Refusal of application for a European Union trade mark

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

Alicante, 10/11/2016

TR INTELLECTUAL PROPERTY LTD

Ground Floor, Adamson House, Towers Business Park

Wilmslow Road

Didsbury, Manchester M20 2YY

UNITED KINGDOM

Application No:	015698814
Your reference:	MCR/EUTM00082
Trade mark:	GLAMOROUS
Mark type:	Figurative mark
Applicant:	Kacoo Fashion Ltd Fabrica 269 Great Ancoats Street Manchester Manchester M4 7DB UNITED KINGDOM

The Office raised an objection on 19/08/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 19/10/2016, which may be summarised as follows:

1. The applicant does not agree with the statement, in that the purchasing public will necessarily assess the meaning of the Mark when purchasing products or receiving services.

2. The applicant also submits that the dictionary definition of the word "glamorous" cannot be used as a test of descriptiveness. Not all the goods and services covered by the application could possibly be held to be "possessing glamour; alluring and fascinating; beautiful and smart, especially in a who way".

3. The applicant does not agree with the statement that the figurative elements are so minimal that they do not endow the mark with any distinctive character. It argues that the letter “A” in distinctive typeface, is in fact an inverted letter “V”.

4. In general, the applicant does not believe that the purchasing public per se will ever see this mark as a promotional tag.

5. The applicant refers to the previous registration of the Office “GLAMOROUS”, where the letter “O” is replaced with a star.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are no t 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live Richly, EU:T:2005:301, § 84.)

The applicant argues that the mark does not describe any specific properties of the goods and services. The Office does not share this view. A provider of goods and services, using the expression "Glamorous" portrays them positively, merely indicating that they are beautiful and smart. Thus, this expression conveys an inspiring offer. The expression “GLAMOROUS” is merely a motivational and promotional statement. The term contains no distinctive elements that go beyond pointing out an attractive offer for customers.

It is true, that the figurative mark, contains the letter “A” in a slightly stylized format. However, the Office does not see it as an inverted letter “V”, because when one reads the word, one would automatically perceive it as the letter “A”. Most English speaking consumers would read this expression as “GLAMOROUS”. The mark is written in fairly standard capital letters. Thus, neither the slightly stylized letter “A” nor the font are so striking that they could detract from the sense of the word, GLAMOROUS.

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 15 698 814 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.

Zuzana KAUFMANNOVA