Refusal of application for a European Union trade mark

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

Alicante, 27/06/2017

BERGGREN OY

Eteläinen Rautatiekatu 10 A

FI-00100 Helsinki

FINLANDIA

Application No:	016377913
Your reference:	BV216340
Trade mark:	A+
Mark type:	Figurative mark
Applicant:	Valio Ltd Meijeritie 6 FI-00370 Helsinki FINLANDIA

The Office raised an objection on 01/03/2017 pursuant to Article 7(1)(b) 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.

The applicant submitted its observations on 28/04/2017 (dated 27/04/2017), which may be summarised as follows:

1. The applicant requests a limitation of the list of goods and services.

The applicant limits the list of goods by deleting class 5 from the application, namely, the following goods:

Class 5 Dietetic substances adapted for medical use; food for babies, dietary and nutritional supplements, lactose, lactic acid bacteria, lactobacillus, protein dietary supplements.

2. Relevant consumers do not perceive the figurative mark “A+” as referring to A+ blood type in connection with the goods applied for in classes 29 and 30.

According to the objection letter, the mark “A+” would “immediately inform the consumer that these goods are appropriate for the A+ blood type” and that “when viewing the mark in connection with the goods in Classes 29 and 30, the relevant public will simply perceive the mark as pointing out the essential characteristic of the goods, namely, that they are suitable for the A+ blood type”.

However, this kind of interpretation is clearly very far-fetched and way beyond the market reality and would require several mental steps for the consumers to conclude that the goods in question are meant or suitable for a specific blood type group.

Firstly, marketing foodstuff in Class 29, such as preserved fruits and vegetables, jellies, milk products, edible oils etc., and in Class 30, such as coffee, ice creams, vinegar, sauces, spices etc., as being “suitable for the A+ blood type” or suitable for any specific blood type in general, is not in any way normal or common mean to describe non-medical foodstuff which consumers purchase on daily basis.

Furthermore, there is no indication, whatsoever, that food producers would have any incentive in the future to start marketing or describing their goods with this kind of designation.

Secondly, even if there is a very marginal group of consumers, who are familiar or even follow the specific diet, in which they choose their food depending on their individual blood type, not even this group of consumers would expect that the mark “A+” has a descriptive meaning. It is simply not reasonable to assume that, immediately, upon seeing the sign “A+”, that the goods in question sold under this mark are automatically suitable or recommended for consumers with the specific A positive (A+) blood type, because these kind of indications referring to blood types of consumers simply do not exist in the market sector of foodstuff.

Thirdly, “The Blood Type Diet” is not scientifically proved to have any impact on consumers’ health, neither is it approved by any official health institutions. The applicant has attached three different references to medical research papers published in recognized medical journals and publications (see attachments 1-3). As a result, it is very unlikely that the general public would perceive the applicant’s mark A+ as conveying obvious and direct information regarding the essential characteristic of the goods and its alleged health impacts, namely, that they are meant for people with A+ blood type. The diet has not become part of consumers’ general knowledge, neither is there any probabilities that the diet would even become widely spread amongst the general public in the meaning of “likely to be known by anyone” due to the lack of scientific evidence on its benefits.

The Office has stated in its objection letter that the mark “A+” points out an essential characteristic of the goods. However, A positive (A+) is a blood type of a natural person and the goods per se do not have any blood type. It requires a further mental step to interpret that the sign, when used in connection with the goods, would refer to a biological characteristic of the consumers. Moreover, EUIPO has not provided any evidence that such marks referring to blood types (A, AB, B, O; positive/negative, +/-) are used in the relevant market sector, namely, marketing, packaging or labelling of foodstuff (goods in Class 29 and 30).

3. EUIPO has already registered almost identical figurative marks containing the element A+ for the same applicant’s same goods

The applicant points out that they are already the owners of very similar prior A+ device mark EUTM registrations (see below), namely, EUIPO has previously accepted to register almost identical figurative marks for the same goods in Classes 29 and 30 without ever requesting the applicant to submit evidence on acquired distinctiveness (Article 7(3) EUTMR):

• EUTM No. 8694788, A+, registered on 23/06/2010 and

• EUTM No. 4346003, A+, registered on 12/05/2006 (registration expired due to absence of renewal).

The Board of Appeal of EUIPO has confirmed in its decision of 03/07/2014, R 2317/2013-2, paragraph 20, that even though the earlier registrations cannot be given a decisive significance, the earlier registrations, however, should be taken into consideration when assessing the registrability of a later application. The Office has to aim at consistency in its decisions.

Even though the case-law has evolved, the Office has not mentioned any reasons or examples, why this trademark has now become non-distinctive

Moreover, it is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article.

Finally, the applicant wishes to emphasize, that they have used the “A” device mark for their foodstuff, particularly for milk products, in Finland, ever since 1982, when they first registered their “A” trademark in Finland. The A+ (device) trademark applied for is only a minor variation of Valio Ltd’s A+ sign which has been used in good faith for Valio’s goods over 3 decades.

• Finnish trademark registrations of the applicant:

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 the limitation of the list of goods and after giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection for the following goods, namely for:

Class 29 Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk products including yogurt, curd, creams, sour creams, whipped creams, milk drinks, milk-based beverages containing mainly milk, sour milks, milk puddings, milk shakes, soya milk (milk substitute), protein milk, flavored milk, drinks containing lactobacillus, kephir, koumiss; whey; cottage cheese, cheese, cheese products; milk powder, dried whey products and whey powders; edible oils and fats; butter, margarine; soups, milk and cream based sauces, milk and cream based dips; fruit juice for cooking.

Class 30 Coffee, cocoa, tapioca, sago, artificial coffee; ice creams; vinegar, sauces; spices; ice; cereal snacks, high-protein cereal bars.

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 applicant argues that the use of blood types “is not in any way normal or common mean to describe non-medical foodstuff which consumers purchase on daily basis” and/or “these kind of indications referring to blood types of consumers simply do not exist in the market sector of foodstuff”.

This argument is not relevant or decisive. ‘The distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88). Furthermore, it is not relevant if there is no indication at the moment that the food producers would have any incentive to start marketing or describing their goods with this kind of designation.

The applicant argues and provides evidence that “The Blood Type Diet is not scientifically proved to have any impact on consumers’ health, neither is it approved by any official health institutions”.

Even if this is the case, it still seems that the said diet is very popular around the world and many people follow it. Therefore, it is not necessary that the goods in question are inherently related or associated with any scientifically proven impact on consumers’ health depending on the blood type of the person. What is relevant is that in the consumer’s perception the goods may function as such. The fact that all of the contested goods might be seen by part of the relevant consumers as being empowered with this particularity is something which has a commercial value and might be taken into account by consumers when the purchase of these goods is to be carried out (by analogy with 30/09/2015, R 3142/2014-4, TALISMAN, § 21).

Consequently, it is concluded that a relationship between the sign ‘A+’ and the characteristics of the contested goods can be established so that the consumer might see this sign, without a further mental step, as describing a relevant characteristic of the goods in question, namely, that these goods are appropriate for the A+ blood type.

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).

The Office therefore confirms its viewpoint that the mark applied for lacks the minimum degree of distinctive character to be perceived by the relevant public as a trade mark in relation to the contested goods at issue.

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, regarding the earlier registrations accepted by the EUIPO, it must be stated that they are more stylised (inclined letter ‘A’ and the plus sign is slightly lower and joined to the letter).

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 377 913 is hereby rejected for the following goods:

Class 29 Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk and milk products including yogurt, curd, creams, sour creams, whipped creams, milk drinks, milk-based beverages containing mainly milk, sour milks, milk puddings, milk shakes, soya milk (milk substitute), protein milk, flavored milk, drinks containing lactobacillus, kephir, koumiss; whey; cottage cheese, cheese, cheese products; milk powder, dried whey products and whey powders; edible oils and fats; butter, margarine; soups, milk and cream based sauces, milk and cream based dips; fruit juice for cooking.

Class 30 Coffee, cocoa, tapioca, sago, artificial coffee; ice creams; vinegar, sauces; spices; ice; cereal snacks, high-protein cereal bars.

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.

Andrew CARTER