Refusal of application for a European Union trade mark

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

Alicante, 16/06/2017

Michael Fitzsimons

TMR Fitzsimons

44 Laurence Street,

Drogheda, Co Louth,

IRLANDA

Application No:	016052615
Your reference:	PM/AR/T28432.EU
Trade mark:	CHEF'S CHOICE PREMIUM QUALITY
Mark type:	Figurative mark
Applicant:	SOHIL MOHAMMED 57 Greenville Place, Clanbrassil Street, Dublin 8 IRLANDA

The Office raised an objection on 28/12/2016 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, after an extension, on 03/05/2017, which may be summarised as follows:

The mark is distinctive, since its word elements are unusual, not used in English, which makes the mark therefore distinctive, even if they might be allusive, considering also the highly elaborated device elements. The mark should be examined as a whole. The Office has registered similar marks before. The opponent presents some turnover figures for Ireland and UK, without claiming that the mark has become distinctive through use.

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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character 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). The Office has previously done so and found the mark as a whole and all its individual elements to be descriptive. Taken as a whole, the words CHEF'S CHOICE PREMIUM QUALITY immediately inform consumers without further reflection that the goods applied for are food items, consisting of different types of cooked and uncooked rice, all of which are of the highest/superior standards, characteristics and value, carefully chosen by a principal cook, the chef.

Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the nature, quality and of the goods in question.

It follows that the link between the words CHEF'S CHOICE PREMIUM QUALITY contained in the mark and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

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).

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

As regards the 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). The applicant has not done so. The three figures claimed to be turnover in UK and Ireland are irrelevant, as no actual evidence was presented nor was it claimed that the mark has acquired distinctiveness through that use.

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).

Furthermore, the earlier marks registered are not similar to the present mark, since they contain distinctive elements, which makes them distinctive, contrary to the mark applied for presently.

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) CTMR (see, in particular, judgment of 12/01/2006, C‑173/04 P, ‘Deutsche SiSi-Werke’, p. 31). In the present case, the goods covered by the mark applied for are mass consumption products and are aimed at the average consumer. The Office reiterates its arguments above, namely that the features of the shape of the mark applied for, taken alone or combined with each other, are not distinctive, they are without any fanciful elements. In terms of distinctiveness it does not diverge sufficiently from commonplace and banal quality promotional labels, for it to merit registration as a trade mark. The average consumer will be extremely familiar with seeing such representations for the goods applied for. There is nothing unusual or fanciful about this representation which could give the mark even the minimum level of distinctiveness. It closely resembles, at least to the untrained eye, the plethora of similar labels already on the market. It is difficult to believe that consumers would attach trade mark significance to an ordinary shaped quality label. Such elements will either pass unnoticed or be thought of as purely decorative. The average consumer will simply take it as a decorative promotional feature and will not consider it as an indication of the origin of the products in question (see decision of 05/09/2007, R 1710/2007‑4).

Accordingly, the mark applied for does not enable the average consumer who is reasonably well-informed and reasonably observant and circumspect to identify the products concerned and distinguish them from those of a another commercial origin. Therefore, it is devoid of distinctive character for those goods.

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 16052615 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.

Erkki Münter