Refusal of application for a European Union trade mark

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

Alicante, 05/07/2017

PARTENAIRES PI SELARL (SOCIÉTÉ D'EXERCICE LIBÉRALE À RESPONSABILITÉ LIMITÉE)

2 rue du Général Delanne

F-92200 Neuilly Sur Seine

FRANCIA

Application No:	016397408
Your reference:	TRM2509789EU00
Trade mark:	FLIP
Mark type:	Word mark
Applicant:	YETI Coolers, LLC Suite 200 5301 Southwest Parkway Austin TEXAS 78735 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/03/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 05/05/2017, which may be summarised as follows:

1. The applicant does not contest the Office’s finding relative to the relevant public (that is the average consumer).

2. The applicant claims that the mark cannot be perceived as a laudatory indication since the term ‘Flip’ was no positive meaning in relation to goods for which registration is sought.

3. The term “flip” is not commonly used by professionals in business communication and in particular in advertising, which tends to confirm that the expression does not convey any promotional character.

4. The applicant argues that the mark is not descriptive. The term flip may refer to the functionality of a specific part of the goods (lid). The applicant wishes to register the mark for the containers and not their lids.

5. The Office failed to indicate why the mark is descriptive for each of the goods claimed. For instance, kitchens utensils have no lid and therefore the term FLIP cannot be perceived as descriptive for such goods.

6. The mark possesses the minimum distinctive character.

7. The Office has accepted in the past marks such as AROMA for kitchen utensils.

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.

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31). The relevant public would perceive the expression ‘FLIP’ as a promotional laudatory message, the function of which is to describe a characteristic of the goods. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that one operates the goods by flipping them open (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; and 12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34). The fact that the goods open with a lid which could be attached on not to the container is irrelevant to the present case. In fact, this functionality is the criterion for purchasing such goods.

For the sake of completeness however, the Office notes that indeed kitchen utensils can also have a flipping functionality and that containers are sold together with their lids and not separately (and that this functionality is a decisive factor of the consumer’s choice) as illustrated in the internet references below:

Source: https://www.fishpond.com.au/c/Kitchen/q/Egg+Flip+Utensil+Kitchen+Utensils , 04/07/2017

Source: https://www.amazon.com/Snapware-Airtight-Storage-Container-Plastic/dp/B019994XVY , 04/07/2017

The applicant argues that the term FLIP is not used in the advertising market and therefore cannot be perceived as laudatory. The marketing campaign of each company is irrelevant to the present proceedings. It is on the basis of its 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][holder] 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). The applicant failed to do so.

The applicant argues that the mark is not descriptive and that the Office failed to explain why it is descriptive for each of the objected goods. The Office reminds the applicant that it objected to the mark not because it is deceptive but not distinctive as is nothing about the expression ‘FLIP’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

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 strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. The examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions. Moreover, Office fails to see the relevance of the examples presented to present mark as they contain completely different verbal elements to the term FLIP.

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 16 397 408 is hereby rejected for all the goods claimed.

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.

Aliki SPANDAGOU