Refusal of application for a European Union trade mark

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

Alicante, 19/05/2017

L'OREAL (Société Anonyme)

José Monteiro

41 rue Martre

F-92117 Clichy Cedex

FRANCIA

Application No:	016018103
Your reference:
Trade mark:	DAMN FINE LASHES
Mark type:	Word mark
Applicant:	L'OREAL 14, rue Royale F-75008 Paris FRANCIA

The Office raised an objection on 21/11/2016 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 21/03/2017, which may be summarised as follows:

1. The applicant disagrees with the statement that relevant consumers will understand that the product for which the mark is applied for will give them ‘excellent eyelashes’. The word ‘DAMN’ is defined as an exclamation of surprise, however, it has no direct meaning in relation to the cosmetics and make-up preparations and it does not have the same meaning as ‘excellent’. The word ‘DAMN’ is too unspecific and the link between this term and the goods in question is too remote to conclude that the mark ‘DAMN FINE LASHES’ as a whole is descriptive for the goods applied for.

2. An exclamation of surprise in a product name is unseals and not generally associated with personal care products. Having conducted a search of a leading cosmetics store website, no use of the word ‘DAMN’, either as a product name or in the description of those products could be identified. The word ‘DAMN’ is not a descriptor and its uniqueness in the field of makeup and cosmetics enables its combination with the words ‘FINE LASHES’ to create a fanciful mark.

3. The Office has deconstructed the mark and not examined it as a whole. The very unusual combination of the word ‘DAMN’ with the words ‘FINE LASHES’ is sufficient to confer distinctiveness to the mark as a whole.

4. The use of the word ‘DAMN’ is exclusive to the applicant and the average consumer will recognise the use of the word ‘DAMN’ within the mark ‘DAMN FINE LASHES’ as distinguishing the cosmetics and makeup product from those of others.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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.

‘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).

1. As regards the applicant first argument, the Office states that when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. The Office examined the mark ‘DAMN FINE LASHES’ and it came to the conclusion that the mark conveys obvious and direct information that the goods applied for are cosmetic and make-up preparations by which consumers obtain excellent eyelashes. The Office provided, in its notice of 21/11/2016, dictionary definitions of all words contained in the mark. The mark applied for is made up of three common words that are not linked in one unit in a catchy and unusual way. The mark ‘DAMN FINE LASHES’ is a combination of words which has a clear message that is understood by relevant consumers with no additional mental effort. The word ‘DAMN’ is an exclamation that merely reinforces the meaning of the word element ‘FINE LASHES’.

2. As regards the applicant’s second argument, the Office states that when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. As regards the applicant’s argument that the word ’DAMN‘ is not used in relation to personal care products, ‘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 service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

3. Regarding the applicant’s third argument, the Office states that for the purpose of assessing distinctive character of the mark it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). Furthermore, the Office reiterates its response to point 1.

4. As regards the applicant’s final argument, the Office reiterates its response to point 2.

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 16 018 103 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.

Klara BOUSKOVA