Refusal of application for a European Union trade mark

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

Alicante, 17/05/2017

Liesegang & Partner mbB, Rechtsanwälte

Kettenhofweg 1

D-60325 Frankfurt am Main

ALEMANIA

Application No:	016014102
Your reference:	2149/16
Trade mark:	Denti Belli
Mark type:	Figurative mark
Applicant:	Sancare GmbH Postfach 70 10 14 D-60560 Frankfurt ALEMANIA

The Office raised an objection on 15/12/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the sign is descriptive and devoid of any distinctive character, for the reasons set out in the attached objection letter.

The applicant submitted its observations on 20/01/2017, which may be summarised as follows:

1. There is no direct relationship between the sign and the goods in question, rather the sign is a suggestive and unusual neologism for the goods applied for.

2. There is no use of the sign in relation to the goods in question.

3. The sign has certain figurative elements which make it eligible for registration.

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.

(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).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). In the present case, contrary to what is argued by the applicant, the meaning of the combination ‘DentiBelli’ is not more than the meaning of the words separately. There is nothing vague or allusive for the combination ‘DentiBelli’ as to syntax or meaning considering the words alone. Considering the goods in question and the meaning of the combination ‘DentiBelli’, the Office is still of the view that the relevant consumer will understand immediately and without further interpretation the link between the goods and the sign in question, namely the goods applied for will provide fine and beautiful teeth to the consumers. Accordingly, the Office maintains its position that the sign applied for is descriptive of the kind and the intended purpose of the goods applied for.

The applicant argues that the sign is not used for the goods in question in the market. 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)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46). The formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12). Likewise, it is also irrelevant that it does not appear in dictionaries (12/01/2000, T‑19/99, Companyline, EU:T:2000:4, § 26).

The applicant argues that the figurative elements of the sign applied for are figurative enough to make the mark applied for eligible for registration. However, the office does not share applicant’s view.

The Office accepts that beside the verbal element ‘DentiBelli’ the sign comprise also figurative elements. However, as the figurative element is a ‘tooth figure’ which also reinforces the meaning of the word elements in the sign, this element does not endow the trade mark applied for as a whole with any distinctive character. Moreover, the blue framing and the standard typefaces of the verbal element are minimal in nature and do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function. Accordingly, contrary to what is argued by the applicant, the figurative elements do nothing to change the assessment of the verbal elements of the trade mark applied for. This is because for the purposes of the assessment of the descriptive character of the sign in question, the decisive question is whether, in relation to the goods and services concerned, the figurative elements change the meaning of the trade mark applied for from the perspective of reasonably observant average consumers (04/09/2014, R 1721/2013-1, hochschule dual (FIGURATIVE MARK), § 29). This is not the case for the sign applied for. Even the fact that the characters D and B being filled with blue colour does not change the Office’s position for the objection.

The Office is still of the view that these figurative elements are hardly likely to prompt the relevant consumer to perceive them as characteristics of significance in trade mark terms, in that they allow, either on their own or in combination, a commercial origin to be assigned to the goods that feature the trade mark. These elements will not be perceived or remembered by the relevant consumers as being distinctive or indicative of the commercial origin of the goods and services designated, so there is no interaction that is likely to alter the meaning of the expression or to give the composition as a whole distinctive character (21/11/2016, R 528/2016-2, Fralda-Calca, (fig.), § 29).

Consequently, the Office is of the opinion that when taken as a whole, the meaning of the term ‘DentiBelli’ will be clear to any Italian-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is being sought. Moreover, the figurative elements are of a reinforcing nature and do nothing to change the assessment of the verbal element of the trade mark applied for.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

In relation to the applicant’s submissions concerning the absence of the sign in the trade in relation to the goods/services at issue, the Office would like to note that according to the settled case-law it suffices that the term is meant to be used, or could be understood by part of the relevant public, as a description of the claimed goods or services, or a characteristic of the goods and services (see judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraph 36). It is not necessary for the Office to show that there is a present or future need of third parties to use or a concrete interest of third parties in using the term applied for (judgment of 04/05/1999, C‑108/97, ‘Chiemsee’, paragraph 35; and judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 61).

Moreover, the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

The applicant further argues that the sign has a stylised character and therefore the application of Article 7(1)(b) EUTMR must be denied. As mentioned in the previous paragraphs the figurative elements of the sign do not possess any feature that allows the sign to fulfil its essential function. Due to the entirely descriptive verbal elements of the sign, the figurative elements and the stylisation of the mark would be crucial to render the mark distinctive. In the case at hand, since the figurative elements have reinforcing effect to the meaning of the verbal elements, the sign at hand cannot fulfil this function and thus the mark in total remains without any distinctive character (see 15/12/2009, T‑476/08, Best Buy, § 28, ECLI:EU:T:2009:508).

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 16 014 102 - 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.

Kubilay ÖZDEMIR