Refusal of application for a European Union trade mark

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

Alicante, 28/06/2017

Djessi De Almeida Jorge

47 Skipper Court Abbey Road

Barking Essex IG11 7GW

REINO UNIDO

Application No:	016459513
Your reference:
Trade mark:	CHARMOSO FASHION
Mark type:	Figurative mark
Applicant:	Djessi De Almeida Jorge 47 Skipper Court Abbey Road Barking Essex IG11 7GW REINO UNIDO

The Office raised an objection on 17/03/2017 pursuant to Article 7(1)(b) 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 23/03/2017, which may be summarised as follows:

1. The words are generic, although the combination of both renders the mark distinctive

2. The mark is not frequent in trade

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.

The words are generic, although the combination of both renders the mark distinctive

The applicant claims that the mark although it is made up from two generic words that describe goods in class 25, as a whole, the mark is distinctive. The applicant also argues that the combination of two languages, English and Portuguese is strange and this will endow distinctiveness to the mark.

The Office however does not believe that the combination of two words from different languages is something which will endow the mark with distinctiveness. The Office firmly believes that these words will be understood by the Portuguese public. Both words have a meaning in Portuguese, as it has been attested by virtue of dictionary references. Therefore the combination of both words will be taken to mean: Charming and according to the latest fashion. Therefore the claim that the mark is quirky and original because it is made up of two different languages has to be set aside, because in real fact both words are found in a Portuguese dictionary.

The mark is not frequent in trade

As regards the applicant’s argument that no other competitors make use of the same combination, ‘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 service 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).

Therefore the fact that the combination of the words is not used in practice is irrelevant in the case at hand. This fact does not affect the distinctiveness of the mark. The mark lacks distinctness notwithstanding the claim that the combination is not common in trade.

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 16 459 513 is hereby rejected for the following goods:

Class 25 Clothing; Footwear; Headgear.

The application may proceed for the remaining services.

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.

Alistair BUGEJA