Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 07/11/2017

MAYER BROWN LLP

Friedrich-Ebert-Anlage 35-37

D-60327 Frankfurt am Main

ALEMANIA

Application No:	016921116
Your reference:	CHEFG12002
Trade mark:	CHEFS CLUB
Mark type:	Word mark
Applicant:	Chefs Club U.S.A., Inc. 96 Spring Street, 6th Floor New York, New York 10012 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 14/07/2017 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 13/09/2017, which may be summarised as follows:

1. The word combination ‘CHEFS CLUB’ does have the minimum level of distinctiveness required in order to function as a trade mark.

2. According to the dictionary quotations the words ‘CHEFS’ and ‘CLUB’ have several meanings. Therefore the expression does not describe the goods directly. There is no sufficiently direct and specific relationship between the mark and goods in question.

3. The expression does not lack distinctive character; the sign is allusive at best.

4. The Office has previously registered several marks following the same word construction.

5. The mark was registered by USPTO.

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.

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).

In the present case the sign for which protection is sought, ‘CHEFS CLUB’, would simply be seen in the relevant market sector as a laudatory slogan, the function of which is to communicate an inspirational or motivational statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that the goods in question are aimed at professionals in the field of cooking and are of high quality. Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

As regards the applicant’s observations the Office replies as follows:

1. The word combination ‘CHEFS CLUB’ does have the minimum level of distinctiveness required in order to function as a trade mark.

A mark’s distinctiveness should be assessed, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of grounds for refusal of application for a European Union trade mark, the sign at issue, ‘CHEFS CLUB’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and, instead, it will be understood by the relevant public as a promotional message that merely serves to highlight positive aspects of the goods concerned, namely that the goods in question are aimed at professionals in the field of cooking and are of high quality.

The mark is composed of the expression ‘CHEFS CLUB’ in standard upper case letters. There is no figurative element that could add any distinctive character to this expression. It will be immediately obvious to any English speaker that the mark applied for is composed of the English words ‘CHEFS’ and ‘CLUB’.Accordingly, the examination must be based on the words and their combination as a whole. In the present case the combination of the words follows linguistic rules. This grammatically correct and normal combination of words, in the context of the goods and services for which registration is sought, will have a direct and immediate meaning for the relevant English-speaking public. Therefore the sign for which registration is sought, without any additional or graphic element that would result in the sign significantly deviating from being, as a whole, a mere promotional message, is incapable of performing the essential function of a trade mark and does not enable the consumer who purchases the goods and services in question to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20). The target public will perceive the sign applied for as a general promotional message without regarding it as an indication of commercial origin that refers to the specific undertaking behind that indication.

2. According to the dictionary quotations the words ‘CHEFS’ and ‘CLUB’ have several meanings. Therefore the expression does not describe the goods directly. There is no sufficiently direct and specific relationship between the mark and goods in question.

It must be pointed out that the Office has not based its objection on Article 7 (1) (c) stating that the mark is descriptive. The Office based the objection on Article 7 (1)(b) EUTMR, lack of distinctiveness. As stated above, the sign highlights the positive aspects of the goods concerned, namely that the goods in question are aimed at professionals in the field of cooking. The goods would be perceived of being of a higher quality, something a chef would use due to their knowledge of quality food. Therefore the message expressed by the sign for which registration is sought will be clear, direct and immediate for the relevant public. It is not vague in any way and does not lend itself to different interpretations.

Furthermore, the fact that the sign at issue may 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 84).

3. The expression does not lack distinctive character; the sign is allusive at best.

The Office explains that it is common to use motivational statements in marketing in order to urge consumers to consume. These motivational expressions are commonly used by various traders only for the purpose of encouraging the consumer to buy goods. The relevant consumers are familiar with this fact and are used to such kind of expressions and perceive them only as laudatory and motivational statements that might be used by various traders with the purpose of motivating and moulding consumers. Therefore these motivational expressions will be seen as fairly common place in the language of marketing and it follows that they don’t have the ability to distinguish goods. In the present case the expression ‘CHEFS CLUB’, when used in relation to the drinks or foodstuff will be seen as inviting and encouraging the consumer to by high quality food products. The mark lacks any secondary or cover meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons it is unlikely that ‘CHEFS CLUB’ will be perceived as an expression of trade origin.

4. The Office has previously registered several marks following the same word construction.

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).

5. The mark was registered by USPTO.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 16 921 116 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.

Liina PUU