Refusal of application for a European Union trade mark

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

Alicante, 25/09/2017

NOERR ALICANTE IP, S.L.

Avenida México 20

E-03008 Alicante

ESPAÑA

Application No:	16 682 924
Your reference:	ALC-0424-2017HAW/KAY
Trade mark:	BLACK FOREST SO JUICY. SO GOOD.
Mark type:	Word mark
Applicant:	Ferrara Candy Company One Tower Lane, Suite 2700 Oakbrook Terrace Illinois 60181 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/05/2017 pursuant to Article 7(1)(b) EUTMR 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 13/07/2017, which may be summarised as follows:

1. Background of the applicant

2. Descriptiveness

3. Distinctiveness

4. Reference to EU case law (16/11/2015, Joined cases T-381/13 and T-382/13, ‘DAISY/ MARGARITAS’, ECLI:EU:T:2015:983)

5. Similar marks registered by the Office

6. Similar marks registered by national/international offices

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.

1. Background of the applicant

Applicant´s remarks

The applicant, Ferrara Candy Company, informed that it is a candy manufacturer among the top 100 candy companies with headquarters in the US and operating world-wide. One of its brands is called BLACK FOREST Organic which has been certified as organic by the US Department of Agriculture.

Office´s remarks

The Office has taken note of the applicant´s background, position and activities.

2. Descriptiveness

General remarks

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).

Applicant´s remarks

As to the constituent verbal elements ‘BLACK FOREST’ of the sign, the applicant contended that there is no reason that these elements – seen individually or as a composite term – should be deemed descriptive in relation to the objectionable goods or any of their characteristics. In that context, the applicant contended that the term ‘BLACK FOREST, inter alia, can mean ‘dark woods’ and therefore, the term is distinctive in relation to the goods at issue.

Office´s comments

The Office has taken note of the applicant´s contention that the term ‘BLACK FOREST’ can also mean ‘dark forest’.

However, 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).

Applicant´s remarks

Moreover, the applicant contended that the examiner only referred to the significance of the term ‘BLACK FOREST’ in relation to cakes which are not the goods at issue.

Office´s comments

The Office would like to highlight that the term ‘BLACK FOREST’ and the sign as a whole ‘BLACK FOREST SO JUICY. SO GOOD.’ has been assessed in relation to the goods applied for in Class 29 and 30, and not in relation to cakes as contended by the applicant. Therefore, the Office takes the opportunity to cite from its notice of grounds for refusal of 16/05/2017 regarding the alleged descriptiveness of the sign that: ‘…………..the words ‘BLACK FOREST SO JUICY. SO GOOD.’ immediately inform consumers without further reflection that the goods are very pleasant fruit-based snack food with the black forest flavour [chocolate and dark cherries] or highly enjoyable candy with the taste or the flavour of the black forest theme.’

Applicant´s remarks

With point of departure that the sign ‘BLACK FOREST SO JUICY. SO GOOD.’

is refused for the goods fruit-based snack food in Class 29 and candy in Class 30, the applicant contended that neither of the individual components, nor the combination of the components of the sign at issue designate the goods claimed for or any of their characteristics.

The applicant contended that the examiner´s definition of ‘BLACK FOREST’:

‘Black Forest cake, or Schwarzwälder Kirschtorte, is a combination of

a thin chocolate shortcrust base, chocolate sponge cake, sour cherries, generous amounts of kirschwasser (cherry brandy), freshly whipped cream, and dark chocolate shavings………… Today, the Black Forest theme is used generally by the food industry to denote the combination of chocolate and dark cherries, omitting any link to

cake and brandy.’

is incorrect and arbitrary for the following reasons:

• the link is not freely accessible and the full extract from the cited culinary book was not attached the reason for which it should be disregarded as insufficient and irrelevant,

• the reference to the culinary book in question is insufficient beause it is not a well-known or influential publication in the food sector,

• there is no such thing as a ‘BLACK FOREST’ flavour on the confectionery and sweets market and ‘BLACK FOREST’ per se does not have any specific meaning in relation to food in general, in particular to snack food and candy.

Office´s comments

The Office regrets the lack of free access to the link cited by the examiner in relation to the definition of ‘BLACK FOREST’ and that the text was not quoted in its entirety in the Office´s notice of ground for refusal. Therefore, the front page of the cited culinary book ‘The Oxford Companion to SUGAR AND SWEETS’ together with the whole text section in relation to ‘BLACK FOREST’ is reproduced below:

The Oxford Companion to Sugar and Sweets

The Office respectfully disputes the applicant´s statement that the above-cited culinary book, ‘The Oxford Companion to SUGAR AND SWEETS’, should neither be well-known, nor have any influence in the food sector field.

Moreover, the Office maintains its position in accordance with the definition given in the Office´s notice of grounds for refusal that the theme ‘Black Forest’ is used generally by the food industry, including the confectionery and sweets market, which can also be confirmed by the following internet results of 25/09/2017:

https://www.cadbury.co.nz/product/cadbury-dairy-milk-black-forest/

.

https://groceries.asda.com/product/fruit-jelly-pots/hartleys-10-cal-black-forest-gateau-flavour-jelly/910003262193

On this background, the Office respectfully disagrees with the applicant that the verbal elements ‘BLACK FOREST’ as such do not have a descriptive meaning in relation to food, in particular to the objectionable snack foods in Class 29 and candy in Class 30.

Therefore, the Office maintains the position that the individual components of the sign ‘BLACK FOREST SO JUICY. SO GOOD.’ and the combination of its components seen as a whole describes a characteristic of the goods claimed for, namely a flavour theme, followed by a laudatory exclamation.

3. Distinctiveness

General remarks

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Applicant´s remarks

The applicant contended that since the sign ‘BLACK FOREST SO JUICY. SO GOOD.’ does not have a clear descriptive meaning in relation to the goods at issue, it cannot be rejected as devoid of distinctive character on the basis of Art. 7(1)(b) EUTMR. Moreover, the applicant contended that the individual elements and their arrangement are endowed with distinctive character, and that the mark as a whole is distinctive enough to indicate a commercial origin.

As to the verbal elements ‘SO JUICY. SO GOOD.’, the applicant contended that these may be seen as a promotional formula or a slogan. However, the applicant moreover contended that an advertising slogan can be perceived both as a promotional formula and as an indication of commercial origin of the relevant goods.

Office´s comments

The Office is still of the position that the sign ‘BLACK FOREST SO JUICY. SO GOOD.’ is composed of generic words that inform the public of a characteristic and/or quality of the goods, including - as pointed out by the applicant – a promotional formula - leading to the conclusion that the sign is devoid of distinctive character.

In order for an advertising slogan to be distinctive it has to be seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:

• constitutes a play on words and/or

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or

• has some particular originality or resonance and/or

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

None of these requirements are met with the current sign. Therefore, the Office finds that the sign primarily will be found descriptive by the relevant public, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, the Office finds the mark applied for ‘BLACK FOREST SO JUICY. SO GOOD.’ – taken as a whole – devoid of any distinctive character and therefore not capable of distinguishing the goods for which registration is sought within the meaning of Art. 7 (1)(b) EUTMR and Art. 782) EUTMR.

4. Reference to EU case law (16/11/2015, Joined cases T-381/13 and T-382/13, ‘DAISY/ MARGARITAS’, ECLI:EU:T:2015:983)

The applicant´s remarks

With reference to the above-cited European Union case-law, the applicant contended that there is no real reason and no proof that the relevant public would perceive the term ‘BLACK FOREST’ as a possible taste or flavour of snack food and candy. Moreover, the applicant contended that it cannot be inferred that the term ‘BLACK FOREST’ is the generic definition of a flavour or that it is customarily used in the snack food and candy industry to describe characteristic of those products.

Office´s comments

Firstly, the Office has taken note of the EU case-law referred to by the applicant (16/11/2015, Joined cases T-381/13 and T-382/13, ‘DAISY/ MARGARITAS’, ECLI:EU:T:2015:983). However, the Office does not find the case-law cited - in casu for the marks ‘DAISY’ and ‘MARGARITAS’ - comparable to the current case with the sign BLACK FOREST SO JUICY. SO GOOD.

In the afore-mentioned EU case-law it was concluded that in respect of the shape or form¹ of the goods at issue, there was no sufficient evidence that a substantial part of the relevant public had been accustomed to a standardized form in the shape of the flower sort ‘daisy’ or the equivalent Spanish name in plural, ‘margaritas’, in relation to the goods at issue. in Class 30 (sweets, candy, chocolate, etc.)

In the current case the sign ‘BLACK FOREST SO JUICY. SO GOOD.’ has been objected to in relation to the descriptive character of the flavour or the taste of the goods at issue in Class 29 and 31, namely that they are fruit-based snacks and candy, characterized or having the quality of being flavoured with the black forest theme, denoting chocolate and cherries as a taste.²

5. Similar marks registered by the Office

Applicant´s remarks

The applicant contended that there are several marks, containing either the word ‘JUICY’, ‘GOOD’ or by analogy ‘TASTY’, which are registered by the Office as follows:

REGISTRATION NO DENOMINATION

• 8 838 567 Juicy Energy.

• 8 537 581

• 1 315 217 I FEEL GOOD

• 2 653 020 FRUITGOOD

• 3 170 396 GOOD COMPANY

• 3 547 361 SO! GOOD

• 5 007 786 GOOD FOOD FOR THE FUN OF IT!

• 5 101 621

• 5 250 113 FEEL GOOD DRINKS

• 5 817 291 SuperValu Goodness

• 6 234 488 FEEL GOOD SNACKS

• 6 270 854

• 6 930 655

• 8 643 801 GOOD TO GO

• 8 758 732 GOODIES

• 9 698 705

• 12 327 839 GOODNESS

• 12 588 521 farmgoodies

• 13 789 458 COMMON GOOD

• 13 881 032 Good Littl

• 9 882 572 Magic tasty

• 9 977 001 Tasty Cup

• 13 110 135 Tasty Time

• 15 594 708

Moreover, the applicant has a similar - figurative mark - EUTM no 14 485 387 –

registered with the Office.

Office´s comments

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).

In addition it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during this period. The

Court of Justice is also aware of this market and practice evolution and have

stated 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).

6. Similar marks registered by national/International offices

Applicant´s remarks

The applicant contended that there are several marks, containing the verbal elements ‘BLACK FOREST’, which are registered by national offices in the US, Canada, Australia and New Zealand. Moreover, the applicant referred to the international registration with WIPO no. IR 992252 – GOODBITE.

Office´s comments

As regards the national/international decisions referred to by the applicant, according to case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national or international system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 16 682 924  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.

Finn PEDERSEN