Refusal of application for a European Union trade mark

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

Alicante, 06/06/2017

LARA GRANT

25 Malmesbury Terrace, Malmesbury Road

London, London E3 2EB

REINO UNIDO

Application No:	016104515
Your reference:	EU-038-16-INT
Trade mark:	ASSIST
Mark type:	Word mark
Applicant:	INTERAGRO (UK) LIMITED Thorley Wash Barn London Road Bishop's Stortford CM23 4AT REINO UNIDO

The Office raised an objection on 13/12/2016 pursuant to Article 7(1)(b) and (c) and 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 18/04/2017, within the extended deadline, which may be summarised as follows:

1. The mark is distinctive and not descriptive. The plant protection products in question are subject to regulatory approval. In view of their potential adverse effects, it is hard to see how the mark can be deemed to be directly descriptive. The word “ASSIST” is not a noun or verb used in the trade and will not be perceived as being descriptive by the relevant public. Normally, the word is associated with services. Also, any good or product may help or assist. The mark is not particular to the goods. Therefore, there is not an immediate and definite link within case-law.

2. Comparable marks have been registered by the Office.

3. The mark was registered by the UK Office.

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.

By prohibiting the registration as Community 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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

The mark consists exclusively of a descriptive word which conveys obvious and direct information regarding the intended purpose of the goods in question. It is clear that the professional consumer, regarding the mark in concreto, will immediately perceive the descriptive content. As previously stated:

“Taken as a whole, the word ASSIST immediately informs consumers, without further reflection, that the chemical products and preparations applied for are all used to give help, support or aid”. Whether that assistance lies in protecting plants in order to promote growth or some other beneficial aid, the mark is descriptive. It is not necessary for the mark to qualify the nature of the assistance which is purported in order to fall foul of Article 7(1)(c) EUTMR. A mark is no less descriptive for being broadly and generally descriptive. The fact that the word is descriptive across a broad spectrum of goods and services in trade does not render it distinctive. Furthermore, the fact that the products require regulatory approval is irrelevant to an assessment of descriptiveness from the point of view of the relevant consumer. That being said, the informed consumer of such chemical products is aware that it is the very ingredients that require regulation for safety purposes, which provide the desired assistance:

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).

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C‑104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

An English dictionary definition was supplied in support of the meaning of the mark. The mark makes perfect sense in context according to this primary, objective source of the English language as spoken and perceived.

In light of the fact that the mark is merely indicative of the intended purpose of the goods within the meaning of the Regulation, it is neither necessary nor appropriate to consider why an analogous mark has been registered:

..the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Furthermore, it is clear that the previous Office marks cited are mature marks which do not bear comparison, as practice evolves along with jurisprudence.

In any event: according to settled case‑law, ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Furthermore, ‘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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).”

The mark merely serves to provide information on the goods to the relevant public. The informed consumer, professional and otherwise, will have no difficulty deducing a sensible meaning in relation to the objectionable goods. Furthermore, the mark does not feature any additional element other than the message imparted, which could confer upon it the minimum degree of distinctiveness necessary for it to function as a badge of origin.

As the mark is descriptive, there is no need to analyse the separate and alternative objection raised under Article 7(1)(b) EUTMR.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Convergence and harmonisation does not extend to the registration of descriptive marks.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR, the application for Community trade mark No  1 610 4515 is hereby rejected.

Keeva DOHERTY