Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 07/11/2017

INTERPATENT

Via Caboto, 35

I-10129 Torino

ITALIA

Application No:	017064106
Your reference:	TM9064EU00
Trade mark:	LUX
Mark type:	Word mark
Applicant:	ANTOLINI LUIGI & C. S.P.A. Via Napoleone, 6 I-37015 Frazione Ponton, Sant'Ambrogio di Valpolicella (VR) ITALIA

The Office raised an objection on 08/08/2017 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 04/10/2017, which may be summarised as follows.

1. The assertion that the word LUX is a laudatory description for the Bulgarian and Romanian public is not correct as the word cannot be found in the dictionary.

2. The term LUX has been searched on other online dictionaries and returned different meanings.

3. The products in question would normally be purchased by trained consumers who are unlikely to be influenced by any subliminal message contained in the mark.

4. There has been no consideration of each of the goods applied for as a basis for concluding that LUX is devoid of distinctive character in respect of all of the goods in question.

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.

General remarks on Article 7(1)(c) EUTMR

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).

Specific remarks concerning the observations of the applicant

1. The assertion that the word LUX is a laudatory description for the Bulgarian and Romanian public is not correct as the word cannot be found in the dictionary.

The Office re-asserts its findings that the term LUX is a laudatory term in Bulgarian and Romanian languages that translates as ‘luxury’. This is evidenced by the internet extracts below:

http://dictionare.com/phpdic/roen40.php?field0=lux

https://translate.google.com/?hl=en#bg/en/lux

(extracted on 17/11/2017).

2. The term LUX has been searched on other online dictionaries and returned different meanings.

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).

The sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country. Systematic language checks are only performed in the official languages of the European Union.

It has been proved above that the term LUX translates from Bulgarian and Romanian as ‘luxury’, which is defined in English as:

‘very expensive and of the highest quality’

(https://www.macmillandictionary.com/dictionary/american/luxury_2#luxury_19 extracted on 07/11/2017).

The word would be seen as descriptive of the quality of such goods as marble, granite, quartz and onyx, which would be regarded as higher quality building materials than, for example, wood or stone.

3. The products in question would normally be purchased by trained consumers who are unlikely to be influenced by any subliminal message contained in the mark.

Descriptive terms are those that merely consist of information about the characteristics of the goods and services. This means that descriptive terms cannot fulfil the function of a trade mark. Consequently, the ground for refusal applies irrespective of whether a term is already used by other competitors in a descriptive manner for the goods and services at issue.

In particular, a word is descriptive if either for the general public (if the goods or services target them) or for a specialised public (irrespective of whether the goods or services also target the general public) the trade mark has a descriptive meaning.

The Office asserts that the relevant consumer, whether ‘trained’ or otherwise, would perceive the mark as indicating a particular quality of the goods. As indicated in the definitions above, the mark cannot be said to be subliminal but is clear and unambiguous with respect to luxury goods.

4. There has been no consideration of each of the goods applied for as a basis for concluding that LUX is devoid of distinctive character in respect of all of the goods in question.

The Office notes that the objectionable goods applied for are essentially made from marble, granite, quartz, onyx and mosaic flooring which could be created from such materials. These materials are considered desirable due to the quality, finish and durability, and would attract a higher price as is the nature of luxury items. It is asserted that each of these materials have been considered but it is concluded that all would be regarded as ‘luxury’ building materials as opposed to ordinary materials such as stone or wood.

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 017064106 is hereby rejected for the following goods:

Class 19 Non-metallic building materials, namely blocks and slabs of marble and granite, quartz, onyx; blocks and slabs of marble and granite; non-metallic floors, namely marble flooring, mosaic flooring.

The application may proceed accordingly for the remaining goods.

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.

Lance EGGLETON