Refusal of application for a European Union trade mark

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

Alicante, 22/08/2017

NOERR ALICANTE IP, S.L.

Avenida México 20

E-03008 Alicante

ESPAÑA

Application No:	016372501
Your reference:	ALC-0192-2017HAW/NIBO
Trade mark:	PLANTACTIVE VERIFIED
Mark type:	Figurative mark
Applicant:	OmniActive Health Technologies Limited 5th floor, Phoenix House, T-8, A Wing 462, S. B. Marg, Lower Parel Mumbai Maharashtra 400 013 LA INDIA

The Office raised a partial objection on 24/02/2017 pursuant to Article 7(1)(b), (c) and (g) 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, after an extended deadline, on 22/06/2017, which may be summarised as follows:

0. The mark is not descriptive. It is a composite sign consisting of a particular arrangement of verbal and figurative elements which are quite striking and placed at the beginning of the sign where the consumers’ attention is usually focused.

1. The sign applied for is distinctive, and the applicant submits an exhaustive list of marks containing ‘PLANT’, ‘ACTIVE’ or ‘VERIFIED’ (the word and/or a symbol meaning ‘verified’) and marks consisting of only the word element ‘ACTIVE’, all of which have previously been accepted by the Office (enclosure 1)

2. Furthermore, the figurative elements of the mark are not descriptive.

3. The sign applied for, taken as a whole, should not be considered descriptive.

4. In conclusion, the relevant public is professional only having a high degree of attention.

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 which underlies 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 a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Given that the mark has a clear descriptive meaning in relation to the goods and services 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. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office now replies to the applicant’s comments.

1. The mark is not descriptive. It is a composite sign consisting of a particular arrangement of verbal and figurative elements which are quite striking and will immediately attract the attention of consumers, as they are at the beginning of the sign.

The sign applied for, , is a composite mark made up of a word element of two joined words, ‘PLANTACTIVE’, depicted in standard green and grey letters, underlined by the word ‘VERIFIED’ depicted in a slightly smaller font. They are preceded by a figurative element of a broken circle containing a tick and with a leaf completing the circumference. The use of green, coupled with a leaf and a tick which echoes the meaning of the word ‘VERIFIED’, reinforces the already descriptive message conveyed by its main verbal element, ‘PLANTACTIVE’, namely that the goods are environmentally friendly, contain a proven active plant ingredient and have been verified as plant products containing active ingredients. These elements merely emphasise the nature of the goods, as similar elements are commonly used for environmentally friendly goods, including in this instance proven plant active ingredients, trusted and verified as plant products containing active ingredients.

Therefore, a figurative element that does not depict the goods and services but has a direct link with the characteristics of the goods and services will not render a sign distinctive, unless it is sufficiently stylised. Nevertheless, when a combination of such elements results in an overall impression that is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element, the mark can function as a badge of origin. Consumers usually focus their attention on the verbal elements of a mark and do not describe its figurative elements, which are minimal in this case.

2. The sign applied for is distinctive, and the applicant submits an exhaustive list of marks containing ‘PLANT’, ‘ACTIVE’ or ‘VERIFIED’ (the word and/or a symbol meaning ‘verified’) and marks consisting of only the word element ‘ACTIVE’, all of which have previously been accepted by the Office (enclosure 1).

Not all the trade marks having the word element ‘PLANT’, ‘ACTIVE’ and/or ‘VERIFIED’ in common with the mark applied for are comparable to it, as some contain different word elements from the present case and several of the marks are registered for different goods. Furthermore, even if all the earlier cases were comparable, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, §76 and case-law cited therein). Apart from the fact that registration practices develop over time, even bearing in mind that most of the EUTMs cited are recent, it is unfortunately inevitable that doubtful trade marks are sometimes registered. The observance of the principle of equal treatment must be reconciled with observance of the principle of legality (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Moreover, the previous registrations of the trade mark in other countries which are English-speaking but not Member States of the European Union are only relevant to a low degree inasmuch as the registration of trade marks in those States is governed by a system different from that of the European Union (26/03/2015, R 1639/2014, TRUEIR, § 37). The European Union trade mark regime is an autonomous legal system with its own objectives, which are peculiar to it; it applies independently of any national system.

Consequently, neither the EUIPO nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign registrable as a national trade mark (17/01/2013, T‑355/09, Walzer Traum, EU:T:2013:22, § 52 and the case-law cited therein). That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (29/03/2012, T‑242/11, 3D eXam, EU:T:2012:179, § 44).

The Office would like to draw the applicant’s attention to some trade mark applications that contained the word ‘PLANT’, or even the almost identical combination ‘PLANTACTIV’ accompanied by other non-distinctive or descriptive elements, and were rejected on absolute grounds because they described goods endowed with ‘natural, plant proved ingredients’, in particular for goods in Class 5 or similar (17/04/2015, R 2589/2014-4, ‘PLANTACTIV’; EUTMs No 15 868 185 ‘PLANTS ARE GOOD FOR YOU’, No 15 455 447 ‘PLANTWORLD’, No 12 616 009 ‘THE SCIENCE OF PLANTS’ (word), No 10 949 444 ‘MasterPlants’ (word), No 9 012 311 ‘ONE SEED, ONE PLANT’ (word), No 8 665 481 ‘PLANT’).

3. Furthermore, the figurative elements of the mark are not descriptive.

The elements of stylisation in the mark do not create a sufficiently striking impression to divert the consumer’s attention from the verbal elements, since they are minimal in their nature, and, overall, the choice of colours and the stylisation of the letters do not make the sign memorable, clearly recognisable and distinctive. As already observed in the objection letter of 24/02/2017, the use of a green leaf and a tick only reinforces the message conveyed by the elements ‘PLANTACTIVE VERIFIED’, which are considered quite common for the goods in question (see by analogy 25/01/2016, R 854-2015-5, BIOPLAST; 05/04/2016, R 2256/2015-2, DEVICE OF AN ENVELOPE WITH A CHECK SIGN (fig.), § 17).

The applicant has failed to prove that the mark’s graphic depiction, , which is minimal and ordinary, would be perceived as sufficiently distinctive by the relevant consumer.

Moreover, the sign also promotes the message that the goods are organic, even environmentally friendly, because the figurative element indicates that organic, ecological or environmentally friendly components are involved. The graphic depiction of the trade mark applied for would not allow the consumer to remember the sign. The font used is a standard font and does not enable consumers to distinguish the goods thus identified in terms of their origin. The public will not see the figurative component as anything more than a simple green leaf with a tick inside, which overall does not divert attention from the purely descriptive meaning of the word element ‘PLANTACTIVE VERIFIED’ (13/07/2011, T‑499/09, Purpur, EU:T:2011:367, § 36).

4. The sign applied for, taken as a whole, should not be considered descriptive.

The mark at issue does not create an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed in connection with these goods. The meaning of the sign is especially relevant in view of the nature of the goods in question, so when consumers see the sign, they will expect to be purchasing nutritional and dietary supplements consisting exclusively of verified plant extracts. Therefore, the sign assures the public of the goods’ quality and effect. Contrary to the applicant’s assertions, the expression in question conveys a clear and unequivocal message that does not require any interpretative effort on the part of the relevant consumers.

If the relevant consumers encountered the mark applied for on the goods at issue, they would immediately understand that the expression indicates that the plant extracts are true, natural ingredients contained in the products and have the desired effect. These are essential characteristics in the context of the consumer’s decision to purchase. In relation to the goods at issue, the trade mark applied for will be understood as describing them as made of plant extracts that are true, verified, natural and therefore effective components. They are both composed of natural ingredients and perform well, and these are desirable characteristics for consumers (see by analogy 15/05/2017, R 1915/2016-1, THE POWER OF PLANTS, §29-31).

5. In conclusion, the relevant public is professional only having a high degree of attention.

2. For goods in Class 5, mainly consisting of plant extracts used as ingredients for dietary preparations and nutritional supplements, given that they are mostly health-related, the relevant public (whether professionals or average consumers) should be regarded as likely to display a higher than average degree of attentiveness, even with regard to products that can be purchased without a prescription (10/12/2014, T‑605/11, BIOCERT, EU:T:2014:1050, § 20‑21; 08/07/2009 and the case-law cited therein; 12/07/2012, T‑346/09, Bañoftal, EU:T:2012:368, § 51; T‑230/07, ESTER-E, EU:T:2009:252, § 36 and the case-law cited therein).

However, even in relation to professionals, it must be held that the fact the relevant public also consists of specialists cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient even where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Therefore, in relation to all of the contested goods, the sign applied for, , is descriptive of the kind of the goods but also one of the qualities of the goods for which registration is sought, namely proven, verified, tested plant extracts used as ingredients or components of nutritional and dietary supplements.

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 16 372 501 is hereby rejected for the following goods claimed:

Class 5 Plant extracts used as an ingredient in or component part of nutritional and dietary supplements.

The application may proceed 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.

Gordana TRIPKOVIC