Refusal of application for a European Union trade mark

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

Alicante, 01/02/2017

Ramberg Advokater KB

P.O. Box 3137 Jakobsbergsgatan 13, 6 tr

SE-103 62 Stockholm

SUECIA

Application No:	015777221
Your reference:	900279-2
Trade mark:	CERTIFIED WILDLIFE FRIENDLY
Mark type:	Word mark
Applicant:	Wildlife Friendly Enterprise Network 433 Sprout Path NW Bainbridge Island Washington 98110 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 07/09/2016, pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

2. The applicant submitted its observations on 07/01/2016, which may be summarised as follows:

• The mark “CERTIFIED WILDLIFE FRIENDLY” as a whole is at the most suggestive and is non-descriptive and distinctive in relation to the goods applied for.

• The quality and nature of the goods is not defined as being not harmful to animals and plants; it is rather things like, for instance in the case of sweaters, the softness of the fabric and the durability of the material. The consumers would have to use their imagination to understand the mark in the way suggested by the examiner.

• Registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark (ECJ judgment, C-329/02 P, SAT 2, § 35 and 40).

• The ECJ has also held that registration of a trade mark which consist of signs or indications that are also used as advertising slogans, indications of quality, or incitements to purchase the goods and services covered by that mark is not excluded as such by virtue of such use (judgment in case T-122/01/ Best Buy, § 21).

• The Office has registered similar marks, for instance EUTM reg.nr. 10298867 - FAIR TRADE CERTIFIED, EUTM reg.nr. 290114 - ORGANIC PURE COTTON CERTIFIED, and IR reg.nr. 978993 - ECO FRIENDLY PACKAGING.

3. 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.

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 Office cannot find other than that the mark CERTIFIED WILDLIFE FRIENDLY is descriptive and devoid of any distinctive character.

Many consumers care for the environment and its wildlife, and are very aware of the fact that many of the manufacturing and production processes, sourcing and delivery methods, etc. that are in place in today’s society, are harmful to wild animal and plants. They therefore try to find and purchase sustainable products which do not harm the natural environment and the wildlife in it.

The word “FRIENDLY” is used profusely in marketing in relation to sustainability and the environment, and the consumers are very familiar with terms like for instance “environmentally friendly” and “ecologically friendly” in relation to products and services that (allegedly) do no or minimal harm to the environment. In the mark at issue the term “WILDLIFE FRIENDLY” specifically refer to the protection and conservation of wildlife and their habitats.

There are a number of different certification schemes in relation to environmentally friendly and sustainable products. These certifications ensure that the companies comply with the specific requirements and standards as set out in the certification program. The products/services of a participant to such a scheme are thus certified under that scheme.

Therefore, when the consumers see the words “CERTIFIED WILDLIFE FRIENDLY” on the applicant’s products, they would immediately understand and rightly assume that the products are certified to be wildlife friendly, for instance that the manufacture and production of those products, and the sourcing of the product materials, etc. do not cause harm to wild animals and plants.

It should also be noted that many environmentally friendly consumers are on the lookout for and prefer to buy ecological, sustainable and wildlife friendly products. They would see the term CERTIFIED in the expression “CERTIFIED WILDLIFE FRIENDLY” as a reassurance and guarantee that the products so labelled are actually and without doubt wildlife friendly.

The message of the mark is clear, direct and impossible to miss. There is no element whatsoever in the mark that would lead the relevant consumers to believe that the mark is an indication of commercial origin, and the consumers would not interpret it as anything but a purely informative message.

The Office is aware that the ECJ has held that a trade mark does not need to be original, imaginative, unusual or striking. That is of course true but it does not mean that such matters are irrelevant when appraising the distinctiveness of a sign. On the contrary, a sign which is imaginative, original, unusual and fanciful is far more likely to be able to do the job of distinguishing the goods or services of a specific undertaking than a sign which in banal, hackneyed, commonplace and derivative. There are several linguistic and stylistic techniques by which a descriptive message can be clothed in distinctiveness: unusual syntax, alliteration, rhyme, paradox, a play on words and so forth. No such technique is present in the sign.

It is true that the ECJ has held that registration of a trade mark which consist of signs or indications that are also used as advertising slogans, indications of quality, or incitements to purchase the goods and services covered by that mark is not excluded as such by virtue of such use. This is the case in so far as the public perceives the mark as an indication of that origin (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45). This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive. It is noted that the applicant did not claim or show that the relevant consumers has come to perceive the mark now at hand, “CERTIFIED WILDLIFE FRIENDLY”, as a badge of origin.

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).

In any case, all the three marks referred to are figurative marks and are therefore not applicable in this case.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 15777221 is hereby rejected.

(It is noted that there are classification issues pending, however, they do not affect the examination of the absolute grounds for refusal).

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with 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.

Anne-Lee KRISTENSEN