Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 27/10/2017

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	16 433 121
Your reference:	HAN3Z/T79514EM
Trade mark:
Mark type:	Figurative mark
Applicant:	Maidenform LLC 1000 East Hanes Mill Road Winston-Salem, North Carolina 27105 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 10/03/2017 pursuant to Article 7(1)(b) and (c) 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.

Upon request from the applicant, the Office extended the limit for submitting observations and for filing evidence of acquired distinctiveness through use till 05/09/2017.

The applicant submitted its observations together with material of evidence of acquired distinctiveness through use on 05/09/2017, which may be summarised as follows.

1. Descriptiveness

2. Distinctive character/stylization and use of colour

3. Similar marks registered by the Office

4. Acquired distinctiveness through use

Pursuant to Article 94 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.

1. Descriptiveness

General remarks

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 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).

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 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Applicant´s remarks

Moreover, the applicant contended that the relevant public is used to seeing both letters and numerals as everyday advertising and marketing and that the use of a stylised pink logo with the sign at issue would not be seen as indicating a symbol for ‘medium size’.

Moreover, the applicant contended that the sign is clearly used as a distinctive logo in relation to its products and promotional items, and that the sign would be seen as a trade mark acting as an indicator of origin rather than being a descriptive element.

Office´s comments

The Office still maintains its position that the sign at issue, seen in relation to the goods at issue – all kind of clothing articles and lingerie - gives obvious and direct information of the size of the objectionable goods. Moreover, the Office´s Guidelines on descriptiveness in relation to single letters

clearly and explicitly states the following in relation to the letters ‘S’, ‘M’, or ‘L’:

‘An objection might be justified also in respect of goods and/or services meant for a broader public. For example, the letters ‘S’, ‘M’ or ‘L’ for clothing would give rise to an objection as these letters are used to describe a particular size of clothing, namely as abbreviations for ‘Small’, ‘Medium’ or ‘Large’.’

Furthermore, from the submitted promotion, sales and other advertising material submitted, the Office has taken note that the logo/the letter ‘M’ rarely is used on its own, but rather used in unison with the applicant´s name/brand ‘Maidenform’ as a kind of emphasis of the first letter of ‘Maidenform’. This fact is also exemplified by the applicant drawing the attention to an earlier EUTM registration no. 13 053 301

2. Distinctive character/stylization and use of colour

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Applicant´s remarks

The applicant contended that the sign at issue is a stylised and coloured logo while it has been considered [by the Office] simply as an ordinary letter ‘M’ upon raising an objection.

The applicant emphasized that it is not seeking protection for the letter ‘M’ but seeking protection for its stylised and coloured logo, distinguishing their brand from other competitors and identifying the origin of its goods among its relevant public.

The applicant concluded that the sign at issue in its entirety can be regarded as distinctive and capable of identifying the origin of the applicant´s goods and services.

Office´s comments

The Office still respectfully maintains its position that the slight stylization of the single letter ‘M’ in pink is minimal in nature to be able to bestow the mark applied for as a whole with any distinctive character. Therefore, seen as a whole, the sign is devoid of any distinctive character and not capable of distinguishing the goods applied for from other goods on the market.

3. Similar marks registered by the Office

Applicant´s remarks

The applicant contended that at the time of the filing of the current sign, several similar marks, containing the letter ‘M’, were registered with the Office as follows:

EUTM no. DENOMINATION/REPRESENTATION

• 10 579 449

• 11 440 971

• 11 625 506

• 11 644 622

• 11 747 995

• 12 071 734

• 12 753 315

• 12 884 301

• 12 924 411

• 13 143 871

• 13 447 131

• 13 942 107

• 14 397 715

• 14 587 919

• 14 879 498

• 15 598 634

• 15 952 351

Office´s comments

Firstly, the Office would like to point out that in the case of

EUTM 12 753 315

the sign was found to be sufficiently stylish and distinctive. The same applies for

EUTM 12 924 411

• 15 952 351

where the signs also were found to have sufficiently distinctive character and not to be perceived at first sight as a letter.

Secondly, reference can be made to the following comparable EUTM

applications – in the sense that they all contain the verbal element

‘M’ and were applied for goods in Class 25 – which have been refused by the Office:

EUTMA no DENOMINATION/REPRESENTATION

• 15 027 469

• 9 503 236

• 8 641 359

Thirdly, as to 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 Unionjudicature, 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).

In addition, it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during this period. The Court of Justice is also aware of this market and practice evolution and has stated 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).

4. Acquired distinctiveness through use

General considerations

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The submitted evidence

In support of its contention, the applicant submitted the following material of evidence of acquired distinctiveness through use:

• Market share

• Use of the mark

• Geographical coverage

• Goods claimed

• Longstanding use

• Advertising and promotional acitivites

P

Preliminary remarks and assessment of the submitted material

In the present case, since the figurative mark at issue

contains the Latin letter ‘M’ (according to ISO EN 13402 used as a size designation of clothes in European standard for labelling clothes sizes), the applicant has to prove that the sign has acquired distinctiveness through use in all 28 Member States of the European Union.

The burden of proof lies with the applicant, which claims that the sign applied for has acquired distinctiveness.

The relevant time period for the evidence is prior to the EUTM application´s filing date, namely before 03/03/2017.

The Office has scrutinized the evidence and material submitted by the applicant. However, based on this evidence and information, it is impossible to establish that the mark has acquired distinctiveness in all the relevant EU Member States.

With reference to the applicant´s submitted Appendix 1 on market share, the figures given are total EU figures in US$ for the years 2009 till 2016 without breaking the figures down for the individual EU member states. Thus, it is not possible to ascertain for which EU member states or the proportion of number of EU member states where these sales figures are prevalent.

As to the applicant’s marketing and sale in the EU of its products, branded with the M logo, the applicant has informed that these activities are performed in the following EU member states:

Germany

The Netherlands

Spain

United Kingdom

Ireland

Denmark

Finland

Belgium

France

Sweden

Greece

Austria

Estonia

Poland

Czech Republic

In this context, the applicant contended that in view of the significant use of its mark in the above mentioned Member States, it should be possible for the office to extrapolate from the submitted information a broader conclusion that the position will be very similar in the EU countries in which the Applicant is unable to provide specific evidence of use. The lingerie market in the various EU Member States is likely to be extremely similar, given the nature of the products.

Firstly, the Office would like to comment that according to the applicant, the marketing and sale activities in the EU of its products, branded with the M logo

concern 15 EU member states, i.e. amounting to only about half of the total 28 number EU member states.

Secondly, - in line with the comments made above in relation to the market share or turnover/total EU sales figures - no information is given on the repartition of sales and marketing figures among the individual EU member states.

Thirdly, with reference to the Office´s Guidelines, the Office would like to point out that extrapolation is only possible where the following two conditions are met:

• The market is homogeneous (i.e. the area where acquired distinctiveness is proven and the area where evidence is extrapolated): market conditions and consumer habits have to be comparable.

Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share and, if possible, that of its main competitors, as well as its marketing expenses. The Office can only extrapolate the results from one territory to another if all the data is comparable.

• At least some evidence of use is submitted for the area where the evidence is extrapolated. Therefore, where the EUTM is used in the entire relevant territory but most of the evidence only refers to part of it, inference is possible if the circumstances are comparable and some evidence of use in another part/other parts of the relevant territory is submitted.

Referring to the applicant’s submitted Appendix 2 regarding the use of the mark in the US, it has to be highlighted that evidence from non-EU states is irrelevant, except insofar as it might enable conclusions to be drawn about use within the EU (judgment of 24/07/2014, T-273/12, Ab in den Urlaub, EU:T:2014:568, § 45).

The Office takes note of the fact that the applicant has only provided indication or evidence of acquired distinctiveness through use for appr. half of the total number of EU Member States. Consequently, the submitted material is not sufficient to prove acquired distinctiveness through use for a substantial number of the EU Member States.

Based on the above, it must be held that the evidence submitted by the applicant

• especially considering the descriptiveness of the mark in relation to the goods applied for, and,

• especially considering the failure to establish that the mark has acquired y distinctive character through use in a substantial part of the European Union where it was devoid of any such character under Article 7(1)(b) and Art. 7(2) EUTMR,

does not make it possible to establish that the mark applied for had acquired distinctive character in the European Union through us within the meaning of Art. 7(3) EUTMR at the time when the application for the registration was filed.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 433 121 is hereby rejected for the following goods:

Class 25 Clothing; headgear; bras; sports bras; brassieres; bandeaux; bustiers;

panties; bikinis; bloomers; boy shorts; cheekies; g-strings; hipsters; knickers; tangas; thongs; camisoles; camisettes; chemisettes; crop tops; lingerie; slips; tank-tops; teddies; tee-shirts; foundation garments; shapewear; all-in-ones; bodices; body briefers; body shapers; body shirts; body stockings; body suits; control briefs; corselets; corsets; garter belts; garters; girdles; halter tops; leg shapers; pant liners; petticoats; thigh shapers; thigh slimmers; torsettes; waistbands; waist belts; waist cinchers; waistnippers; bra accessories, namely, bra straps, bra clasps, bra liners, and adhesive bras; hosiery; knee highs; legwear; leggings; leg warmers; pantyhose; socks; stockings; tights; thigh highs; anklets; leotards; unitards; maillots; foot bands; toe covers; briefs; underclothes; underclothing; undergarments; underpants; undershirts; underwear; sleepwear; bath robes; loungewear; negligees; nightgowns; nighties; nightshirts; nightwear; pajamas; peignoirs; sleeping garments; sleep pants; sleep shirts; bathing suits; beach clothes; beachwear; swim dresses; swimsuits; swimwear; swim caps; coverups.

Class 26 Accessories for apparel and lingerie; bra accessories, namely, bra

enhancers, bra extenders, bra pads.

The application may proceed for the remaining goods and services, namely:

Class 25 Footwear; slippers.

Class 35 Retail services and on-line retail services connected with the sale of

clothing, footwear, headgear, bras, sports bras, brassieres, bandeaux, bustiers, panties, bikinis, bloomers, boy shorts, cheekies, g-strings, hipsters, knickers, tangas, thongs, camisoles, camisettes, chemisettes, crop tops, lingerie, slips, tank-tops, teddies, tee-shirts, foundation garments, shapewear, all-in-ones, bodices, body briefers, body shapers, body shirts, body stockings, body suits; retail services and on-line retail services connected with the sale of control briefs, corselets, corsets, garter belts, garters, girdles, halter tops, knickers, leg shapers, pant liners, petticoats, thigh shapers, thigh slimmers, torsettes, waistbands, waist belts, waist cinchers, waistnippers, bra accessories, namely, bra straps, bra clasps, bra enhancers, bra extenders, bra pads, bra liners, and adhesive bras, adhesives for bras, hosiery, knee highs, legwear, leggings, leg warmers, pantyhose; socks, stockings, tights, thigh highs, anklets, leotards, unitards, mailiots, foot bands, toe covers, briefs, underclothes, underclothing, undergarments, underpants, undershirts, underwear, sleepwear, bath robes, loungewear, negligees, nightgowns, nighties, nightshirts, nightwear, pajamas, peignoirs, sleeping garments, sleep pants, sleep shirts, bathing suits, beach clothes, beachwear, swim dresses, swimsuits, swimwear, swim caps, coverups, slippers.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Finn PEDERSEN