Refusal of application for a European Union trade mark

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

Alicante, 02/02/2017

MARKPLUS INTERNATIONAL

39 rue Fessart

F-92100 Boulogne-Billancourt

FRANCIA

Application No:	015984421
Your reference:
Trade mark:	PAPER PLUS
Mark type:	Word mark
Applicant:	SEIKO EPSON, KABUSHIKI KAISHA (ALSO TRADING AS SEIKO EPSON CORPORATION) 1-6, Shinjuku 4-chome, Shinjuku-ku Tokyo JAPÓN

The Office raised an objection on 09/11/2016 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 06/01/2017, which may be summarised as follows:

1. The term ‘PLUS’ in the mark ‘PAPER PLUS’ is difficult to define. Referring to the Collins Dictionary the term ‘PLUS’ has many different meanings and is always followed by another term, which is not the case in the present matter. Therefore the word’s use in this context is quirky and intriguing.

2. While a definition of ‘PLUS’ can mean “positive advantage or good” such as “a plus factor”, its use preceding the word ‘PAPER’ would have no clear meaning for the public.

3. Within business, the word ‘PLUS’ would be quite unexpected and colloquial given that it is informal.

4. Due to the fact that PAPER is a good not a quality, the public will not understand the connection between the words PAPER and PLUS. The combination of the two words is unexpected and renders the whole sign distinctive.

5. The goods covered by the objected application are not Class 16 goods, but are those which cannot be qualified of paper.

6. The EUIPO have previously registered many trademarks constituted of a sign similar to the application.

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.

General remarks on Article 7(1)(c) EUTMR

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.

(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).

Specific remarks concerning the observations of the applicant

1. The term ‘PLUS’ in the mark ‘PAPER PLUS’ is difficult to define. Referring to the Collins Dictionary the term ‘PLUS’ has many different meanings and is always followed by another term, which is not the case in the present matter. Therefore the word’s use in this context is quirky and intriguing.

The Office agrees that the word ‘PLUS’ has multiple meanings, many of them used in a positive context, such as “having a value above that which is stated or expected” (extracted from Collins Dictionary on 02/20/2017 at https://www.collinsdictionary.com/dictionary/english/plus ). The Office would argue that, particularly in the marketing of goods and services, the word ‘PLUS’ does not necessarily need to be followed by another term, as by the placing of it after a word that denotes or closely characterises the goods or services is sufficient to alert the consumer that the goods or services have a high value or offer something that has an extra quality. The word is not regarded as sufficiently quirky or intriguing to counter this message of quality regarding the goods.

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.)

2. While a definition of ‘PLUS’ can mean “positive advantage or good” such as “a plus factor”, its use preceding the word ‘PAPER’ would have no clear meaning for the public.

The Office disagrees with this observation and would assert that, as stated above, while ‘PLUS’ can mean “positive advantage or good”, it may designate a positive characteristic of the goods that would be readily understood by the consumer.

3. Within business, the word ‘PLUS’ would be quite unexpected and colloquial given that it is informal.

The Office disagrees with this point and would assert that the term is commonly used in the course of trade to emphasise positive aspects and additional features of goods or services. The Office refers to the case-law confirming that the adjective ‘PLUS’ should be regarded as descriptive (see inter alia decisions of the Boards of Appeal of 03/03/2014 R 1847/2013-1 ‘ULTRASAFE PLUS’; of 23/09/2009 R 397/2009-1‘KOMPRESSOR PLUS’).

4. Due to the fact that PAPER is a good not a quality, the public will not understand the connection between the words PAPER and PLUS. The combination of the two words is unexpected and renders the whole sign distinctive.

The Office asserts that the consumer, being well informed and circumspect, is accustomed to seeing the word ‘PLUS’ used in the marketing of goods and services that offer something extra. The combination of these words would not require from the average consumer any particular intellectual effort to be immediately understood and would be perceived as indicating a promotional message, not a badge of trade origin.

5. The goods covered by the objected application are not Class 16 goods, but are those which cannot be qualified of paper.

The goods applied for are for the manufacture of paper in Classes 1 and 2 and therefore are closely linked to the actual product. The Office considers it irrelevant that the goods claimed for are not paper or paper based products in Class 16 as the mark would still exist to signify a positive characteristic of goods that are closely associated with paper.

6. The EUIPO have previously registered many trademarks constituted of a sign similar to the application.

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).

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 015984421 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.

Lance EGGLETON