Refusal of application for a European Union trade mark

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

Alicante, 28/10/2016

MARKS & CLERK LLP

90 Long Acre

London

WC2E 9RA

REINO UNIDO

Application No:	015687817
Your reference:	ACK/TN821627EMA
Trade mark:	DETOX ME
Mark type:	Word mark
Applicant:	English Tea Shop (UK) Ltd Devonshire House 1 Devonshire Street London W1W 5DR REINO UNIDO

The Office raised an objection on 11/08/2016 pursuant to Article 7(1)(b) 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 11/10/2016, which may be summarised as follows:

1. The mark has enough distinctiveness

2. The examples only show the word ‘DETOX’

3. The addition of the word ME makes the combination strange

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.

The applicant has requested the Office for a new opportunity to submit further submissions and arguments. However this request is being rejected. The applicant had two months to provide arguments and submissions, which it did. Another round of submissions would unnecessarily lengthen the examination proceedings. From the submissions provided by the applicant, the Office has enough information available to decide the case.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

The mark has enough distinctiveness

The applicant argues that the mark applied for is not descriptive and does have the minimum level of distinctiveness required to perform as a trade mark. The Office concurs with the applicant that the mark is not descriptive, in fact the Office has not raised the descriptiveness objection, but is only objecting to the mark on the basis that the mark is not distinctive. The applicant's argument that the trade mark should be considered to possess distinctive character since it was not considered to be descriptive is unfounded. Although the absolute grounds for refusal laid down in Articles 7(1)(b) and 7(1) (c) EUTMR may overlap to some extent, it is clear from settled case-law that those barriers are independent of each other and should be examined separately (see judgment of 08.05.2008, C-304/06 P, EUROHYPO, EU:C:2008:261, § 54). Contrary to what the applicant appears to think, trade marks that are not descriptive within the meaning of Article 7(1)(c) EUTMR can still be lacking in distinctive character pursuant to Article 7(1)(b).

The Office believes that the mark applied for is not distinctive and thus cannot operate as a trade mark, because quite simply consumers will not see the mark as a trade mark, as a badge of origin, but rather as a combination of words which is commonly found on get-ups and packing especially in the areas of beverages such as tea, coffee, water and juices. This has been amply demonstrated by the Office in the previous letter (attached) where such words are used to promote beverages.

The examples only show the word ‘DETOX’

The applicant argues that, save for one example the Office did not show use of the combination of the words ‘DETOX ME’. The only example where the word is shown comes from an Australian website. The Office is well aware that the website originates from a country outside the EU, however it also notes that the particular website also ships its products to EU countries. Although the website is Australian, this does in no way mean that the combination of words will not be understood in the English speaking countries of the European Union.

The idea of having ‘Detox’ tea is present in all the examples given by the Office. This is a common word used to market tea, as a detoxifier, the same also applies to other beverages which are considered healthy and beneficial for the human body. Therefore the word ‘Detox’ is not distinctive for the goods applied for. Furthermore the Office does not believe that the addition of the word ‘ME’ will add any distinctiveness to the mark. It is simply a request by the speaker to detoxify himself/herself.

From the examples provided by the Office it cannot be denied that consumers in the EU are familiar with beverages such as tea to detox their body. All the examples provided all show the word ‘DETOX’ in a prominent manner. The Office believes that the mark applied for will not be seen as a trade mark by the consumers.

The addition of the word ME makes the combination strange

The applicant holds that the addition of the word ‘ME’ makes the mark strange. There is nothing strange in the mark which makes the mark distinctive. The mark is quite simply descriptive and non-distinctive for the goods applied for. The mark applied for will be not seen as a trade mark, as a badge of origin or as a business identifier by the English speaking consumers in the EU.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 687 817 is hereby rejected.

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