Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/12/2017

CLARION SOLICITORS LIMITED

Elizabeth House, 13-19 Queen Street

Leeds, West Yorkshire LS1 2TW

REINO UNIDO

Application No:	017144411
Your reference:	KEB/46947.1
Trade mark:
Mark type:	Three-dimensional
Applicant:	804935 Ontario Ltd. 3764 Jordan Road, PO Box 2 Jordan Station Ontario L0R1S0 CANADÁ

The Office raised an objection on 07/09/2017 pursuant to Article 7(1)(b) and Article 7(1)(e)(ii) 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 06/11/2017, which may be summarised as follows:

• While the three-dimensional mark applied for depicts the appearance of the product or packaging itself, namely a support for an arrangement of cut flowers, this does not mean that the relevant public will be incapable of distinguishing the sign from the appearance of the product or packaging. On the contrary, if the sign is distinctive, as the applicant contends, the relevant public is likely to perceive the sign as a trade mark, that is, as an indicator of origin. The sign is not merely a basic shape, nor is it a variant of a common shape. Instead, the specific shape departs significantly from the shape that would be expected by the consumer bearing in mind the norm for such products in the sector in question. The sign is not subject to a higher legal standard than a sign that consists of the label or name of a product. The applicant argues that it is incumbent on the Office to identify the ‘various basic shapes commonly used in trade for the goods at issue’ to which it refers.

• The mark does not consist exclusively of the shape of the product that is necessary to obtain the technical result of supporting cut flowers. The applicant is the owner of a US design patent (No D534833) in respect of the mark that is the subject of this application. The design patent confers protection on the appearance of the article, that is, on an original ornamental design. The protection afforded by a design patent relates to the appearance of the article and not to any utilitarian or structural features. The existence of the design patent is therefore evidence that the sign does not wholly and exclusively consist of the shape of the product that is necessary to obtain a technical result, as it incorporates ornamental design elements and is therefore the result of a wide degree of design freedom.

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.

Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘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) 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).

The marks 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).

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, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

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 (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 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 (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31).

The applicant states that the three-dimensional mark is distinctive and that the relevant public likely to perceive the sign as a trade mark. It is settled case-law that the criteria for assessing the distinctive character of three-dimensional trade marks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark; nevertheless, the Court of Justice has established that the relevant public’s perception is not necessarily the same in the case of a three-dimensional mark consisting of the appearance of the product itself as it is in the case of a word or figurative mark consisting of a sign unrelated to the appearance of the products it denotes.

Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctive character in relation to such a three-dimensional mark than in relation to a word or figurative mark (12/01/2006, C‑173/04 P, Standbeutel, § 27, 28).

The contested mark depicts a floral arrangement support for use with a plurality of cut flowers that would be seen by the average consumer as typical of the shape of the good in question. Moreover, the three-dimensional mark will be associated by the public with the function of the product.

The applicant states that the mark does not consist exclusively of the product shape that is necessary to obtain the technical result of supporting cut flowers. Contrary to the applicant’s argument, the shape for which protection is sought is a variation of a common round shape designed to support cut flowers, and consumers would expect the product to have this shape to enable it to be placed in a vase.

An internet search on 18/12/2017 revealed several similar round shapes used to support floral arrangements:

http://www.purplepomegranate.com/afuturquoise-frog/

https://www.bluewillowhouse.com/vintage-collecting-no-8-flower-frogs/

http://weddbook.com/media/2272336/flower-arranger-flower-frog-for-diy-wedding-centerpieces-and-party-centerpieces-set-of-3

http://www.qvc.com/Flower-Crazy-Round-Floral-Arranger-with-Design-Booklet.product.M50786.html

Article 7(1)(e)(ii) EUTMR

According to case-law, the correct application of Article 7(1)(e)(ii) EUTMR requires, as a first step, the identification of the ‘essential characteristics’ of the three-dimensional sign (06/03/2014, C‑337/12 P-C‑340/12 P, Surface covered with circles, EU:C:2014:129, § 46). The second step is the assessment of whether these characteristics are necessary to obtain a technical result from the product. In the present case, the Office notes that the good in question is a floral arrangement support for use with a plurality cut of flowers, containing holders which at the same time, includes a clamp for each flower which would allow to hold the stems in place and display the flowers, and therefore, is the technical result targeted by the product; therefore, the characteristics of the mark are necessary to fulfil the technical function of the god (i.e. support for floral arrangements).

As regards the US design patent (No D534 833) 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 criteria for protection of a design patent by the USPTO are different from those for registration of a trade mark by the EUIPO. The design patent referred to by the applicant is protected under US law, while the trade mark for which registration is sought must fulfil the provisions of the EUTMR; that is to say, the fact that the support for floral arrangements is protected as a design patent in the United States is not proof of the distinctive character of the trade mark applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(1)(e)(ii) EUTMR, the application for European Union trade mark No 17 144 411 is hereby rejected for the good 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