted allegedly similar marks in the past, does not hinder the Office from raising objections for the lack of distinctiveness and descriptiveness.

The applicant failed to convince the Office that the mark applied for is distinctive and non-descriptive, and therefore the Office will now consider the claim for acquired distinctiveness.

Acquired Distinctiveness

The applicant has filed the following evidence:

1. Product catalogues dated 2015/2016 addressed to amongst others, Slovenia and Croatia

2. A link to the owner’s website www.economicparfemi.hr

3. An application from the applicant for a 3D mark which was applied for in 2015, which according to the applicant shows that the applicant is a serious and a respectable company present in the European market

4. A certificate of registration of one of the products from the ‘Economic’ range, manifesting that the product complies with safety measures for sale.

5. Certificate of creditworthiness rating from 2015.

6. Invoices addressed to clients in Croatia, Slovenia and Romania

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

At the outset the Office notes that the relevant language in this case is English, because the mark is an English word. Therefore in other words, for the applicant to be successful in claiming acquired distinctiveness, the applicant has to show that the mark has acquired distinctiveness in the English speaking countries of the EU, namely Malta, Ireland and UK. Therefore evidence which concerns other territories is by and large irrelevant. In this case there is no evidence suggesting that the mark has actually been used in any of the English speaking countries. Moreover, even if such a use is proved, this does not necessarily mean that the mark has actually acquired distinctiveness, and fulfils the requirements of Article 7(3) EUTMR. In this regard the Office notes that not a single invoice is directed to clients in any of the English-speaking countries of the EU.

The applicant also filed a copy of an application for a 3D mark filed with the EUIPO on 27/07/2015, purportedly to demonstrate that the applicant is a serious and a respectable company present in the European market. The Office respectfully points out that the application filed (EUTMA 14 414 171) was rejected on formality grounds, and the trade mark applied for was in fact never registered. Furthermore the Office refutes the claim that this is an indication that the product is present on the European market. The presence of a product on the European market is not a requirement to apply for an EUTM. The fact that the applicant holds creditworthy certificates and a registration that the product complies with safety measures for sale, sheds no light on whether the product has acquired distinctiveness in the English speaking countries in the EU. Furthermore as observed above, the fact that the product is sold in Croatia, Slovenia and Romania, which is being backed by invoices, makes no difference in this case, because the relevant territories for the case at hand are the English speaking territories.

The Office notes that no evidence whatsoever was produced to show the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations.

In this case it is obvious that the requirements set out above to proof acquired distinctiveness have not been proved despite the voluminous amount of evidence provided.

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 15 609 415 is hereby rejected for all the goods claimed.

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.

Alistair BUGEJA