Refusal of application for a European Union trade mark

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

Alicante, 15/03/2017

PERNOD RICARD, société anonyme

Group IP Hub

Olivia SERGENT

12 Place des Etats-Unis

F-75016 PARIS

FRANCIA

Application No:	016014813
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Pernod Ricard Winemakers Spain, S.A. Paseo de Mikeletegi 71, 2ª planta E-20009 San Sebastian ESPAÑA

The Office raised an objection on 16/11/2016 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 16/01/2017, which may be summarised as follows:

1. The applicant argues that the EUTM applied for is a figurative mark consisting of the representation of a natural brown-coloured jute sack cloth that covers the exterior of a wine bottle – which contains the identified goods - from the base to lower neck, and leaves only the red-coloured tin capsule uncovered. The jute sackcloth is associated with an almost square-shaped brown label, which is composed of a red crest device on top, a white rectangle with gold borders, and a gold strip at the bottom. Such a representation cannot therefore be seen as just "simple", neither be reduced to the minimalist description of a "bottle wrapped in a cloth". Indeed, the combination of colors, i.e. red, brown, white and gold, is not at all commonplace for the packaging of the concerned goods. In addition, the jute sack cloth will be recognizable by the relevant consumers as an indication of origin since it is not commonly used in the wine sector, but used by the applicant at least since 1959.

2. The applicant strongly disagrees with the Office’s argument that figurative elements of the sign are commonly used in connection with the goods claimed, namely on wine bottles. Relying on a case law, the applicant claims that whether or not a sign is commonly used is a yardstick for the examination of Article 7(1)(c) EUTMR.

3. The applicant further argues that the reasoning of the Office is unfounded because it is based on assumptions without explaining why the features would be typical of the packaging of the designated goods and why the mark does not depart from basic shapes and forms of packaging in the wine sector. However, the burden of proof shall obviously and necessary lie with the Office.

4. The applicant asserts that the presentational features of the mark applied for are in no way typical of the packaging of the designated goods. Wine packagings are generally of dark green color, or sometimes transparent, but never wrapped in a cloth and, a fortiori, never wrapped in a natural brown-colored jute sack cloth. Online search of ‘sack cloth’ easily shows that it is not directly related to wine sector.

5. The Office granted protection for several figurative marks representing bottle or a packaging for goods in Class 33, such as EUTM No 9 905 639, EUTM No 917 762, EUTM No 8 129 686.

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.

Signs that are subject to an objection under Article 7(1)(b) EUTMR ‘… are incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition’ (30/04/2003, T-324/01 & T-110/02, Zigarrenform / Goldbarren, EU:T:2003:123, § 29).

Accordingly, the distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29).

As stated in the Notice of grounds for refusal, the Office considers that the objectionable goods covered by the mark applied for are mass consumption goods, which are not expensive and are purchased rather frequently. The goods at hand are mainly aimed at average consumers whose level of attention will not be high.

The sign applied for is a figurative mark which represents a bottle wrapped in a cloth that covers the bottle from the base to lower neck. A golden-white label with a crest device on its upper part is also attached to the bottle.

The criteria for appreciating the distinctive character of three-dimensional trade marks because of the form of the product itself do not differ from those applicable to other kinds of trade marks. Nonetheless, within the framework of application of these criteria, the perception by the relevant public is not necessarily the same in the case of a three-dimensional trade mark, comprising the form of the product, as in the case of a word or figurative trade mark, which consists of a sign regardless of the aspects of the products it designates. Indeed, the average consumer is not used to presuming the origin of products based on their form or that of their container, beyond the scope of any visual or textual aspect, and, consequently, it may be harder to accredit distinctive character when dealing with a three-dimensional trade mark than when dealing with a word or figurative trade mark (07/10/2004, C-136/02, §30).

It must be recalled that the case law developed for three-dimensional trade marks comprising the form of the product itself is also applicable to the case of a figurative trade mark comprising the two-dimensional representation of this product (21/04/2010, T-7/09, Spannfutter, §20). By analogy, this statement must also be applied to the packaging of products such as liquids, which have to be sold in bottles (02/06/2010, R1442/2009-1, §16).

The Office also points out that ‘according to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR’ (12/01/2006, C 173/04 P, Standbeutel, EU:C:2006:20, § 31).

As regards the applicant’s argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T 129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant] to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

In the light of the above, regardless of how detailed the sign applied for may be described, the Office maintains that the sign will primarily be perceived as a representation of a bottle wrapped in a cloth, which does not depart significantly from the norm or customs of the sector. The internet search results for ‘wine bottles’, ‘wrapped wine bottles’ and a picture of a wine department of a retail store submitted by the applicant are insufficient to demonstrate the contrary.

All bottles showed by the applicant are of a similar shape with a lid on the top and labelled with different labels. Neither the label, nor a cloth in the present case is particularly eye-catching as the average consumers are used to see various decorative elements on wine bottles.

The Office considers that the mark applied for does not comprise any characteristics that, from a trade mark perspective, would be sufficiently detailed or arbitrary to retain the relevant public’s attention. Instead, the relevant public would perceive the elements referred to above, when viewed both in combination and individually, to merely fulfil their decorative functions and not as indications of a commercial origin (08/07/2015, R2947/2014-2, Bottle shape, § 20).

As regards the applicant’s argument that the representation applied for is used by the applicant at least since 1959 and therefore will be recognizable by the relevant consumers as an indication of origin, it is recalled that under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) EUTMR do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. However, apart of a single fact mentioned above, the applicant did not submit any information, data and evidence as regards the economic effort made by the applicant in respect of the mark applied for.

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).

‘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) EUTMR, the application for European Union trade mark No 16 014 813 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.

Sandra KASPERIUNAITE