Refusal of application for a European Union trade mark

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

Alicante, 10/08/2017

HGF LIMITED

8th Floor,

140 London Wall

London EC2Y 5DN

REINO UNIDO

Application No:	016675902
Your reference:	T243351EP/SJL
Trade mark:	ACECARE
Mark type:	Word mark
Applicant:	Diversey, Inc. 8215 Forest Point Boulevard Charlotte North Carolina 28273 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/05/2017 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.

The applicant submitted its observations on 05/07/2017, which may be summarised as follows:

1. The word ‘ACE’ will first and foremost be understood by the relevant public as either ‘a specific playing card’, ‘a point won directly from serve in tennis’ or ‘a person highly skilled at something’. By contrast, the meaning put forward by the Office, ‘superb; excellent’, is less common and will not be associated or used to describe cleaning products. Furthermore, the goods at issue are non-living and are therefore unable to provide ‘CARE’, consequently this word is without meaning in relation to the goods. For these reasons no direct and specific link will be perceived between ‘ACECARE’ and goods in question, if anything, it would be perceived as allusive. Accordingly, the mark is not descriptive and will function as badge of commercial origin for the goods in question. The mark is unique and is not used by any other undertaking within the relevant field; subsequently there is no need to keep this expression free. The objection under Article 7(1)(c) should therefore be waived.

2. Only a minimum degree of distinctive character is necessary for a mark to be considered distinctive, this minimum degree is more than fulfilled considering the facts summarised in point 1. Therefore, the mark is obviously distinctive and the objection under Article 7(1)(b) (EUTMR) should also be waived.

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)(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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office acknowledges that ‘ACE’ has several different meanings, nevertheless, the fact remains that it also means ‘excellent’, as demonstrated in the L110 objection letter and pointed out by the applicant. The Office also agrees that cleaning products, in Class 3, are not alive and that they cannot provide ‘CARE’ in the same sense as a human being. However, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole, and always in relation to the goods or services in respect of which registration of the sign is sough (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). Consequently, as cleaning and disinfecting agents can be used to care for human skin, laundry, dishes and various other surfaces, by cleaning or cleansing them, the Office maintains that ‘ACECARE’ conveys a clear and understandable message in relation to the goods in question. It is therefore highly likely that the relevant consumer will perceive ‘ACECARE’, when encountered on a cleaning product, as an indication that it can be used to provide excellent care for the surface on which it is used.

In particular as, 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.)

Therefore, the Office maintains that, taken as a whole, the expression ‘ACECARE’ immediately informs consumers without further reflection that the goods applied for are cleaning/disinfectant agents that can be used to care for body, laundry, dishes and various other surfaces in an excellent way. Consequently, the mark conveys obvious and direct information regarding the quality of the goods in question. It follows that the link between the words ‘ACECARE’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

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).

Furthermore, as regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

2.

As the Office maintains that the mark is descriptive, it also maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. The relevant public would not perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned, namely that they provide excellent care. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

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 16 675 902 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.

Lars Paalgard SOYLAND