Refusal of application for a European Union trade mark

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

Alicante, 20/09/2017

INLEX IP EXPERTISE

Plaza San Cristobal, 14

E-03002 Alicante

ESPAÑA

Application No:	016513111
Your reference:	MA9163UE312829
Trade mark:	VARIS
Mark type:	Word mark
Applicant:	B. Creative Group, Inc. c/o Kerry Skarda, 1700 Union Ave, Ste. A Baltimore MD 21211 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 11/04/2017, 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. After an extension of time of two months, the applicant submitted its observations on 10/08/2017, which may be summarised as follows:

• The mark VARIS has the minimum degree of distinctive character. The mark, being the Lithuanian word for copper, is allusive but not descriptive in relation to the goods at issue. There is no direct and specific link between the mark and the goods.

• Copper is a metal and chemical which is not a commonly used material for hairdo and hairstyling appliances. Although some hair appliances may contain copper in the electric cord or as a component of the heating element, it is never a central component of those appliances. Furthermore, copper is unlikely to be used in the manufacture of the goods in the future given the very high cost and demand of this metal.

• The applicant points out the inconsistency of the objection as the Office has accepted the mark for “electric irons for rolling hair; electric and non-electric curling irons or electric hair-curlers, other than hand implements”.

• A Google search for the word combination “copper hair in Lithuanian”, i.e. “varis plaukai” only gave images of women with copper-coloured hair.

• The Office has accepted marks containing the corresponding English word “copper”, for instance, COPPERTOP, COPPER CHEF and COPPER MASTER.

3. 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: Electric hot brushes; hair brushes.

The objection is maintained for the remaining goods.

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.

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).

The Office cannot find other than that the mark VARIS is descriptive and devoid of any distinctive character in relation to the goods at issue.

As previous established the Lithuanian word “varis” means “copper”.

Contrary to the applicant’s assertion the goods at issue may very well be made of copper metal. See the following web sites:

https://www.amazon.com/TumbleWeed-Rollers-quality-copper-rollers/dp/B00EA65J2Y?th=1

TumbleWeed Rollers - High quality copper wire hair rollers

https://www.etsy.com/listing/248916866/copper-hair-barrette-hair-stick-shawl?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=hair%20stick%20barrette&ref=sr_gallery_13

Copper Hair barrette, Hair stick, Shawl pin, Hair slider, Hair clip, Scarf pin, Womens gift, Hammered solid copper,

…Material: Hammered Copper

http://www.bohemia-style.com/Large-Copper-Comb.html

Large Copper Comb

…A must have hygiene implement: this is the ultimate medicinal comb. Handmade from pure copper, it will help you control the most common scalp problems found today: dandruff, fungus, infections, irritations, dryness and itches.

These web sites are not Lithuanian but in English, however, they show that the goods in question may very well be made of copper.

The applicant is of the opinion that the objection is inconstant as the Office did not object to goods such as “electric irons for rolling hair; electric and non-electric curling irons or electric hair-curlers, other than hand implements”.

It is noted that most of the accepted goods are electrical in nature, and they may be copper-coloured, and contain copper metal, such as in the electric cord, but the whole products would not be made of copper, nor would a visible and prominent part of the goods be made of copper.

As shown above, the goods objected to, such as hair combs, hair pins and hair rollers can be manufactured from copper metal.

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).

Furthermore, the marks referred to are word combinations having other connotations than the now applied for mark.

4. 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 16 513 111 is hereby rejected for the following goods:

Class 21: Hair picks; combs.

Class 26: Hair pins; hair clips; electric and non-electric hair rollers; electric hair waving implements.

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

Enclosures: A copy of the Notice of grounds for refusal, and print-outs of the above cited web sites, 3 pages.