OPERATIONS DEPARTMENT



L123


Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]



Alicante, 08/11/2017


Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB

Widenmayerstraße 47

D-80538 München

ALEMANIA


Application No:

016939902

Your reference:

M/CES-444-EM

Trade mark:

AMERICANA

Mark type:

Word mark

Applicant:

The Leavitt Corporation

100 Santilli Highway

Everett Massachusetts 02149

ESTADOS UNIDOS (DE AMÉRICA)



1. The Office raised an objection on 07/08/2017, 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.


2. The applicant submitted its observations on 29/09/2017, which may be summarised as follows:


  • The mark ‘AMERICANA’ is not descriptive of the goods at issue. It is sufficiently original and fanciful for the goods, namely nuts and prepared nuts.


  • Article 7(1)(c) EUTMR does not in principle preclude the registration of geographical names that are unknown to the relevant public, or at least unknown as the designation of a geographical location.


  • In the present case, the applied for term AMERICANA will not be understood as the geographical origin of the goods in question. The correct geographical indication would be America, or the United States of America. The term “Americana” will be perceived as artifacts, or a collection of artifacts related to the history, geography, folklore and cultural heritage of the United States. Also, Americana music is a type of contemporary music. Therefore, the term AMERICANA does not designate a place associated with the goods, nor is it reasonable to assume that it may designate the geographical origin of the goods in question.


  • The Office did not demonstrate that the connection with the name of place and the goods may enable the relevant public to perceive the mark as an indication of the origin of those goods.


  • The Office has registered the term AMERICANA for goods in class 2 for paints. The applicant would be disadvantaged if the term can be registered for “paints”, but not for “nuts”.


  • The applicant owns US registration No. 805,673, Leavitt’s Americana Selection and design, with a disclaimer for the words “Leavitt’s” and “Selection”.


  • The applicant refers to case law in support of its arguments.


3. 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.


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 Office cannot find other than that the mark ‘AMERICANA’ is descriptive and devoid of any descriptive character for the goods at issue.


As indicated in the Notice of grounds for refusal the objection relate to the Italian, Portuguese and Spanish languages. Therefore, the English meaning of the word is irrelevant.


The Italian, Spanish and Portuguese word “americana” means “American”, which may refer to the United Sates, but also to South and North America.


The goods at issue are nuts and prepared nuts. South and North America are known among the relevant consumers for their nut production.


For instance the Brazil nut trees almost exclusively grow in the Amazon rainforest where the nuts are harvested. Pecan nuts originate in the USA. While these nuts are now cultivated in other countries, most of the crops come from the USA, and most consumers associate pecan nuts with the United States. California is well-known for its walnut production, and it is also well-known that the United States has a big peanut industry.


Therefore, when viewing the mark Americana in connection with the goods in question the relevant consumers would immediately understand that the goods come from South America and/or North America. There is no other way to interpret the mark.


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).


Furthermore, the applicant’s reference to EUTM registration no. 10641769, AMERICANA for goods in class 2, among others paints and varnishes is not relevant. Such goods are manufactured all over the world, and they are not known to originate ngfrom or to be manufactured in a specific place or specific places.


Also, the Office has refused marks consisting of the word AMERICANA for food products in class 30. See EUTMR Nos. 13837414, and 15363161. The latter mark was withdrawn after an objection.  


As regards the US registration 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).


It is also noted that the registered mark, apart from containing the word AMERICANA, and the disclaimed words ““Leavitt’s” and “Selection”, also contains a device containing an eagle and several stars. Those figurative elements are registrable elements.

4. 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 16 939 902 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.





Anne-Lee KRISTENSEN


Avenida de Europa, 4 • E - 03008 • Alicante, Spain

Tel. +34 965139100 • www.euipo.europa.eu

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