Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 30/01/2018

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	017143314
Your reference:	NA/HC/FN
Trade mark:	FRESH NUDE
Mark type:	Word mark
Applicant:	The Body Shop International Limited. Watersmead Business Park Littlehampton, West Sussex BN17 6LS REINO UNIDO

The Office raised an objection on 27/09/2017 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 02/11/2017, which may be summarised as follows:

• The words ‘FRESH NUDE’ form an expression that was created by the applicant and creates an unusual impression. The words do not appear in English dictionaries in combination and are not commonly used with each other. This unusual impression gives the mark inherent distinctiveness both generally and in relation to the goods to which an objection has been raised. While individually the words ‘FRESH’ and ‘NUDE’ may allude to characteristics of the goods for which registration is sought, in combination they do not convey a descriptive message. The examiner has examined the two individual components of ‘FRESH NUDE’ separately. While the examiner has attempted to recombine the components into a single meaning after dissecting the mark, the result is an artificial one. The relevant public would never use the phrase in normal parlance.

• The applicant refers to internet search results in respect of the mark ‘FRESH NUDE’. The references are to the applicant’s mark and/or the applicant’s ‘FRESH NUDE’ products. There are no references to ‘FRESH NUDE’ in connection with any other provider of goods, or any results suggesting that ‘FRESH NUDE’ is used or recognised in any other way, for example in a descriptive way.

• The UK Intellectual Property Office has accepted the mark ‘FRESH NUDE’ without requiring evidence of acquired distinctiveness. This demonstrates that the mark is capable of performing a trade mark function for English-speaking consumers in the European Union.

• There are marks on the EUIPO register that are more strongly allusive of the goods for which registration is sought and, on the basis of the principle of equal treatment, registration of the EUTMA ‘FRESH NUDE’ should be permitted in respect of the goods to which an objection has been raised. The applicant has focused its research on marks that contain the words ‘FRESH’ or ‘NUDE’ for goods in Class 3 and states that the Office has already determined that marks containing one of these words were acceptable for registration, such as EUTM No 14 434 781 ‘FRESH CHARGE’, EUTM No 14 824 023 ‘NATURE FRESH INSPIRATIONS’, EUTM No 14 924 096 ‘FRESH TO GO’, EUTM No 16 205 155 ‘FRESH HEADS’, EUTM No 15 536 592 ‘NUDE BEACH’, EUTM No 11 676 327 ‘GLAM NUDE’ and EUTM No 12 898 201 ‘TRUE NUDE’.

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)(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).

The applicant argues that the Office dissected the mark artificially; nevertheless, since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The applicant states that the words do not appear in English dictionaries in combination and are not commonly used with one another; however, 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, emphasis added).

It is not necessary to prove that the sign is the subject of a dictionary entry for it to be refused protection. Dictionaries do not include all possible combinations of words. What matters is the ordinary and plain meaning of the expression in question, for the relevant consumer. In its current practice, the Office first explains the meaning/perception by the relevant public of the sign and only then provides dictionary references backing up that meaning, if need be (dictionary entries are not obligatory but optional). It suffices that the expression is meant to be used, or could be understood by the average English-speaking consumer, as a description of the characteristics of the goods for which registration is sought. In the present case, the sign is composed of the verbal element ‘FRESH NUDE’ and, as stated in the notification dated 27/09/2017, the average English-speaking consumer would understand the sign as meaning pleasantly clean and cool, with a colour resembling that of the wearer’s skin. Therefore, it immediately informs consumers without further reflection about the kind and quality of the goods in question. Consequently, one of the possible meanings of the mark applied for describes the goods and will not be perceived as suggestive or allusive. A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The Office finds that the words are in an acceptable order in English and considers that, even if the expression ‘FRESH NUDE’ is not used in common parlance, this does not outweigh the fact that it would be instantly recognised and understood by the target public.

The internet search results using the expression ‘FRESH NUDE’ submitted by the applicant, showing that the results of a Google search are associated with the applicant and its goods, give no indication regarding the distinctiveness of the mark applied for. The Google results do not clarify whether or not English-speaking consumers in the European Union, or how many of these, had accessed these web pages, or whether or not this public perceives the sign at issue as a trade mark. It must be born in mind that mere use, as proven by internet searches using the expression ‘FRESH NUDE’, is never sufficient to rule out that a sign possesses distinctive character. The role played by an internet search is to support the reasoning developed by the Office in favour or against the registration of a sign. It should never be the main argument. Internet searches do nothing more than provide specific examples, originating from the relevant trade circles, of use of a word. From these examples, it should be clear why the expression cannot be monopolised as a trade mark by just one undertaking but must remain free for use by any competitor. It is in precisely this manner that the Office used an internet search in the present case.

Considering all the above, since the expression applied for describes the kind and quality of the goods, it must be left free for competitors because it is a descriptive indication in the senses of Article 7(1)(c) and 7(2) EUTMR for the contested goods.

In this respect, the fact that the results of a Google search contain multiple references to the applicant’s mark could merely be the result of a commercial agreement with Google.

As regards the national decision 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).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, such as EUTM No 14 434 781 ‘FRESH CHARGE’, EUTM No 14 824 023 ‘NATURE FRESH INSPIRATIONS’, EUTM No 14 924 096 ‘FRESH TO GO’, EUTM No 16 205 155 ‘FRESH HEADS’, EUTM No 15 536 592 ‘NUDE BEACH’, EUTM No 11 676 327 ‘GLAM NUDE’ and EUTM No 12 898 201 ‘TRUE NUDE’, 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; 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).

The Office has taken note of the previously accepted cases containing the word ‘FRESH’ or ‘NUDE’. However, EUTM applications have been refused that had a similar structure to the sign applied for, for instance EUTMA No 15 354 211 ‘FRESH ELEMENTS’, EUTMA No 15 384 498 ‘BIOFRESH’, EUTMA No 14 694 335 ‘Fresh sensation’, EUTMA No 12 054 672 ‘WONDER FRESH’ and EUTMA No 14 410 385 ‘LOVNUDE’. Therefore, it is clearly Office practice to refuse descriptive marks that have a structure similar to that of the sign applied for.

The Office has a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. In the light of those two principles, the Office must, when examining an application for registration of an EU trade mark, take account of the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect to legality. Consequently, the person who seeks registration of a sign as a trade mark cannot rely, to his or her own benefit, on any unlawful act committed to the benefit of someone else to secure an identical decision.

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 17 143 314 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.

Moises Paulo ROMERO CABRERA