Refusal of application for a European Union trade mark

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

Alicante, 03/08/2017

BRISTOWS LLP

100 Victoria Embankment

London EC4Y 0DH

REINO UNIDO

Application No:	016510612
Your reference:	IGRU/JDZA/28482.nm
Trade mark:	THE SMART TEA POT
Mark type:	Word mark
Applicant:	Breville Pty Ltd Ground Floor, Suite 2, 170-180 Bourke Road Alexandria New South Wales 2015 AUSTRALIA

1. Summary of facts

The Office raised an objection on 10/04/2017 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.

2. Observations of the applicant

The applicant submitted its observations on 05/06/2017, which may be summarised as follows:

The mark ‘THE SMART TEA POT’ is not descriptive. The words ‘TEA POT’ would bring to the minds of the relevant consumers a traditional type of pot, with a handle and a spout to make tea in. Even though the design of tea pots may vary, all tea pots are expected to have spout and handle features and the primary purpose being the infusion of tea, i.e. combine tea in its various forms, bags and loose leaf with hot water to make a hot beverage. The majority of the goods applied for are not tea pots and therefore the mark cannot designate the kind or characteristics of the goods in question.

The word ‘SMART’ has various meanings, such as the intelligence of someone, the appearance of someone or something or something causing a sharp or stinging pain. In addition, the combination of the word ‘SMART’ and the idea of the humble tea pot is at the very least unconventional and unusual. As a minimum, the term ‘THE SMART TEA POT’ cannot inform the consumers of the nature of products which are not tea pots.

The descriptive character of a sign must be assessed separately for each category of goods covered by the application. In Class 11 ‘an electric kettle’ is not a tea pot but an electric device in which water is boiled, ‘an electric jug’ is a jug with a power source for holding liquids and ‘apparatus for instant hot water supply’ and ‘water heating apparatus’ are terms denoting apparatus which allows for an immediate flow or supply of hot water. A tea pot cannot be described as an apparatus as it is a standalone small hand held receptacle into which a small volume of hot water is placed for the purposes of brewing or infusing tea. Furthermore, the goods applied for in Class 21 are non-electric household containers or articles and the relevant consumer would not think of these goods as having any ‘smart’ functionality.

The Examiner has not presented any evidence that the expression ’(THE) SMART TEA POT’ is already in normal usage in relation to the goods at issue.

3. Decision

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 waive the objection for the following goods:

Class 21 Teapots; parts, fittings, components and accessories for the aforesaid goods.

The objection is maintained for the remaining goods.

Article 7 EUTMR, bearing the title “absolute grounds for refusal”, provides in material part that:

1. The following shall not be registered:

…

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, 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:

…

2. Paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community.

The signs referred to in Article 7(1)(c) EUTMR are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28).

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 applied for may be freely used by all. This provision, therefore, prevents such signs and indications from being reserved for one undertaking alone because they have been registered as trade marks (08/04/2003), C-53/01, C-54/01 & C-55/01, Linde, EU:C:2003:206, § 73)

According to settled case-law, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that is likely to perceived by potential consumers of the goods or services at issue. For a sign to fall under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question or one of their characteristics (03/02/2003- T-16/02, TDI, EU:T:2003:327, § 29). As regards the requirement of ‘sufficiently direct and specific link between the sign and the goods or services in question’, the Court has stressed in its judgment of 25/09/2015, T-591/14, PerfectRoast, EU:T:2015:700, § 25-26, that in order to be descriptive, it is not relevant that the goods concerned serve directly the activity concerned, but it may be enough that the goods are in sufficiently close relation to the activity concerned.

Contrary to what the applicant argues, the Office finds that the words ‘TEA POT’ would bring to the minds of the relevant consumer not only a traditional type of a tea pot but also modern and contemporary versions of tea pots. The mark consists of four readily identifiable English words ‘THE’, ‘SMART’, ‘TEA’ and ‘POT’.The expression does not diverge from the rules of English grammar but rather complies with them. The conjoining of the words in question simply produces a sign that is merely the sum of its parts and has the following meaning: the tea brewer that is capable of some independent action. As the mark needs to be assessed as a whole, the applicant’s argument that the word ‘SMART’ has many meanings is also neither relevant nor decisive. In addition, it must be borne in mind that smart technology is used in all kinds of goods, including household products, and the smart home industry is rapidly growing.

The Office agrees with the applicant that the descriptive character of a sign must be assessed separately for each category of goods covered by the application. In the present case, the goods applied for in Class 11 consist of electric devices which have the primary purpose of making tea, electric devices for water heating and parts, fittings, components and accessories for the goods in question. The relevant meaning is always the one that makes most sense, to the prospective consumer, in a given context, namely the mark itself and the nature of the goods. Therefore, taken as a whole, the mark ‘THE SMART TEA POT’ immediately informs consumers without further reflection that the goods applied for are devices and apparatus for tea making that exploit advanced technology. It is very unlikely that the relevant consumer, when seeing the mark applied for on the goods in Class 11, would not perceive also electric kettles, electric jugs, apparatus for instant hot water supply and water heating apparatus as important devices for tea making purposes as the meaning of the expression ‘THE SMART TEA POT’ is relevant in the context of these goods.

Furthermore, the Office would like to point out that the optimal water temperature is an important factor to consider when making tea. Water temperatures that are too hot dissolve tannins and destroy the other desirable compounds in tea. Thermal shock from overly hot water can also burn sensitive tea leaves. The result will be a bitter, astringent, and unbalanced brew. The primary rule to remember when heating water to brew tea is to never boil the water (information extracted from Tea Leaf Journal, on 02/08/2017 at http://www.tealeafjournal.com/water-temperature.html).

For the abovementioned reasons, the mark, taken as a whole, conveys obvious and direct information regarding the kind, intended purpose and other characteristics of the goods in question. The Office considers that from the point of view of the relevant public, there is a sufficiently direct and specific relationship between the expression ‘THE SMART TEA POT’ and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods, namely the kind and a smart technology feature of the goods in question.

As regards to the applicant’s argument that the Examiner has not presented evidence that the expression ’(THE) SMART TEA POT’ is used in relation to the goods at issue, the Office remarks that it has presented the dictionary meaning of the mark, taken as a whole, in relation to the goods applied for and that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings, designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added). This is clearly applicable to the present case.

Furthermore, 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 of refusal set out in that article (judgment of 27/02/2002, T-34/00, ‘Eurocool’, paragraph 39, and judgment of 27/09/2005, T-123/04, ‘Cargo Partner’, paragraph 45). However, the Court of Justice has recognised that the provisions of Article 7(1)(b) and 7(1)(c) EUTMR overlap to a large extent, and it is clear from the case-law of the General Court and the Court of Justice that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (judgment of 12/02/2004, C-363/99, ‘Koninklijke KPN Nederland’, paragraph 86). Given that the mark ‘THE SMART TEA POT’ has a clear descriptive meaning for the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature. Therefore, the mark is also devoid of any distinctive character with regard to the same goods within the meaning of Article 7(1)(b) EUTMR.

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 16 510 612 is hereby rejected for the following goods:

Class 11 Electric tea makers; electric tea warmers; electric tea kettles; tea making machines; electric jugs; electric kettles; apparatus for instant hot water supply; water heating apparatus; apparatus for filtering and brewing tea; electrically heated apparatus for infusing tea; tea makers;

parts, fittings, components and accessories for the aforesaid goods.

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.

Anne-Lee KRISTENSEN