Refusal of application for a European Union trade mark

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

Alicante, 13/03/2017

Barcelos e Fonseca Comércio e Serviços SA

Avenida da Liberdade 230 8º Piso Lisboa

P-1250-148 Lisboa

PORTUGAL

Application No:	015967813
Your reference:
Trade mark:	Master Swiss
Mark type:	Figurative mark
Applicant:	Barcelos e Fonseca Comércio e Serviços SA Avenida da Liberdade 230 8º Piso Lisboa P-1250-148 Lisboa PORTUGAL

The Office raised an objection on 11/11/2016 because it was found that trade mark applied for is not eligible for the registration under Article 7(1) (h) EUTMR, for the following reasons:

The trade mark you have applied for is not eligible for registration under Article 7(1)(h) EUTMR.

The mark applied for is:

for:

Class 21 Tableware, cookware and containers; Aluminium bakeware; All-purpose portable household containers; Glasses, drinking vessels and barware; Aluminium cookware; Bakeware; Bakeware [not toys]; Baking containers made of glass; Baking dishes; Baking dishes made of earthenware; Baking dishes made of porcelain; Baking tins; Baking trays made of aluminium; Baking utensils; Baskets for domestic use; Basting spoons [cooking utensils]; Beaters (Non-electric -) for kitchen use; Beaters, non-electric; Beverage coolers [containers]; Biodegradable bowls; Biodegradable paper pulp-based bowls; Biodegradable paper pulp-based plates; Biodegradable plates; Biodegradable trays; Biodegradable trays for domestic purposes; Blenders for food [non-electric]; Blenders, non-electric, for household purposes; Bone china tableware [other than cutlery]; Bottle coolers [receptacles]; Bottle stands; Bottles; Bowls for candy; Bowls for nuts; Bowls of precious metal; Boxes for dispensing paper serviettes; Bread baskets, domestic; Bread bins; Bread boards; Brushes for basting meat; Buckets; Buckets for household use; Butlers' trays; Kitchen moulds; Kitchen jars; Kitchen containers; Kitchen mitts; Kitchen sieves; Kitchen sponges; Kitchen utensils; Kitchen graters; Tenderizers [kitchen utensils]; Scrapers (kitchen implements); Kitchen cutting boards; Spatulas [kitchen utensils]; Turners (kitchen utensil); Molds [kitchen utensils]; Moulds [kitchen utensils]; Kitchen paper racks; Kitchen paper holders; Kitchen paper dispensers; Kitchen grinders, non-electric; Kitchen mixers, non-electric; Graters for kitchen use; Kitchen boards for chopping; Ceramics for kitchen use; Egg separators [kitchen utensils]; Garlic presses [kitchen utensils]; Presses (Garlic -) [kitchen utensils]; Skimmers for kitchen use; Household or kitchen containers; Aluminium moulds [kitchen utensils]; Mixing spoons [kitchen utensils]; Household or kitchen utensils; Turners for kitchen use; Carving boards for kitchen use; Chopping boards for kitchen use; Cutting boards for the kitchen; Combined lids for kitchen containers; Pouring spouts for kitchen use; Basting spoons, for kitchen use; Spoons (Basting -), for kitchen use; Skimmers [non-electric kitchen implements]; Bread-cases [for kitchen use]; Abrasive pads for kitchen purposes; Wooden chopping boards for kitchen use; Abrasive discs for kitchen [cleaning] purposes; Kitchen urns [not of precious metal]; Abrasive instruments for kitchen [cleaning] purposes; Abrasive sponges for kitchen [cleaning] use; Containers for household or kitchen use; Serving scoops [household or kitchen utensil]; Crushers for kitchen use, non-electric; Tortilla presses, non-electric [kitchen utensils]; Kitchen utensils, not of precious metal; Abrasive pads for kitchen or domestic purposes; Knife blocks; Knife rests; Knife boards; Knife rests for the table; Cooking graters; Cooking pots; Cooking pans; Cooking strainers; Cooking sieves; Cooking funnels; Cooking utensils; Cooking skewers; Skewers [cooking implements]; Skewers (cooking utensil); Cooking pot sets; Griddles [cooking utensils]; Grills [cooking utensils]; Shallow pans for cooking; Cooking utensils, non-electric; Cooking pots [non-electric]; Wire baskets [cooking utensils]; Cooking pans [non-electric]; Pins of metal (Cooking -); Cooking skewers of metal; Cooking pins of metal; Non-electric cooking steamers; Non-electric cooking pans; Non-electric griddles [cooking utensils]; Rolling pins [for cooking purposes]; Rice cooking pots [non-electric]; Cooking skewers, not of metal; Skewers for use in cooking; Griddles [non-electric cooking utensils]; Mess-tins [rice cooking canteens]; Pressure cooking saucepans, non-electric; Non-electric rice cooking pots; Non-electric pressure cooking saucepans; Non-electric cooking pots and pans; Portable cooking kits for outdoor use; Cooking pots and pans [non-electric]; Cooking utensils for use with domestic barbecues; Spits [other than parts of cooking apparatus]; Grills in the nature of cooking utensils; Cooking pots for use in microwave ovens.

The aim of Article 6 ter(1)(a) of the Paris Convention is to preclude the registration and use of trade marks which are identical to State emblems or which are to a certain degree similar to them. Such registration or use would adversely affect the right of the State to control the use of the symbols of its sovereignty and might, moreover, mislead the public as to the origin of the goods for which such marks are used. By virtue of Article 6 ter(1)(b) of the Paris Convention, that protection also covers the armorial bearings, flags, other emblems, abbreviations and names of international intergovernmental organisations.

State emblems and emblems of international intergovernmental organisations are protected not only against the registration and use of marks which are identical to them or which incorporate them but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view.

(21/04/2004, T‑127/02, ECA, EU:T:2004:110, § 39 and 40).

It follows that a trade mark that does not exactly reproduce a state emblem can nevertheless be covered by Article 6ter(1)(a) PC where it is perceived by the relevant public as imitating such an emblem. So far as the expression ‘imitation from a heraldic point of view’ in that provision is concerned, a difference detected by a specialist in heraldic art between the trade mark applied for and the State emblem will not necessarily be perceived by the average consumer who, in spite of differences at the level of certain heraldic details, can see in the trade mark an imitation of the emblem in question (see CJEU judgment of 16/07/2009 in Joined Cases C-202/08 P and C-208/08 P, RW feuille d’érable, EU:C:2009:477, § 50-51).

In the present case, the trade mark applied for contains a figurative element which is a clear imitation from a heraldic point of view of an armorial bearing, protected under Article 6 ter of the Paris Convention, namely the national armorial bearing of Switzerland:

(http://www.wipo.int/cgi-6te/guest/ifetch5?ENG+SIXTER+15-00+41498972-KEY+256+0+-1+F-ENG+34+60+1+25+SEP-0/HITNUM,B+CC%2fCH)

It is considered that the mark applied for would suggest to the public that the goods applied for originate from or are endorsed by the relevant state or organisation as the armorial bearing clearly gives a connection with Switzerland (21/04/2004, T‑127/02, ECA, EU:T:2004:110, § 65).

In order for this objection to be overcome, the applicant would have to submit evidence from the competent authority of the state or organisation concerned, authorising the registration of the trade mark.

If you have any observations, they should be submitted within two months from the notification of this communication. If you do not submit any observations, the application will be rejected.

The applicant failed to submit observations within the time limit.

Therefore and due to the reasons set out above, and pursuant to Article 7(1)(h) EUTMR, the application for the European Union Trade Mark 15 967 813 is hereby rejected for all the goods which have been 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.

Kubilay ÖZDEMIR