Refusal of application for a European Union trade mark

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

Alicante, 21/02/2017

Tiantian XU

603, Route d'Entreverges

F-74250 La Tour

FRANCIA

Application No:	015714314
Your reference:
Trade mark:	Paris Chic
Mark type:	Word mark
Applicant:	Tiantian XU 603, Route d'Entreverges F-74250 La Tour FRANCIA Xin TANG 603, Route d'Entreverges F-74250 La Tour FRANCIA

The Office raised an objection on 18/08/2016, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for all the goods applied for. The objection letter is attached.

For ease of reference the contested goods are as follows:

Class 25 Clothing; Footwear; Headgear.

The applicant submitted its observations on 14/10/2016, which may be summarised as follows:

• The language of the trade mark is French. The decision to review the trademark in English may yield different conclusions as if it was examined in French.

• The application is filed from France, by a French resident using French words. Although these observations are written in English, for the remainder of the process French should be used.

• The objection to the descriptiveness of the trademark is flawed due to using English as reference language and the consequent logical inversion in the position of the trademark words which is plausible in English grammar but not in French.

• The trademark is not “Chic de Paris” or “Chic from Paris”, the word Chic comes after Paris. The position of words is an essential feature of syntax and in French there is no logical connection between these two words as they are arranged and the same descriptiveness or origin cannot be implied.

• The “Paris Chic” trademark compares favourably to other accepted trademarks such as “Paris Women” 008730665, “Paris Kids” 010153741 and “Paris Blues” 001908912, which, while in English, are all registered for the same category 25, and are completely descriptive according to the examiner’s arguments.

• In French when used in common discussion, the word chic usually only applies to objects, persons or adjectives, using it with a city name is an unusual and original arrangement which at the very least should lead to some degree of consumer recognition.

• The idea that such arrangement is banal and lacks distinctive character is also debatable since there are no obvious existing products or brands using the same arrangement for the goods claimed.

• In French or even in English, “Chic” has a much more complex connotation that simply “elegant” (http://www.harpersbazaar.com/culture/features/a10095/thehistory-of-chic/ ).

As it usually refers to a person, the word conveys cultural and aspirational traits from a different epoch, which in combination with “Paris”, create a powerful unique reference which cannot be reduced to a laudatory interpretation.

• There are some examples of registered word trademarks in English which use similar composition patterns such as “Natural Chic” (005914635) and “City Chic” (009041856) and “London Active” (011176807), which are arguably more banal and simpler.

• Phonetically, Paris Chic is an easy to pronounce combination as the “s” from Paris merges with the “C” from Chic and results in a seamless word, which is a valuable feature for a trademark.

• We request that the application is examined using French as reference language and taking into consideration the distinctive character that the original arrangement of words confers to it.

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 which underlies 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 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, § 34).

In the present case, the objectionable goods covered by the mark applied for are everyday consumption/mass consumption goods mainly aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of an average consumer who is reasonably well-informed and reasonably observant and circumspect.

Moreover, since the mark applied for contains the English language words Paris Chic the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The Office remains of the opinion, contrary to what the applicant says, that the term Paris Chic is indeed descriptive of the kind, characteristics and quality of the goods in question.

The Office notes the applicant’s submissions that as the language of the trade mark is French the decision to review the trademark in English yields a different conclusions than if it was examined in French and as such the applicant requests that the application is re-examined using French as reference language in order to take into consideration the distinctive character that the original arrangement of words confers in French.

Likewise, the applicant further submits that in French, when used in common discussion, the word “chic” usually only applies to objects, persons or adjectives, using it with a city name, such as “Paris” is an unusual and original arrangement which at the very least should lead to some degree of consumer recognition.

Moreover, the applicant submits that the trademark is not “Chic de Paris” or “Chic from Paris”, the word Chic comes after Paris. The position of words is an essential feature of syntax and in French there is no logical connection between these two words as they are arranged and the same descriptiveness or origin cannot be implied. In conclusion the applicant states that the application is filed from France, by a French resident using French words and although thus far the observations have been written in English, for the remainder of the process the applicant requests that French is used on the basis that the Office’s objection to the trademark is flawed due to the use of English as reference language and the consequent logical inversion in the position of the trade mark words which is plausible in English grammar but not in French.

The Office notes that the applicant has requested that the mark be re-examined in French on the basis that they believe the outcome of the examination in French language would render the mark acceptable. However, the Office is unsure as to whether the applicant is referring to changing the language of proceedings from English to French, or whether the applicant is requesting that the relevant public with reference to which the absolute ground for refusal must be examined is changed from the English language-speaking consumer in the Union to the French language-speaking consumer. As such the Office will address both issues.

With regards to changing the language of proceedings the office has to put forward that the guidelines make it clear that this is not permissible and that such a request should be refused where the Office has already issued a deficiency or objection letter in the first language, as in this case. The correspondence language is the language used in correspondence between the Office and the applicant in examination proceedings until registration of the mark. If the language that the applicant has selected as the first language is one of the five languages of the Office, then this will be used as the correspondence language. Only where the language selected as the first language is not one of the five Office languages can the applicant indicate that it wants the correspondence language to be the second language. This request can be made on the application form by ticking the respective box or can be requested later on, either by explicit request, or implied by sending a communication to the Office in the second language. However, such a request will be refused where the Office has already issued a deficiency or objection letter in the first language, as in this case.

With regards to changing the relevant public with reference to which the absolute ground for refusal must be examined from the English language-speaking consumer in the Union to the French language-speaking consumer, it has to be put forward that where the Office deems that the trade mark applied for consists of the designation of the product in any of the official languages of a Member State of the European Union, in this case English, the Office will refuse the EU trade mark application, even if the trade mark applied for would not face the same objection in another official language of the EU.

Thus, the Office remains of the opinion that taken as a whole, the English language words Paris Chic immediately inform the relevant English-speaking consumer in the EU, without further reflection, that the clothing, footwear and headgear goods applied for are stylish and elegant are manufactured in, and/or originate from Paris, the French capital. As such, the words Paris Chic would merely be seen as a descriptor in relation to the objectionable goods rather than an indicator of sole trade origin.

Consequently, there is nothing about the expression Paris Chic that might, beyond its obvious descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods designated on the basis that the mark conveys obvious and direct information regarding the kind, characteristics and quality of the goods in question. The combined words the expression consists of provide a straightforward and clear message in relation to the goods concerned on the basis that there is nothing abstract about the expression Paris Chic as its semantic content, in relation to the relevant goods is quite obvious.

The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant English-speaking consumer in the EU will not perceive it as unusual but rather as a meaningful expression in relation to the goods concerned. Thus, the Office remains of the viewpoint that the expression Paris Chic is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer. As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the goods at issue on the basis that it is not vague in any way, nor is it akin to an allusive fanciful sign in relation to the goods concerned.

In addition, the applicant is reminded that 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 such as those in relation to which the application is filed, or of characteristics of those goods, 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 concerned (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, § 32).

Furthermore, it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, 'Develey', § 19).

It is on that acquired experience that the Office submits that the relevant consumer would perceive the trade mark sought as a descriptive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', § 48).

Therefore, the Office is unable to agree with the applicant that as the expression Paris Chic has an unusual construct and would be perceived as an indication of origin rather than a description of the products claimed. It is reasonable to believe that consumers do not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and perceive the descriptive message of the mark. No other interpretation is reasonably open to the relevant public in the context of the goods concerned. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods in question, but also the mark consists of a combination of words that might profitably be employed for such goods. As such, the applicant is reminded that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 40 and the case-law therein cited).

Moreover, the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods in question. The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

Furthermore, it must be put forward that there is no evidence to suggest that the relevant consumer in the area of the goods concerned would be particularly trade mark ‘educated’ or savvy and would instantly perceive Paris Chic as a trade mark in relation to the contested goods rather than as a descriptive message in relation to the kind, characteristics and quality of the goods.

Furthermore, it has to be put forward that not only does the expression Paris Chic convey a descriptive message in relation to the contested goods but also it conveys a clear promotional message, the function of which is to communicate positive characteristics of the goods concerned. 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 serves to highlight positive aspects of the goods concerned, namely that they are elegant and stylish and originate from Paris.

As previously stated, the words ‘Paris Chic’ immediately inform consumers that the goods applied for are fashionable, stylish and elegant and are manufactured in/or originate from Paris. It is commonly known that Paris has a reputation for fashion and therefore the expression Paris Chic would be seen as a value statement as well as a descriptive expression (judgment of 21/01/2010, C-398/08 P, ‘Audi’, §45; an d judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, §34).

The reputation that France has for fashion is evidenced in ‘How France Became the Fashion Capital Of The World' which states that French designers have long created the most renowned and coveted fashion brands in the world. Stylistically innovative and technically exceptional, the outstanding reputation of the French clothing industry can be traced as far back as the 17th century, and it is a reputation that has only continued to strengthen since. (information extracted from the Internet on 18/08/2016, at http://theculturetrip.com/europe/france/articles/how-france-becamethe-fashion-capital-of-the-world/ ).

Consequently, it is maintained that the relevant public will recognise the clear link between the semantic content of the sign and the goods at issue and will clearly see and understand the word combination Paris Chic as a descriptive/promotional expression encouraging the consumer to choose the goods in question instead of other competing goods. As a consequence, the relevant public will perceive the expression Paris Chic as a descriptive message as well as a laudatory promotional message, the purpose of which is to highlight the positive aspects of the goods claimed.

Accordingly, the subject mark will not immediately designate to the consumer the origin of the goods concerned, but rather will provide them with descriptive/promotional information. Indeed, when used in connection with the goods concerned, the word Paris Chic is banal with a simple and direct message and it is therefore devoid of any distinctive character.

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

Furthermore, the applicant has made reference to various trade marks in the Office’s Register which the applicant considers are analogous to the mark applied for. However, the present mark applied for cannot be found registrable simply because of that the previous acceptances cited. Decisions concerning registration of a sign as a European trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of the EUTMR and not on the basis of the Office’s previous decision-making practice (15.09.2005, C-37/03 P, BioID, EU:C:2005:547, § 47 and 28.01.2004, T-146/02 - T-153/02, Standbeutel, EU:T:2004:27, § 48). Under that aspect, the existence of EUTM registrations of marks which differ entirely from the one at hand, like those quoted by the applicant, are irrelevant.

Thus, the Office maintains that the expression, Paris Chic, taken as a whole, does not have the capacity to communicate to relevant consumers that it complies with the basic function of a trade mark, since it would be understood by the relevant public as a mere descriptive/promotional expression and not as an indication of the origin of the goods concerned.

In conclusion, the argument in the present case concerns whether the expression Paris Chic can be registered as a trade mark for the contested goods claimed in Class 25 in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the expression is likely to convey to a relevant consumer of those goods, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated. The Office confirms, for the reasons already given, that the mark Paris Chic conveys obvious and direct information regarding the kind, characteristics and quality of the goods in question. Whilst it is noted that the applicant does not agree with this viewpoint, the Office has to put forward that when the mark Paris Chic is used in connection with the contested goods it is reasonable to accept that the relevant consumer is highly likely to perceive the expression in a descriptive/promotional sense rather than as a badge of sole trade origin.

Consequently, for the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(1)(c) EUTMR and Article 7(2) EUTMR, the application for European Union trade Paris Chic 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.

Sam CONGREVE