Refusal of application for a European Union trade mark

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

Alicante, 31/08/2017

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	016799017
Your reference:	EW35842MKJRkml
Trade mark:	BLACK MINT
Mark type:	Word mark
Applicant:	WM. WRIGLEY JR. COMPANY 1132 W. Blackhawk Street Chicago, Illinois 60642 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/06/2017 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 22/08/2017, which may be summarised as follows:

1. The Office based its objections in one single internet source;

2. Apparently the internet source stated by the Office is directed at a US public.

3. As such, the Office did not provide any persuasive evidence demonstrating a descriptive meaning of the sign.

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).

The applicant submits that the appraisal of the sign ‘Black Mint’ by the Office was in any way erroneous. The applicant states that the Office fails to provide credible reasoning and evidence for its view that the mark is descriptive and devoid of distinctive character. In particular, it is argued that the data quoted by the Office from the internet, and on which the objections to the mark ‘BLACK MINT’ are solely based, is not relevant as they are found on American websites. This is relied upon by the applicant to support its assertion that the term ‘BLACK MINT’ is not descriptive and commonly known. The applicant cannot rely on this argument.

Regarding the source of the evidence, it is not of much significance that it originate from a website outside of the Member States, as long as they are English-speaking jurisdictions, as despite possible spelling variations, because there is only one English language (Decision of the Board of Appeal of 5 July 1998 in Case R 179/1998-1 – ASCOT, at paragraph 17). In respect of the applicant’s criticism of the internet citation provided by the Office, it is true that the use of the words is not great; nevertheless, the example indicated that the words ‘BLACK MINT’, whether placed together or not, is used in a relevant way.

Adding to this, as the applicant can also see that the sign ‘BLACK MINT’ is used in the market regarding the goods for which protection is sought: ‘XyLicube’ (information extracted from https://global.rakuten.com/en/store/wellness-web/item/10089890 on 31/08/2017); ‘Mentos Gum Breeze – Black Mint’ (information extracted from http://www.mentos.be/fr/mentos-gum-breeze-black-mint-pack on 31/08/2017).

Anyway, taken as a whole, the words ‘BLACK MINT’ just inform consumers without further reflection that the goods applied for are confectionery, chewing gum, bubble gum, candy, mints, drops and lozenges that are black mint flavoured or black coloured and mint flavoured.

Finally, according to the case-law of the European courts, a word mark that 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 (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

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 16 799 017 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.

Peter SCHYDLOWSKI