Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/02/2019

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	016707713
Your reference:	T122877CTM/FM
Trade mark:	LOVE TUBEROSE
Mark type:	Word mark
Applicant:	Amouage SAOC PO Box 307 Seeb CPO 111 OMÁN

The Office raised an objection on 23/08/2018 pursuant to Article 7(1)(b) 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 18/10/2018, which may be summarised as follows:

1. The applicant argues that the sign applied for is not a purely laudatory slogan. The applicant considers that the sign is an original conjunction of two common words, coined by the applicant, which cannot be categorised as ordinary and is unlikely to be perceived as purely laudatory.

2. When considering the mark under Article 7(1)(b) EUTMR, it is important to recall that the average consumer perceives the mark as a whole and does not proceed to analyse its various details. The applicant submits that the Office gives too much weight to the dictionary meanings of the terms composing the sign rather than focusing on overall impression created by the sign. Separate analysis of the component parts of the sign cannot ultimately constitute analysis of the suitability of the mark for registration.

3. The applicant is also arguing that the possibility that relevant consumer is aware of the meaning of the term ‘tuberose’ is very remote. Therefore, the applicant concludes that this term can render the sign distinctive as a whole.

4. As regards the word ‘love’, it can operate as a noun and as a verb denoting individual’s feeling of affection or desire for a subject or object as well as an object or individual’s relationship with a particular property. Considering that, the phrase ‘LOVE TUBEROSE’ is not grammatically correct and will not be immediately understood as a promotional message.

5. Further, the applicant states that in case the Office upholds that the sign in question is a promotional and laudatory slogan, the applicant submits that the phrase ‘LOVE TUBEROSE’ is not a familiar or common expression in connection to the goods or in the relevant trade nor is likely to be used as such in the future. Although the expression ‘LOVE TUBEROSE’ arguably alludes to people who may enjoy the fragrance associated it has a minimum degree of distinctive character.

6. The applicant indicates various similar trade marks registered by the Office for goods in Class 3: EUTM No 1 112 309 ‘LOVE YOUR HAIR’, EUTM No 2 494 060 ‘LOVE YOUR SKIN YOU’RE IN’, EUTM No 3 400 298 ‘LOVEHONEY’, EUTM No 8 602 633 ‘LOVE THE MAKEUP’, EUTM No 8 508 889 ‘LASH LOVE’.

Pursuant to Article 94 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.

For a trade mark to possess a distinctive character within the meaning of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the product or the supplier of the services. It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade origin and to conclude that all the products or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (10/10/2008, T‑387/06 - T‑390/06, Pallet, EU:T:2008:427, § 27).

As the General Court has held, 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). That is true, in particular, of signs commonly used to market the goods or services concerned. Such signs are in fact deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the origin of the product or service in question (08/11/2011, T‑157/08, Insulate for life, EU:T:2011:33, § 45 and case law cited).

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, ‘Quick’, §  29).

In the present case the applicant strongly argues that the Office gives too much weight to the individual assessment and dictionary meanings of the terms composing the sign rather than focusing on overall impression created by the sign. It must be pointed out that when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32). Following the above, in a sign composed of two verbal elements the Office must first identify the meaning of those elements and subsequently assess their combination, i.e. the mark as a whole.

Therefore, the Office has established that the word ‘LOVE’, contained in the sign, has the following meaning to like or enjoy something very much (information extracted from Macmillan dictionary on 22/08/2018), while the word ‘TUBEROSE’ indicates a Mexican plant with heavily scented white waxy flowers and a tuberous base. Unknown in the wild, it was formerly cultivated as a flavouring for chocolate; the flower oil is used in perfumery (information extracted from Oxford dictionary on 22/08/2018). Based on these meaning the Office concluded that the relevant English-speaking consumer would understand the sign as having the following meaning: to like very much tuberose (a Mexican plant with heavily scented white waxy flowers and a tuberous base used in perfumery).

On this regard it must also be mentioned 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). Considering that, the mere fact that the word ‘LOVE’ can be either a noun or a verb and have different connotations, is not decisive for the present assessment.

The applicant also pointed out that a possibility that the relevant English-speaking consumer in the European Union will be familiar with tuberose plant is very remote; however failed to support that statement with any evidence or further arguments. Contrarily, the Office maintains that, as indicated in the dictionary definition provided above, tuberose is used in perfumery and relevant consumers in the European Union are acquainted with it. This can be seen from the examples of internet search results provided below, which only supports the fact that tuberose is used in perfumery and relevant English-speaking consumers are aware of it.

https://www.glamourmagazine.co.uk/article/best-tuberose-perfume

Search carried out on: 07/02/2019

https://www.redonline.co.uk/beauty/10-best/g506313/best-tuberose-perfumes/

Search carried out on: 07/02/2019

https://www.huffingtonpost.co.uk/entry/tuberose-perfume-fragrances_uk_57ea8c1ae4b00e5804ef6a13

Search carried out on: 07/02/2019

Considering the above the Office maintains that the relevant public would simply perceive the sign an indication that the perfumes and cosmetic, body and hair preparations (such as soaps, preparations for the care of hair and skin, creams and lotions for the body and face) whose smell is a relevant characteristic, contain tuberose oil as one of the ingredients, and the consumer will fall in love with it/enjoy it very much once tried. The relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed.

Although the applicant argues that the combination of the elements ’LOVE’ and ‘TUBEROSE’ cannot be categorised as ordinary and is unlikely to be perceived as purely laudatory, the applicant fails to support this statement with any arguments. It is true that in case there is a perceptible difference between the combination of words and the mere sum of its parts, such combination could have a required degree of distinctive character. However, in the present case, in the Office’s view there is nothing about the mark applied for in relation to the goods in the application that might be considered unusual and might enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark. It must be recalled that the even the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84). However, such conclusion cannot be drawn in case of the sign ‘LOVE TUBEROSE’ applied for goods in Class 3.

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).

However, for the sake of completeness it must be noted that the European Union trade marks referred to by the applicant contain different verbal elements and therefore the overall impression created by them will not necessarily be the same as in case at hand.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 16 707 713 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Sandra KASPERIŪNAITĖ