Refusal of application for a European Union trade mark

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

Alicante, 20/01/2017

FORAL PATENT LAW OFFICES

P.O.Box 98

Riga, LV-1050

LETONIA

Application No:	016061004
Your reference:
Trade mark:	Клубничное тоффи с соком, жевател?ниые
Mark type:	Figurative mark
Applicant:	Joint-Stock Company "Konditerskaya Fabrika "TAKF" ul. Oktyabrskaya, D. 22 Tambov 392000 FEDERACIÓN DE RUSIA

The Office raised an objection on 09/12/2016 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 08/01/2017, which may be summarised as follows:

1. Registration is sought not only for the packaging as such, but also for the colours and the verbal and figurative elements, etc.

2. Furthermore, the graphical depiction at issue is different from those referred to in the examination report, as the pictures of sweets do not have anything in common except the shape of the sweet.

3. The findings in case T‑402/02, cited by the examiner, cannot be applied to the present case by analogy, as that case is not comparable to the present case.

4. The mark applied for contains distinctive elements, namely a combination of five colours, the figurative elements, the arrangement of the words and the fonts used.

5. EUIPO has already accepted EUTMs No 606 640, No 3 696 771, No 4 122 628, No 4 578 001, No 4 824 728, No 18 510 103, No 5 220 272, No 5 220 363, No 5 220 512, No 5 220 538 and No 2 199 248, which are similar to the mark applied for.

6. The relevant consumers would easily distinguish the trade mark applied for from the marks of other undertakings.

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.

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).

The Office now replies to the applicant’s comments.

1. Registration is sought not only for the packaging as such, but also for the colours and the verbal and figurative elements, etc.

The Office draws the applicant’s attention to the fact that the mark applied for was examined in its entirety, taking into account both the figurative and verbal elements. Taken as a whole, the mark applied for only consists of a combination of presentational features that are typical of the packaging of the goods in question. The features of the shape of the mark applied for, taken alone or in combination, are not distinctive: the graphic depiction shows a commonly used shape, namely a twisted wrapper in red, serving as packaging for sweets, such as fruit toffees, bonbons, candies and chocolates. Furthermore, the outer layer contains verbal elements in Cyrillic, ‘Клубничное тоффи с соком’, with barely visible verbal element on the top ‘жевателƄниые’, which will altogether be understood by the Russian-speaking population of the Union, such as the Lithuanian- and Latvian-speaking parts of the public, as ‘strawberry toffees containing fruit juice, chewable’.

2. Furthermore, the graphical depiction at issue is different from those referred to in the examination report, as the pictures of sweets do not have anything in common except the shape of the sweet.

In the present case, neither the packaging of the mark applied for nor the verbal elements could lend the mark distinctive character. In order to ascertain whether the shape of the fruit toffees/bonbons in question may be perceived by the public as an indication of origin, the overall impression created by the appearance of those fruit toffees must be analysed (24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 37).

This packaging is not markedly different from various basic forms of packaging commonly used in trade for the goods in question, but is simply a variation thereof. A random selection of internet search results for fruit toffees indicates that the mark applied for does not depart from the common shape and appearance of these products in the relevant market. Moreover, as was noted in the initial objection, even the standard shape of a product can be considered distinctive enough to be registered as a 3D trade mark if distinctive wording or other elements appear on it, but this is not the case here, as the verbal elements only indicate the nature of the goods in question, namely ‘chewable strawberry toffees containing fruit juice’.

As regards three-dimensional marks, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]. By contrast, a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character. (24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 31).

3. The findings in case T‑402/02, cited by the examiner, cannot be applied to the present case by analogy, as that case is not comparable to the present case.

The applicant further claims that the ‘incomparable different circumstances’ of the cited case are based on the twisted coloured wrapper, which has no other characteristic features.

However, as already pointed out, the mark that we are currently examining will not be sufficiently distinguishable from other forms of packaging commonly used for bonbons, sweets, toffees and similar, and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

Although the colour of the wrapper in the case cited is different from the colour of the wrapper in the present case, the case cited (judgment of 10/11/2004, T‑402/02, Bonbonverpackung, EU:T:2004:330) refers to the traditional shape of a wrapper for caramels , which is usually light brown or golden in colour, which is not unusual in itself and which will be perceived by consumers ‘merely as a sweet wrapper’. However, corresponds more to the traditional appearance and taste of fruit toffees, which, by virtue of the colour of their wrappers, indicate the flavour of the fruits the toffees contain, as is the case here for the red wrapper, which represents the strawberries with which the goods are flavoured, and which is not significantly different from numerous other wrappers commonly used in the confectionery market. Furthermore, the verbal elements, on which the applicant fails to comment, lack distinctiveness and only serve to indicate the nature of the goods in question, and the figurative elements depict strawberries; overall, these elements do not lend any distinctive character to the mark. More so than the wrapper in the case cited, the red wrapper, with its verbal and figurative elements, merely refers to the toffees’ flavour – that is, it indicates that they are toffees containing strawberries and/or the juice of strawberries – and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

4. The mark applied for contains distinctive elements, namely a combination of five colours, the figurative elements, the arrangement of the words and the fonts used.

The Office reiterates its responses to observations 1 and 2.

5. EUIPO has already accepted EUTMs No 606 640, No 3 696 771, No 4 122 628, No 4 578 001, No 4 824 728, No 18 510 103, No 5 220 272, No 5 220 363, No 5 220 512, No 5 220 538 and No 2 199 248, which are similar to the mark applied for.

Some of the trade marks listed are not registered for the same goods at all, and some of these registrations date as far back as 1997 or 2000. The mere fact that the Office has, at some point, registered a trade mark, perhaps in error, does not entitle even the same applicant to make a claim for subsequent registrations. Since then, the Office’s practice has altered considerably and new guidelines have been implemented. Furthermore, the Office strives to be consistent and always has regard to its previous registrations; however, each examination must be taken on its own merit and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence backing them. In addition, it is not part of the examination of the current trade mark to examine other trade marks that have previously been examined by the Office.

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).

6. The relevant consumers would easily distinguish the trade mark applied for from the marks of other undertakings.

The Office reiterates its responses to observations 1 and 2.

In addition, the applicant failed to submit any evidence to prove that the trade mark applied for possesses inherent distinctiveness that would immediately be perceived by the relevant public, as claimed in its observations.

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).

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 16 061 004 is hereby rejected for the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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.

Gordana TRIPKOVIC