Refusal of application for a European Union trade mark

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

Alicante, 31/03/2017

VENNER SHIPLEY LLP

200 Aldersgate

London EC1A 4HD

REINO UNIDO

Application No:	016020604
Your reference:	YCF/81575CTM1
Trade mark:	AMBIANCE & AROMA
Mark type:	Figurative mark
Applicant:	Luminara Worldwide, LLC 10911 Valley View Road Eden Prairie Minnesota 55344 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/12/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 07/02/2017, which may be summarised as follows:

1. The words ‘AROMA’ and ‘AMBIANCE’ do not convey obvious and direct information in relation to battery operated electric candles; electric candles; flameless candles in Class 11 and candle torches; wicks for candles for lightning, Christmas tree candles in Class 4. The word ‘AROMA’ refers to the pleasant and savoury smell emitted from food or drinks (Cambridge Dictionary, Schedule 3). The word ‘AMBIANCE’ is directly connected to a place or a location. Some items can influence the character or the atmosphere found in a place/location; however, this does not mean that there is a direct and specific connection between these items and the word ‘AMBIANCE’. The Class 11 goods do not emit any smell, and they provide illumination. The same applies to the goods in Class 4, which are not designed to emit a smell.

2. EUIPO has registered trade marks for the word ‘AROMA’ or marks containing ‘AROMA’ for goods in Class 11: AROMA AUTOMATIC (No 9 380 131), AROMA BLISS (No 13 219 456), AROMA (No 924 502), AIR AROMA (No 958 332), AROMA HOME (No 3 847 159) and AROMA SHOOTEER (No 1 175 490) for similar goods designed to emit a scent (Schedule 1).

3. EUIPO has registered trade marks for the word ‘AMBIANCE’ or marks containing ‘AMBIANCE’ for goods in Class 11: AMBIANCE (No 996 694), AMBIENCE (No 4 779 203), AMBIENCE (No 1 164 169), ColorAmbiance (No 10 172 666), LivingAmbiance (No 8 853 558) and MyAmbiance (No 1 057 219) (Schedule 2).

4. The wording ‘AMBIANCE & AROMA’ is distinctive for the goods for which registration is sought and does not convey obvious and direct information regarding the intended purpose of the goods.

5. The mark has a minimum degree of distinctive character.

6. The mark has a distinctive visual impact, which is of a badge or a button. The mark is not composed exclusively of a simple geometric shape; it also contains concentric circles interacting with the word elements and a prominent and striking ampersand device that is significantly larger than the words; the position of the dots within the outer circle serves to divide the words ‘AMBIANCE’ and ‘AROMA’.

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

In the present case, the trade mark applied for is a figurative mark, ‘ ’, which consists of the expression ‘AMBIANCE & AROMA’, which means ‘a feeling associated with a particular place and a pleasant smell’. The first word means ‘a feeling or mood associated with a particular place, person, or thing’ (information extracted from Merriam-Webster English Dictionary on 07/12/2016 at www.merriam-webster.com/dictionary ). The second word means ‘a distinctive pervasive and usually pleasant or savoury smell’ (information extracted from Merriam-Webster English Dictionary on 07/12/2016 at www.merriam-webster.com/dictionary). The structure of the expression does not diverge from the rules of English grammar; rather, it complies with them. Therefore, the relevant consumer will perceive the expression ‘AMBIANCE & AROMA’ not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely refills for fragrance dispensing electric candles, aromatherapy fragrance candles; candle torches; candles; candles and wicks for candles for lighting; candles for lighting; Christmas tree candles; perfumed candles; scented candles; tea light candles and battery operated electric candles; electric candles; flameless candles create a desirable ambience and emit a pleasant smell. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their intended purpose.

The goods for which registration is sought target the average consumer. It is clear that the relevant consumers will understand, in relation to the contested goods, the combination of words ‘AMBIANCE & AROMA’ as a meaningful expression referring to candles. The majority of the relevant consumers will immediately understand that the goods for which registration is sought are candles and candle products that create a desirable ambience and emit a pleasant smell.

In relation to the Class 11 goods, namely battery operated electric candles; electric candles; flameless candles, it can be concluded that these products can work with various fragrant oils or use scented waxes that are flameless and diffuse scents; therefore, the mark applied for in relation to these goods conveys obvious and direct information regarding their intended purpose. The same applies to the goods in Class 4, as candles can be scented and have the purpose of emitting a pleasant odour or smell.

The mark applied for, ‘ ’, despite its figurative elements, clearly contains obvious and direct information about the intended purpose of the contested goods. Although the combination as such might be novel, the words that make up the mark applied for are very common words and will be understood by the relevant English-speaking public; the expression is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office also maintains that the stylisation of the mark – namely the two concentric circles, the two dots and the ampersand device in the middle of the mark – does not endow the trade mark applied for, as a whole, with the necessary degree of distinctive character. The use of these elements does not add anything to the mark that would allow it to fulfil its essential function in relation to the goods for which registration is sought.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin that distinguishes the applicant’s goods from those of competitors.

Article 7(1)(b) EUTMR – general remarks

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘ ’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are candles and candle products that create a desirable ambience and emit a pleasant smell.

The mark is composed of the verbal element ‘AMBIANCE & AROMA’, written in standard characters, with the words enclosed in two concentric circles and the ampersand device in the middle of the mark. The goods to which an objection has been raised and for which registration is sought are refills for fragrance dispensing electric candles, aromatherapy fragrance candles; candle torches; candles; candles and wicks for candles for lighting; candles for lighting; Christmas tree candles; perfumed candles; scented candles; tea light candles and battery operated electric candles; electric candles; flameless candles, which are everyday goods or goods for mass consumption that target the average consumer. In view of the nature of the goods in question, the degree of attention of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

A mark that, as in the present case, will simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods from others that have a different origin. Therefore, it is 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 (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

The Office agrees with the applicant that trade marks that are merely allusive or suggestive or that require further interpretation must not be refused registration. However, the sign ‘ ’ cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message expressed by the sign applied for is clear, direct and immediately obvious to the relevant public. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The mark applied for is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication of a descriptive meaning and, when it is applied to a variety of goods, the relevant consumer will immediately be given an indication of the characteristics of such goods (i.e. their intended purpose).

As regards the applicant’s argument that a number of similar registrations have been accepted by 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, § 47; and 09/10/2002, T‑36/01, Glass pattern, § 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, § 67).

In addition, it is also well established that the minimum degree of distinctiveness required by Article 7(1(b) EUTMR must be assessed in the light of the circumstances of each case. In that context, it is emphasised that none of the quoted trade marks is identical to the mark applied for, ‘ ’. Therefore, the considerations under absolute grounds were different in the cited cases from those of the current application. Consequently, those trade marks cannot be relevant to the assessment of whether or not the mark in question is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 16 020 604 is hereby rejected for the following goods:

Class 3 Refills for fragrance dispensing electric candles.

Class 4 Aromatherapy fragrance candles; candle torches; candles; candles and wicks for candles for lighting; candles for lighting; Christmas tree candles; perfumed candles; scented candles; tea light candles.

Class 11 Battery operated electric candles; electric candles; flameless candles.

The application will be accepted for the remaining goods.

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.

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