Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 31/10/2017

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	16 915 522
Your reference:	T61932EU01
Trade mark:
Mark type:	Figurative mark
Applicant:	PRIVÉE AG KABUSHIKI KAISHA 10-1, Roppongi 6-chome, Minato-ku Tokyo JAPÓN

The Office raised a partial objection on 14/07/2017 pursuant to Article 7(1)(b) and (c) 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 14/09/2017, which may be summarised as follows.

1. Meanings of the word ‘Privée’

2. Descriptiveness and distinctive character

3. Similar marks registered in France and Benelux

4. Applicant´s mark registered with the UK national office/UKIPO

5. Similar marks registered with EUIPO/the Office

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.

1. Meanings of the word ‘Privée’

Applicant´s remarks

With reference to electronic dictionaries such as Collins Dictionary, Google Translate and Reverso Dictionary, the applicant contended that the word ‘Privée’ has several meanings such as:

• private (in English)

• privé de (in French) = deprived of

• individual, particulier (in French)

• ‘prive’ (in Spanish) meaning ‘deprive’ or ‘deprive of’.

and that the meanings can vary depending on the words attached.

Office´s comments

The Office has taken note of the applicant´s dictionary references to possible meanings of the word ‘privée’. The Office does agree with the applicant´s definitions of ‘privée’ meaning:

• private (in English)

• individual, particulier (in French)

As to the meaning

• privé de (in French) = deprived of

the Office is of the position that it is necessary to add an additional preposition, ‘de’ or ‘à’, apart from adding an object in order to reach a sensible meaning of ‘deprived of’. The sign at issue is ‘Privée’ and has to be assessed as such and not with a hypothetical or implicit addition of any subsequent preposition.

As to the meaning

‘prive’ (in Spanish) meaning ‘deprive’ or ‘deprive of’

the Office would like to point out that in Spanish ‘prive’ is not an adjective, but the subjunctive mood, expressing what is imagined or wished or possible, of the verb ‘privare’ and will require a subsequent preposition - such as ‘de’ or ‘a’ followed by an object - in order to reach a sensible meaning of the applicant´s meaning ‘deprive of’. This is also reflected in the examples of use of the word ‘prive’ in Spanish from Reverso Dictionary as given by the applicant. Again, the sign at issue which has to be assessed, is ‘Privée’ and nothing more.

Moreover, 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).

2. Descriptiveness and distinctive character

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.

‘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).

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Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Applicant´s remarks

The applicant contended that the word itself, ‘Privée’, can never be descriptive of the services. Moreover, the applicant contended that the word ‘Privée’ is elusive and not immediately capable of describing a quality of the services as it would require the relevant public to make a chain of thoughts.

Office´s comments

The Office still respectfully maintains its position that the sign ‘Privée’ is far from elusive bur rather straightforwardly describing a quality of the services at issue, namely that the financial services in Class 36, the car transport services in Class 39 and the hotel and food and drinks services in Class 43 are characterised by being private and individual targeted services for the relevant public.

Therefore, when the sign ‘Privée’ is used in connection with the contested services it would be reasonable to reason that the relevant public is likely to perceive the expression in a descriptive sense rather than as a badge of trade origin.

3. Similar marks registered in France and Benelux

Applicant´s remarks

The applicant contended that a number of similar trade mark, containing the word ‘Privée’ together with another word, have been registered with national offices in France and the Benelux and which illustrate the distinctiveness of the word ‘Privée’.

Office´s comments

As regards the national 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 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).

‘In addition references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

4. Applicant´s mark registered with the UK national office/UKIPO

Applicant´s remarks

The applicant contended that it had recently [on 28/09/2017] filed a similar trade mark with the UK Intellectual Property Office, including the same services.

Office´s comments

The Office again takes the opportunity to refer to the above-cited comments regarding the national decision referred to by the applicant, that 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 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).

5. Similar marks registered with the Office

Applicant´s remarks

The applicant contended that similar marks, containing the combination of ‘Privé’, ‘Privée’ or the English equivalent ‘Private’ together with another word, have been registered by the Office as follows:

EUTM no DENOMINATION

• 6 678 767 PRIVATE SPACE

• 9 271 354 Carré Privé

• 12 321 204 CLICK PRIVE

• 12 554 283 Pharmacie Privée

• 13 728 291 MY PRIVATE BATHROOM

• 15 559 024 Villa Privé

• 873 125 PRIVATE

• 997 916 PRIVATE

• WO1278535 COLLECTION PRIVEE

Office´s comments

Firstly, the Office would like to point out that in the case of EUTM no. - 12 321 204 - CLICK PRIVE – the sign was not found to be descriptive for the goods and services applied for, while in the case of EUTM 12 554 283 - Pharmacie Privée – the sign in question was partially rejected.

Secondly, 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).

Thirdly, reference can be made to the following EUTM application which was refused by the Office:

EUTM no DENOMINATION

• 11 375 615 COLLECTION PRIVEE

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 915 522 is hereby rejected for the following services:

Class 36 Financial analysis; financial, investment and real estate asset

management; financial consultancy; real estate investment trust

management services; real estate investment trust advisory services; real

estate investment trust services; providing information relating to

investment trust; buying and selling of securities; securities underwriting;

securities offering; brokerage services relating to securities subscription

or offering; real estate sales management services; real estate

investment services; providing advice relating to real estate investment;

real estate investment management; real estate management of rental

properties; management of buildings; agency services for the leasing or

rental of buildings; leasing or renting of buildings; purchase and sale of

buildings; agency services for the purchase or sale of buildings; real

estate appraisal; management of land; agency services for the leasing or

rental of land; leasing or renting of land; purchase and sale of land;

agency services for the purchase or sale of land; providing information on

buildings or land [real estate affairs]; antique appraisal; art appraisal;

appraisal of precious stones.

Class 39 Car transport; car parking.

Class 43 Hotel services; resort services; providing food and drink.

The application may proceed for the remaining goods and services, namely:

Class 7 Electric mixers for household purposes; electric crushers for

household purposes; electric grinders for household purposes; electric juicers for household purposes; electric pasta makers for household purposes; electric food processors for household purposes; electric wax-polishing machines for household purposes; electric whisks for household purposes; electric cleaning apparatus for household purposes; electric washing machines for household purposes; vacuum cleaners for household purposes; electric washing machines [laundry]; dishwashers; electric machines and apparatus for wax-polishing; vacuum cleaners; electric food blenders for household purposes; electrically operated brushes [parts of machines].

4 /

Class 9 Magnifying glasses [optics]; eyeglasses; telecommunication machines

and apparatus; cellular phones; parts and fittings for cellular phone; electronic machines, apparatus and their parts; computer; computer software.

Class 11 Tap-water filters for household purposes, non-electric; electric cooking

pots for household purposes; electric cooking stoves for household purposes; electrically heated carpets for household purposes; electric coffee makers for household purposes; electric radiant heaters for household purposes; electric toasters for household purposes; electric therm pots for household purposes; electric cooking ovens for household purposes; electric bread baking machines for household purposes; electric hot plates for household purposes; electric space cooling apparatus for household purposes; electric laundry dryers for household purposes; electric humidifiers for household purposes; electric air purifiers for household purposes; electric shoe dryers for household purposes; electric dehumidifiers for household purposes; electric fans for personal use; electric water ionizers for household purposes; electric futon dryers for household purposes; electric egg steamers for household purposes; electric water purifiers for household purposes; electric footwarmers for personal use; electric sleeping mattresses for household purposes; electric blankets for household purposes; electric refrigerators for household purposes; electric freezers for household purposes.

Class 16 Pastes and other adhesives for stationery or household purposes;

electric staplers for office use; etapling presses [non-electric staplers]; compact size paper shredders for office use; paper shredders for office use; paper and cardboard; paper for writing; stationery; office stationery; albums; cards; sketch books; pocket memorandum books; note books; writing pads; envelopes [stationery]; writing instruments; pencils; mechanical pencils; ball-point pens; marker pens; fountain pens; painting sets for artists; crayons; pastels; writing ink; rubber erasers; seals [stationery]; correcting tapes [office requisites]; stickers [stationery]; adhesive tapes [stationery]; printed matter; paintings and calligraphic works; pictures; calligraphic works; photographs.

Class 35 Business management analysis or business consultancy;

management consulting; auctioneering; auctioneering of pet auction; retail services or wholesale services for pets; business management business administration of hotels; real estate marketing analysis services.

Class 36 Mutual funds; mutual fund brokerage; mutual fund investment; mutual

fund advisory services; mutual fund analysis services; anagement of mutual funds; investment trust management; stock exchange quotations; agencies for trading of commodity futures; financial assessment of company credit.

Class 39 Packaging of goods; freight brokerage; cargo delivery services; cargo

handling; removal services; warehousing services; temporary storage of deliveries; rental of warehouse space; providing logistic center for collection, storage, picking and delivery and management of articles.

Class 41 Art exhibition services; providing museum facilities [presentation, exhibitions]; rental of artwork and pictures.

Class 43 Japanese inn services; restaurant services in hotel; restaurant services in Japanese inn; bar and restaurant services; providing exhibition facilities in hotels.

Class 44 Veterinary services; pet hospital services.

Class 45 Funeral services of pets; providing grave spaces or charnel houses for pets; management of grave spaces or charnel houses for pets; providing pet cemetery; providing facilities for funeral services of pets; rental of apparatus for funeral services of pets.

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.

Finn PEDERSEN