Refusal of application for a European Union trade mark

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

Alicante, 31/05/2017

Dale Campbell

Inbrandgible Limited, Wisteria Grange Barn Pikes End,

Pinner London, City of HA5 2EX

REINO UNIDO

Application No:	016319402
Your reference:	DEc/3225
Trade mark:	BATH WATER drawn from organic land Natural Mendip Spring Bath Heritage
Mark type:	Figurative mark
Applicant:	Bath Heritage Limited 11 Forester Road Bathwick Bath and North East Somerset BA26QF REINO UNIDO

1. The Office raised an objection on 14/02/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

2. The applicant submitted its observations on 14/03/2017, which may be summarised as follows:

• A minimum degree of distinctive character is sufficient to render inapplicable the grounds for refusal set out in Article 7(1)(b) EUTMR.

• The applicant acknowledges that Bath is a city famous for its spa and hot springs but stresses that the words “Bath” and “Bath Water” also have other meanings (definitions from Collins English dictionary are given). The words are playfully ambiguous and consumers would not necessarily associate bottled drinking water as being a geographical indicator of water from the village of Bath.

• To a part of the English-speaking public, the words in the mark will be understood, but for the rest of the public, such as the Bulgarian-, Hungarian- and Latvian-speaking public, the mark has no meaning.

• Conceptually, the mark conjures up an association with bathing. Thermal waters are associated with healing properties when bathed in; they are usually not associated with drinking water. Thermal waters do not have a pleasant taste so the consumer would put some thought into the mark and see it as a clever play on words.

• There are many examples of waters that are named after places that are registered trade marks and therefore do act as signs of origin; examples are given of registered EUTMs such as HARROGATE SPRING WATER (fig.). The examiner´s decision is contrary to the law of “equal treatment”.

• The word mark BATH WATER (EUTM 4 190 997, expired) which is no different than the mark at hand, was allowed and registered for “water”.

• The average consumer would regard the mark in question as capable of performing the function of a trade mark. It is distinctive and highly memorable.

• There are many other brands containing place names that perform the function of a trade mark, examples are given, such as London Camera Exchange and Newbury Building Society.

• The applicant refers to the EUTMR and relevant case law to support its arguments.

3. 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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

The Office maintains that the mark as a whole is descriptive and non-distinctive.

Undeniably, both the word BATH and the expression BATH WATER have more than one meaning/connotation depending on the context. In this case however, taken into account the stylised image of the Royal Crescent in Bath, the reference to the Mendip Spring, as well as to the goods in question, the meaning that immediately comes into mind is drinkable water from the city of Bath.

No clever play on words can be detected. As a whole, the mark merely contains descriptive and non-distinctive words that are relevant to the goods in question.

As already referred to in the objection letter, the figurative elements are merely decorative (in particular the colors used), typical of those of a label that often appears on bottles and cans (in particular the oval shape). The stylized figurative element of the Royal Crescent, which is one of the major tourist attractions in Bath, is an obvious reference to the city of Bath.

Even if the mark contains a variety of words and figurative elements, there is not one single of them that can be considered sufficiently distinctive in order to distract consumers from the descriptive/non-distinctive message of the words. Not one of the words or figurative elements can easily be perceived as a trade mark feature or an indication of the commercial origin of the goods. Consequently, the mark when viewed as a whole is devoid of distinctive character.

Please note that the relevant public is exclusively the English-speaking consumer in the Union. How a Bulgarian- or Hungarian-speaking consumer perceives the mark is irrelevant. An English-speaking consumer, especially a consumer in the UK, will immediately perceive the mark as a label for mineral water and similar drinks originating from Bath. Who the producer of the drinks is remains unclear.

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).

The Office has also refused a number of figurative marks for water products, see a couple of examples below:

13 069 571 - ALPS Italian Pure Mineral Water

12 778 701 - HARROGATE SPRING WATER

The word mark BATH WATER (EUTM 4 190 997) was filed over a decade ago when the Office´s trade mark practice may have differed. In any case, the figurative mark at hand, due to its additional words and features, is a clear reference to spring water from Bath while the words BATH WATER alone may be considered more ambiguous.

It is not disputed that brands containing names of places can perform the function of a trade mark. However, since Bath is famous for its thermal and mineral rich waters, some additional distinctive word or figurative element would have to be added to the sign in order for it be perceived as a distinctive trade mark.

As already mentioned, in the absence of an additional distinctive word or figurative element, there is nothing in the mark that might enable the relevant public to easily perceive the mark as indicator of commercial origin.

4. 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 16 319 402 is hereby rejected for the following goods:

Class 32: Mineral and aerated waters and other non-alcoholic beverages; flavoured carbonated beverages; flavoured water; water; spring water; soft drinks.

The application may proceed for the remaining goods, namely for “fruit beverages

and fruit juices; syrups and other preparations for making beverages”.

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.

Cecilia ALIN