Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/03/2018

BRANDSTOCK LEGAL RECHTSANWALTSGESELLSCHAFT MBH

Rückertstr. 1

D-80336 München

ALEMANIA

Application No:	017130303
Your reference:	TM26674EU00
Trade mark:
Mark type:	Figurative
Applicant:	Laboratoires M&L, Société Anonyme Zone Industrielle St-Maurice F-04100 Manosque FRANCIA

The Office raised an objection on 31/08/2017 pursuant to Article 7(1)(b) 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 30/11/2017, which may be summarised as follows:

In view of the applicant, the disputed sign is ‘specific, unique and arbitrary’ and, therefore, ‘distinctive and easily identifiable’. In consequence, according to the reasoning developed below, the applied sign is eligible for registration and suitable to function as a trade mark:

1. Relevant public – Level of attention: The products offered by the applicant are generally applied to the skin or otherwise meant to affect the state/appearance of one’s body, of high quality with selected distribution channels and the prices are high. Therefore, consumers will tend to have a high degree of attention when purchasing these products in contrast to everyday consumption products.

2. Arbitrariness and Distinctiveness of the sign: The sign is not a common representation or a mere decorative, but a unique work of art designed to distinguish the requested products and, in addition, exclusively used by the applicant’s undertakings on the market. The sole fact that the graphical features may recall something that exists in nature cannot be enough to prevent the registration of the sign as a trade mark. The sign has a unique character and is totally arbitrary, with no link to the goods themselves or any characteristics thereof. Moreover, it is a fanciful and complex drawing, and cannot be regarded in any manner as a mere decorative element.

3. BoA decision: The applicant is of the opinion that the same reasoning resulting from a recent decision of the Boards of Appeal in Case R 897/2017-4 of 20.10.2017 is applicable to the current case. The BoA accepted a pure figurative trademark that had been rejected in the first instance. The specific features and general appearance of the sign are purely arbitrary and artistic, that enable consumers to identify the goods as emanating from a particular undertaking

4. Prior national registration: The disputed sign has been recently registered by the French Office, with no. 154217664, of 14 October 2015, for an identical list of goods in class 3. Within the scope of harmonized EU legislations, the applicant argues that the disputed sign should be treated equally to the French one.

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.

The general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the marked product or service to the consumer or end-user by enabling him/her, without the possibility of confusion, to distinguish the product or service from others which have a different origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

Article 7(1)(b) EUTMR precludes the registration of trade marks which are devoid of distinctive character which alone renders them incapable of fulfilling that essential function (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

Since the EUTM applied for consists exclusively of figurative elements lacking any word elements, it will be perceived in the same way throughout the European Union irrespective of any linguistic differences between the different Member States (30/09/2009, T-75/08, !, EU:T:2009:374, § 26; 12/09/2007, T-141/06, Texture of glass surface, § 36).

The signs 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; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

Therefore, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, in to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

Firstly, according to case law, the level of attention of the relevant public is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26). The Office considered in its official communication, that the goods objected to in Class 3 are everyday consumption/mass-consumption goods that were mainly aimed at average consumers. However, due to the evaluation of the applicant’s observations, the Office has spotted a mistake in the writ of objection where it stated that the applied goods were directed to the average consumer, but also to a professional consumer in the field of construction, repair and maintenance. This rationale is clearly wrong and does not apply to the current case, being only the average consumer the relevant public for the requested goods. Following this clarification and corresponding amendment of the relevant public, the Office maintains that the awareness of the relevant public would be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Even if the disputed products may be associated with a sustainable and ecological lifestyle as pointed out by the applicant when referring to its own business nature, these types of products have become more and more common and can nowadays often be found in grocery shops or supermarkets. They can be bought on a regular basis and are sometimes a bit more expensive than regular products of the same category. However, the difference in their price is relatively minimum and imperceptible for consumers’ pocket. In consequence, the Office disagrees with the applicant argument and considers that the level of attention displayed by average consumers is not higher than normal.

Secondly, with reference to the applicant’s reasoning supporting the uniqueness and arbitrariness of the applied sign, the more closely the shape or other elements of the mark for which registration is sought resembles those elements most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character (24/11/2016, T-578/15, Device of a solar cell, EU:T:2016:674, § 16; 07/10/2004, C-136/02 P, Three-dimensional torch shapes, EU:C:2004:592, § 31; 29/4/2004, C-456-457/01, Tabs, EU:C:2004:258, § 39; 12/1/2006, C-173/04, Standbeutel, EU:C:2006:20, § 30). Moreover, only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of identifying origin is not devoid of any distinctive character for the purposes of that provision (09/11/2016, T 579/14, Device of a pattern, EU:T:2016:650, § 25; 12/01/2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 31; 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 28).

In this regard, following the argumentation of the last official communication, the Office upholds its view that the disputed sign ‘consists merely of a combination of presentational features of a branch with leaves and blossoming flowers, which is a quite common graphic representation connected to cosmetic products, particularly reinforcing the type of cosmetics that are natural and fresh’. In the market reality, such figurative elements of the design are relatively similar to numerous graphical representations of the same kind.

Based on the foregoing, in conformity with the justification of objection exposed on the letter of 31/08/2017, the applied sign ‘does not contain any aspect that would allow it to be immediately seen and perceived by the average consumer as an indication of commercial origin of the goods applied for, but would only be regarded as a decorative element with regard to the referred goods’.

In this regard the presentational features of a branch with leaves and blossoming flowers is commonplace for cosmetic products and does not contain anything which might be considered eye-catching, or prompt the memory, even if the drawing has entailed certain investment in its creation. Indeed, the overall effect is one of great conventional character – it remains a depiction of a branch that can be found in nature, with its usual features of leaves and flowers – comparable to that of a common graphical representation of a plant’s limb – and incapable of transmitting a message that allows consumers to perceive it as a trade mark, unless it has acquire distinctiveness because of its use (see, by analogy, judgments of 13/04/2011, T-159/10, Parallélogramme, EU:T:2011:176, § 24 and of 12/09/2007, T-304/05, Pentagon, EU:T:2007:271, § 23; 09/12/2010, T-282/09, Carré convexevert, EU:T:2010:508, § 20).

Thirdly, with reference to the applicant’s opinion that the same reasoning resulting from a recent decision of the Boards of Appeal in Case R 897/2017-4 of 20.10.2017 is applicable to the current case, the Office claims that although the BoA assesses a figurative mark objected under Article 7(1)(b) EUTMR, the disputed sign in the referred BoA case and the applied sign object of discussion of this writ differ in their own merits and circumstances. Principally, the BoA considered in § 24 that ‘it can therefore not be reasonably argued that the mark applied for is considered as only consisting of a combination of presentational features that are typical of the shape of the goods in question’. In the current disputed scenario, it is not the shape what is under discussion, but the figurative elements of the sign, that is, the common graphic representation features connected to the goods concerned as they resemble those elements most likely to be taken by the goods in question.

Consequently, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b), as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors. (judgments of 29/04/2004, joined cases C-468/01 P to C-472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33).

Lastly, as regards the national decision of the French Office 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).

The purpose of harmonization is to approximate trade mark laws of the different EU Member States. This harmonization has been achieved to a quite great extent, but the transposition of the Trade Mark Directive into the national systems still leaves certain measures of discretion to Member States that differ from one state to another. Notwithstanding the above, the grant of a EUTM, a single trade mark title with unitary effect in all Member States, is regulated under a separated legal norm: the EUTMR. Therefore, the applied sign can only be examined according to the EUTMR and relevant EU case law and, in the light of the current practice of the Office reflected in the EUIPO Guidelines. In consequence, although the same sign and for an identical list of goods in class 3, as the one currently disputed before the EUIPO, has already been registered in the French INPI under French law, the EU trade mark system is independent and autonomous and cannot be bound by any decision given in a particular Member State, such as the French one here.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 130 303  is hereby rejected for all the goods claimed:

Class 3

Soaps for body care; soaps for household use; bath soaps; beauty soap; soaps for personal use; cosmetic soaps; cakes of toilet soap; toilet soaps; perfumes; toilet water; essential oils; cosmetics; hair lotions; dentifrices; oils for cosmetic purposes; oils for perfumes and scents; shampoos; shower gels; bath foams; non-medicated bubble bath preparations; lotions for cosmetic purposes; beauty gels; beauty masks; bathing lotions; cosmetic preparations; skin cream; Lotions for face and body care; skin toners; beauty serums; make-up removing preparations; facial scrubs; foot scrubs; hand scrubs; pencils for cosmetic purposes; eyebrow cosmetics; eyelash tint; shaving gels; shaving mousse; shaving soap; shaving preparations; aftershave preparations; cleansing milk for toilet purposes; eyeshadow; blush; make-up preparations; mascara; make-up powder; foundations; nail polish; nail care preparations; lipsticks; lip balm; personal deodorants; depilatory preparations; depilatory wax; depilatory creams; cosmetic preparations for slimming purposes; cosmetic sun-tanning preparations; cosmetic sunscreen preparations; tissues impregnated with cosmetic lotions; incense; room fragrancing preparations; sachets for perfuming linen; potpourri; skin whitening creams; color-removing preparations for hair; abrasive paper; cosmetics for animals; scented oils; scented wood.

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.

María Luisa ARANDA SALES