Refusal of application for a European Union trade mark

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

Alicante, 16/02/2017

EUROCHINA INTELLECTUAL PROPERTY

Calle San Mateo, 65 - Local 1 "Llopis & Asociados".

E-03012 Alicante

ESPAÑA

Application No:	015880206
Your reference:	872/2016
Trade mark:	CHOCOLATE
Mark type:	Figurative mark
Applicant:	CHONGQING MU YUAN FANG CRAFTS CO. LTD. ROOM 2-1,NO.1 BUILDING,LANGUI NORTH TWO STREET, YUBEI DISTRICT CHONGQING REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 08/11/2017 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 18/11/2016, which may be summarised as follows:

1. The word ‘CHOCOLATE’ has more meanings. The Collins English dictionary definition used as a basis for objection does not represent the word’s main meaning and the word on its own has to be considered primarily as a food preparation made from cacao seeds.

2. The goods applied for and contested in the objection are not everyday consumption/mass consumption goods.

3. Based on the fact that similar marks have already been registered by the Office, the applicant makes reference to the deliberate violation of the principle of legal certainty and the doctrine of legitimate expectation.

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 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).

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.

(See judgment of 23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21).

‘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).

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant has argued that the word of which the sign applied for consists, ‘CHOCOLATE’, has various meanings, and that the Collins English dictionary definition used as a basis for objection does not represent the word’s main meaning, namely that of a food preparation made from cacao seeds, on which the mark has to be considered primarily.

The Office has noted applicant’s submissions. However, it must be considered 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 or services such as those in relation to which the application is filed, or of characteristics of those goods or services. 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 or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The meaning of the term ‘CHOCOLATE’ can without any doubt be the one the Office described in its notification. Among other meanings, it represents also the name of a colour and as such may be used legitimately in trade in relation to goods such as those contested where the colour of such goods is a purchasing consideration. Therefore, the word ‘CHOCOLATE’ immediately informs consumers without further reflection that the objectionable goods are chocolate coloured (a moderate to deep brown colour). Consequently, the mark conveys obvious and direct information regarding characteristics of the goods concerned.

Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the colour of the goods in question. It follows that the link between the sign and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

As regards applicant’s submissions that the goods applied for and contested in the objection are not everyday consumption/mass consumption goods and questioning the level of attention of the relevant consumer of the goods applied for, the Office has noted the applicant’s comments. However, it considers that the high level of attention alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods or in relation to services they are confronted with and will perceive the word ‘CHOCOLATE’ only as a meaningful term referring to products which offer a level of protection which surpasses all others in quality.

Moreover, the sign applied for contains certain figurative elements that confer upon it a degree of stylisation, namely stylised, handwritten-like lettering, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Therefore, the sign cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

In its submissions the applicant makes reference to the deliberate violation of the principle of legal certainty and the doctrine of legitimate expectation, based on the fact that similar marks have already been registered by the EUIPO.

The Office has noted applicant’s observations. However, as regards the applicant’s argument that a number of similar registrations have been accepted by the Office, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 880 206 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.

Robert KLECUN