Refusal of application for a European Union trade mark

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

Alicante, 20/07/2017

WILLIAMS POWELL

Staple Court

11 Staple Inn Buildings

London WC1V 7QH

REINO UNIDO

Application No:	016509614
Your reference:	JR/NH/N34152
Trade mark:	NATURALLY CONFIDENT
Mark type:	Word mark
Applicant:	Mary Kay Inc. 16251 N. Dallas Parkway, Addison, Texas 75001 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/04/2017 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 05/06/2017, which may be summarised as follows:

1. The applicant disagrees that the mark ‘NATURALLY CONFIDENT’ is capable of describing or being used generically in relation to any characteristic of the goods.

2. The definition of the word ‘NATURALLY’ provided by the Office in its notice of 05/04/2017 is in fact no definition at all. It is pure tautology. The meaning of the word must be considered in its context.

3. The mark ‘NATURALLY CONFIDENT’ means ‘confident by nature’ or ‘born confident’. The meaning is ‘intrinsically confident’; without the need for external, confidence-boosting support of any kind. It follows that the mark ‘NATURALLY CONFIDENT’ has the meaning ‘intrinsically confident, without reliance on external factors’.

4. The word ‘NATURALLY’ has secondary meaning which creates play on words, which in turn adds further distinctiveness to the mark: the meaning that the ingredients of the goods are ‘natural’. However this meaning does not combine with the word ‘CONFIDENT’ to create a coherent descriptive meaning applicable to the goods, because ‘NATURAL’ may only describe the goods, whereas the word ‘CONFIDENT’ cannot describe the goods.

5. It is impossible for any product to impart to the consumer a trait of character which is intrinsic or natural to them. The term ‘NATURALLY CONFIDENT’ can only describe the consumer’s intrinsic state of being, regardless of external influences.

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)(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).

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.

‘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).

1. Regarding the applicant’s first argument, the Office did not claim that the mark is descriptive or used generically in relation to characteristics of the goods. The Office claimed, in its notice of 05/04/2017, that the mark is devoid of any distinctive character because it merely conveys information that the goods in question make will enable consumers to become ‘naturally confident’ (having confidence by nature). The Office maintains its opinion that the relevant consumers will not perceive the mark as a badge of commercial origin.

2. Regarding the applicant’s second argument, the Office agrees with the applicant that the word ‘NATURALLY’ has to be examined in the context. Furthermore the Office states that it examined the mark as a whole and came to the conclusion that the mark is devoid of any distinctive character.

3. As regards the applicant’s third argument, the Office states that the distinctive character of a trade mark has to be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. The Office interpreted the mark ‘NATURALLY CONFIDENT’ in relation to the goods applied for as the relevant consumers would do and came to the conclusion that the mark has a meaning ‘having confidence by nature’. The relevant consumers will perceive the mark as mere information that the use of the goods applied for in Class 3 will enable them to feel ‘naturally confident’ (in the meaning that the use of the goods give them the feeling which are having people that are born with confidence).

4. As regards the applicant’s fourth argument, the Office does not contest that the words contained in the mark can have more meanings than those provided by the Office. However the mark has to be refused registration if some of its possible meanings would be perceived by the relevant public as non-distinctive.

5. Regarding the applicant’s final argument, the Office reiterates its response to point 3.

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 16 509 614 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.

Klara BOUSKOVA