Refusal of application for a European Union trade mark

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

Alicante, 09/02/2017

FRIEDRICH GRAF VON WESTPHALEN & PARTNER mbB

Kaiser-Joseph-Str. 284

D-79098 Freiburg i. Br.

GERMANY

Application No:	15 836 414
Your reference:	2323/16REKe
Trade mark:
Mark type:	Figurative mark
	Wilkinson Sword GmbH Schützenstr. 110 D-42659 Solingen GERMANY

1. Summary of the facts

The Office raised an objection on 10/10/2016, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for was devoid of any distinctive character in relation to all the goods for which registration is sought, for the reasons set out in the attached letter.

2. Observations of the applicant

The applicant submitted its observations on 09/12/2016, which may be summarised as follows:

• The mark applied for contains the figurative element which is clearly distinctive for goods for which registration is sought, namely razors and razors blades, so that distinctiveness of its word elements, ‘FACE & BODY’, does not have to be assessed in detail.

• The figurative element of which the mark is composed displays neither razors or razor blades nor does it refer to any characteristics thereof. Therefore, it cannot be regarded non-distinctive in relation to these goods, or descriptive of their characteristics. The Office is also wrong in the assessment that the figurative element only reinforces the descriptive message conveyed by the word elements ‘FACE & BODY’; their descriptiveness is disputed. In addition, there is no face or head shown and, therefore, the figurative element does not include any indication referring to the word ‘FACE’

• Even if the relevant public may assume that the drawing of a man’s torso refers to a part of the body that is shaven with razors and razor blades, the figurative element as a whole is not descriptive, because the meaning behind the turning green arrow is not clear. It is unclear what the arrow stands for.

• The upper part of the male body is depicted in a blue colour. It is not a plain representation of this part of the body. By using different shades of the blue colour, the silhouette is not realistic but individual and, therefore, is capable of being recalled by consumers.

3. Decision

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.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

Under Article 7(1)(b) EUTMR, the registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, it must be borne in mind that Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods or services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

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.

‘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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

‘It must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) EUTMR, does not depend on there being a real, current or serious need to leave a sign or indication free’ (27/02/2002, T‑106/00, STREAMSERV, EU:T:2002:43, § 39).

The Office has re-considered the mark at issue in accordance with the abovementioned case-law, and, after giving due consideration to all of the applicant’s arguments, maintains that it is not capable of functioning as a badge of the commercial origin of the goods for which registration is sough.

As regards the applicant’s first argument, the Office, first, points out that that a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (15/09/2005, T‑320/03, LIVE RICHLY, EU:T:2005:325 § 81; 09/07/2003, T‑234/01, Stihl, EU:T:2003:202, § 32; and 20/11/2002, T‑79/01 and T‑86/01, Kit Pro and Kit Super Pro, EU:T:2002:279, § 22), whereas it does not preclude prior examination of the trade mark’s individual features (09/07/2003, T-234/01, Orange und Grey, EU:T:2003:202, § 32). Accordingly, word elements contained in a composite trade mark cannot be disregarded or assessed only superficially.

Second, on the basis of the analysis carried out in accordance with the mentioned case-law, the Office found that the mark at issue is composed of word and figurative elements, both of which are, contrary to the applicant’s argument, non-distinctive in relation to the goods for which registration is sought, for the reasons briefly indicated below:

The registration of the mark is sought for the goods: razors; razor blades. A razor is a tool that people, especially, men use for shaving; in English Oxford Dictionaries it is defined, as follows:

Razor noun

‘an instrument with a sharp blade or set of blades, used to remove unwanted hair from the face or body’.

(information extracted from English Oxford Dictionaries on 08/02/2017 at https://en.oxforddictionaries.com/definition/razor )

The mark is composed of the word elements ‘FACE & BODY’. These elements are exclusively descriptive of the goods in question, because they convey obvious and direct information regarding the kind and intended purpose of the goods in question, namely that they are razors intended for shaving or removing unwanted hair from the face and body, or blades designed to be used with such razors.

In addition, taking into account that not all razors available on the market are designed for shaving, or removing, unwanted hair from the face and body, the relevant consumer, when encountering the expression ‘FACE & BODY’ in relation to the goods in question, would perceive it as a promotional laudatory message, the function of which is to highlight that the applicant’s razors are designed for shaving both, the face and body.

Regarding the figurative elements of which the mark is composed, the Office found that they include a depiction of the upper front part of a man’s body (a man’s torso) with the arrow turning under the right armpit to the left side of the chest, placed within the circle. In the Office’s view, these elements, taken as a whole, immediately inform consumers that the goods in question are intended for men, namely for shaving unwanted hair that grows under a man’s armpit and on his chest. Therefore, they do not endow the mark applied for with any distinctive character.

Accordingly, the Office reiterates that the mark applied for, taken as a whole, has a clear descriptive meaning in relation to the goods razors; razors blades for which registration is sought.

The applicant argues that the figurative element of which the mark is composed cannot be regarded as descriptive or non-distinctive, because it does not display razors or razors blades for which the registration is sought. In reply to this argument, the Office points out that, for a mark to fall under prohibition laid down by Article 7(1)(c) EUTMR it is sufficient that it consists of, or contains, elements which are descriptive either or kind, or intended purpose, or any other characteristic of the goods for which registration is sought. In the case at hand, the mark contains the figurative elements which are, taken as a whole, exclusively descriptive of one of the intended uses of the goods in question, as well as regarding the identification of the target consumer, as already described in this decision. In addition, the fact that the figurative elements in question do not include any indication referring to the word ‘FACE’ does not render this mark non-descriptive or distinctive.

According to the applicant, the figurative element as a whole is not descriptive, because the meaning behind the turning arrow is not clear. The Office argues to the contrary and identifies that an arrow, by definition, ‘points in a particular direction to indicate where something is’ (information extracted from Collins English Dictionary on 08/02/2017 at https://www.collinsdictionary.com/dictionary/english/arrow ). In the present case, it is used in a combination with a man’s torso to point out that applicant’s razors are specifically suitable for shaving unwanted hair from the armpits and chest.

As far as the applicant’s final argument is concerned, it is well-known that the use of colours is common in trade, and that blue is a primary colour commonly and widely used in advertising goods, including razors. In this regard, the Office points out that razors themselves are available on the market in blue, including its different shades. Therefore, it is very unlikely that target customers ‑ men ‑ who are accustomed to seeing blue in advertising razors, would perceive it as unusual when encountering the mark in relation to these products, only due to the fact that it contains a depiction of a man’s torso in blue.

For all the reasons given above and in the letter of objection, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 15 836 414 is hereby refused for all the goods for which registration is sought.

4. Right to appeal

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 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.