Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/02/2018

Isabelle Bertaux

55 rue Ramey

F-75018 PARIS

FRANCIA

Application No:	017139908
Your reference:	IBE2017513
Trade mark:	Casaottima
Mark type:	Word mark
Applicant:	Hong Bing Zheng No.36, Hutang Qianzheng, Daqi Sub-District,Beilun District, Ningbo, Zhejiang REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 10/10/2017 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 09/12/2017, which may be summarised as follows.

1. It’s wrongly that the examiner mentioned that the public can understand the word as meaning “The best possible house”. An intellectual effort is needed to understand the word. The public does not speak Italian and Portuguese together. The term “Ottima” needs to be changed to try to understand the meaning (-> Ótima).

2. The term is not a slogan. It has a general meaning which can be understood by a very few part of the EU. A slogan can’t be constituted by one word. The TM at issue is one word where the alleged meaning raised is not detectable without making the intellectual effort to separate the TM in two words “Casa” and “Ottima” and arrive to the meaning with a translation effort with two different languages to “Optimum house”.

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) CTMR, ‘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) CTMR 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

The marks referred to in Article 7(1)(b) CTMR 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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality (CasaOttima) or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (judgment of 04/10/2001, C‑517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T‑138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (judgment of 29/04/2004, joined cases C‑456/01 P and C‑457/01 P, ‘Henkel’, paragraph 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d'une bouteille’, paragraph 34).

As regards the Applicant’s first argument that an intellectual effort is needed to understand the expression Casaottima and that the public does not speak Italian and Portuguese together, the Office agrees with him regarding the Portuguese public. In Portuguese, the correct term would be Ótima and not Ottima. Therefore, the objection will be based on the Italian public where the expression has a real meaning.

For the Italian consumers, the expression Casaottima is certainly devoid of any distinctive character in relation to furniture and textiles.

Therefore, it is reasonable to believe that the relevant public will understand without any mental effort that the term “Casaottima” refers to a great house in Italian, without the need to make a cognitive leap.

There is nothing vague, abstract or fanciful about the sign, no hidden meaning that could make it more than the sum of its parts (see judgment of 12/01/2005, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, paragraph 32).

The Applicant claims that the contested mark is not a slogan, that it has a general meaning which can be understood by a very few part of the EU. The Office points out that there is no need to separate the TM in two words “Casa” and “Ottima” to find any meaning. The Italian consumer will immediately see Casa Ottima, in two words or in one word.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17139908 Casaottima 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.

Magali VOISIN