Refusal of application for a European Union trade mark

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

Alicante, 26/01/2017

GREYHILLS RECHTSANWÄLTE PARTNERSCHAFTSGESELLSCHAFT

Unter den Eichen 93

D-12205 Berlin

ALEMANIA

Application No:	015717507
Your reference:	DMR-8682-EM-CM
Trade mark:
Mark type:	Figurative mark
Applicant:	The Absolut Company Aktiebolag SE-117 97 STOCKHOLM SUECIA

The Office raised an objection on 18/08/2016 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 18/10/2016, which may be summarised as follows:

1. The examiner did not indicate expressly and clearly the reasons as to why the mark applied for would be devoid of distinctive character with respect to each product and service claimed, particularly bearing in mind that the goods and services belong to different categories.

2. The applicant refutes that the mark consists of a simple pattern as is commonly used in trade for goods and services at issue. The pattern is highly stylised, consisting primarily of a complex drawing depicting three eye-catching elements (a pineapple, a pot and floral arrangements), that enable the average consumer to memorise the mark/pattern,

3. The patterns submitted as search result at the bottom page 4 are entirely different and it is not known for which goods and services they serve exactly, whereas this mark overall is perceived as an artistic creation, complex sign coined by the applicant.

4. The applicant agrees that some of the goods cover designs such as some of the goods in classes 16, 24, 25 and 27, but that could not be the case for class 33 or services in class 35, but would rather be perceived as unusual by the public.

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 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).

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).

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).

The Office now responds to the applicant’s arguments.

1. The examiner did not indicate expressly and clearly the reasons as to why the mark applied for would be devoid of distinctive character with respect to each product and service claimed, particularly bearing in mind that the goods and services belong to different categories.

As already observed in the objection letter, every trade mark must be capable of identifying the goods and services as originating from a particular undertaking and therefore capable of fulfilling the essential function of a trade mark. This cannot be established in the present case, as the mark clearly does not satisfy the minimum degree of distinctiveness as prescribed by the application of the Article 7 (1)(b) EUTMR.

Further, the features of the patterns of the sign applied for merely depicts a decorative, repetitive pattern, of what might resemble four symmetrically positioned pineapples with black and white decorations around. The Office already found this repetitive pattern to be only of purely decorative function, intended to be used as part of the appearance of the products.

Furthermore, as regards the applicant’s argument that the examiner should have provided sufficient reasoning for all the refused goods and services covered by the application, it must be recalled that the Court has confirmed that where the same ground of refusal is given to a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (judgment of 15/02/2007, C‑239/05, ‘THE KITCHEN COMPANY’, paragraph 38). Moreover, there is a huge array of products in the market that can be decorated with patterns, even for the goods having a prior function of covering like textiles, lines, to protect or hold, they are often purchased owing to their decorative features, patterns and colours. These goods should nonetheless be assessed as if they covered the entire surface of the goods for which protection is sought (judgment of 19/09/2012, T-329/10, Stoffmuster, EU:T:2012:436). Consequently, when confronted with the pattern mark as the one in question: class 8 (…), class 9 (eg. smartphone cases, sunglasses) class 14 (cuff links, tie pins, watches), class 16 (cardboard boxes for gifts, paper gift bags and boxes, postcards), class 18 (eg. handbags, umbrellas, purses, key cases), class 20 (eg. furniture, namely chairs, sofas, picture frames), class 24 (textile and textile goods, linen, bed blankets, table mats, bed covers of damask), class 25 (eg. shirts, scarves, belts, dresses, headgear, bandanas), class 27 (carpets, textile wallpaper) or class 28 (eg. Christmas decorations, card games).This would also not exclude goods in class 21 (eg. cocktail shakers, candle holders, flasks, vase) or in class 33 (eg. alcoholic beverages, except beer) as these goods are sold as containers and the pattern would be attached as covering its outward surface, or the services in class 35 (eg. presentation of goods on communication media for retail purposes, retail of goods by means of catalogue, in stores or online) as they are ancillary and directly related to the goods at issue ((see by analogy decision of 29/07/2010, R 868/2009-4, A device of a pocket (fig.)).

2. The applicant refutes that the mark consists of a simple pattern as is commonly used in trade for goods and services at issue. The pattern is highly stylised, consisting primarily of a complex drawing depicting three eye-catching elements (a pineapple, a pot and floral arrangements), that enable the average consumer to memorise the mark/pattern,

Although the Office agrees with the applicant that the sign possesses certain stylisation, however, it does not possess required level of distinctiveness that would allow the relevant public to perceive it as a distinctive one.

Whether a consumer perceived, as the applicant put it, these other ‘eye-catching’ parts of the sign applied for besides pineapples with black and white ornaments, the relevant consumer would still see these kinds of repetitive patterns as merely decorative patterns, not as indication of commercial origin. However, the perception amongst the target market is not necessarily the same in the case of a sign composed of a design applied to the surface of goods as it is in the case of a word or figurative mark comprising a sign that bears no relation to the appearance of the goods it identifies. Whilst the public is accustomed to perceiving word or device marks as instantly identifying the trade origin of the goods, the same is not necessarily true where the sign forms part of the appearance of the goods for which it is claimed (judgment of 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 23).

The use of such pattern was marked as widespread and the relevant public due to its frequent use in the relevant market for the goods claimed cannot function otherwise than another common pattern affixed to the goods themselves.

3. The patterns submitted as search result at the bottom page 4 are entirely different and it is not known for which goods and services they serve exactly, whereas this mark overall is perceived as an artistic creation, complex sign coined by the applicant.

The Office cannot concur with the applicant’s argument that the sign at issue is markedly different from various patterns attached as search result in examiner’s finding as being commonly used in the trade for goods for which registration is being sought without giving any evidence to support them. First, the Office reiterates that the decorative patterns extracted out in a random search, also for similar goods as the ones at issue, apply the same stylisation and decorative repetitive pattern of dominating pineapples, not in the least departing from the norm of the sector. Second, when examining the trade mark applied for, the Office can rely on universally known facts and therefore it may base its analysis on well-known facts, likely to be known by anyone from generally accessible sources.

In this regard, it must be taken into account that the average consumer tends not to look at things analytically. A trade mark must therefore enable average consumers of the goods/services in question, who are reasonably well informed and reasonably observant and circumspect, to distinguish the product concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (judgments of 12/02/2004, C-218/01, Perwoll, EU:C:2004:88, § 53; 12/01/2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 29).

4. The applicant agrees that some of the goods cover designs such as some of the goods in classes 16, 24, 25 and 27, but that could not be the case for class 33 or services in class 35, but would rather be perceived as unusual by the public.

The Office refers to point 2 above.

The applicant failed to submit any evidence – such as information about the level of recognition by the relevant public or the mark’s distinctiveness, whether inherent or acquired – to prove that the trade mark applied for would be distinctive for the relevant public, as it claimed in its observations.

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 15 717 507 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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.

Gordana TRIPKOVIC