Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 04/05/2018

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	017189002
Your reference:	EW36053MKJRkml
Trade mark:
Mark type:	Figurative mark
Applicant:	SSE IP, LLC 24 Union Square East New York, New York 10003 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 14/09/2017 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 15/01/2018, which may be summarised as follows:

1. A limitation of the services applied for.

2. The mark is not an immediate representation of the product.

3. It is common for fast food restaurants in the EU to use stylized burger logos as trade marks.

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.

A limitation of the services applied for

The applicant has requested the Office to limit the services to ‘fast food restaurant services’. The Office duly notes this limitation, and the examination will now proceed taking into account this limitation.

In this regard the Office notes that the objection of the Office still stands. The Office still believes that the mark lacks the distinctiveness required to function as a trade mark.

The mark is not an immediate representation of the product

Before examining the arguments of the applicant, the Office deems it fit to reproduce the mark applied for: . The mark very clearly is a representation of the a burger in a bun.

The applicant holds that the mark applied for will be perceived as a business identifier. The reasons the applicant cites for this are various, including that the mark applied for is not an immediate representation of the product and that the use of a stylized burger as logo or a trade mark is common all over Europe.

The Office, acknowledges that the mark in question is not a picture of a burger, but a graphical representation of a burger, however the underlying message is perfectly the same – namely that the restaurant services will offer amongst other food, burgers. It is common for fast food restaurants to offer burgers, because they are indeed considered to be a fast food staple and because they food is very popular amongst consumers. Therefore the mark does not need to be an immediate representation of the product to lack distinctiveness. The Office believes that the mark in question lacks the distinctiveness required to function as a trade mark, principally because it simply shows a burger in a bun, and there is no other element which distinguishes it from other burgers. The mark will simply inform consumers that the fast food restaurant offers burgers, or specialises in burgers. Thus, there is nothing which can be considered to be distinctive, and thus cannot serve as a badge of origin.

It is common for fast food restaurants in the EU to use stylized burger logos as trade marks

The applicant has filed a number of examples from all corners of Europe, demonstrating that similar marks of graphical burgers are being used throughout Europe. The applicant claims that these stylized burgers are trade marks, and therefore consumers are used to see these marks as business identifiers.

The Office finds the arguments of the applicant unconvincing for a number of reasons. First of all, save for one mark in the shape of a fish, the applicant has not provided trade mark numbers showing that the marks which it cites are in fact registered as trade marks. With regards to the German trade mark, the Office notes that 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 fact that burger shapes are being used in the market does not necessary mean that the signs are registered as trade marks. The proof of a trade mark registration is established by trade mark certificates, and not by pictures of shops selling burgers. Furthermore, the fact that marks are registered, also does not necessary mean that the marks were registered on the basis of their inherent distinctiveness. Therefore, one has to look closely into why the marks were registered.

Although the amount of examples of stylized cited by the applicant are substantial, the Office notes that invariably, all the signs cited all have some other element accompanying the graphical representation of a burger. Therefore one cannot simply equate the case at hand with the examples cited. The mark applied for simply consists of a burger in a bun, with no verbal elements. In the cases cited by the applicant, the graphical representation of the burger in a bun appears with verbal elements, so for example there is the word ‘HONORATO’ beneath the burger (Lisbon), the word Bleecker next to the graphical representation of a burger (London), there is the phrase ‘The Burger Lobby’ together with a representation of a burger (Madrid), there is the word ‘Burgez’ on top of a graphical representation of a burger (Milan) and the list goes on.

The other examples given by the applicant regarding the similar marks in different forms, are also used with verbal elements, for instance the French fries bag also contains the word ‘Fritten Piet’ and the pizza slice also contains the word ‘Pizza Boy’.

In addition the Office refers the applicant to a very similar mark at hand, EUTMA 15 717 952: . By virtue of a decision of the Fourth Board of Appeal of 26 September 2017, Case R 785/2017-4, the Board of Appeal has ruled that the mark lacks distinctive character in relation to services in class 43. The Office deems it fit to quote some of the salient paragraphs in that decision, which it believes also apply to the case at hand:

20. The Board concurs with the examiner that, taken as a whole, the mark applied for only consists of a combination of presentational features that are typical for a restaurant neon sign, in this case, a neon sign indicating a hamburger restaurant or bar, and that the sign is not markedly different from neon signs commonly used in trade for the services at issue, but is simply a variation thereof.

32. The fact that contested sign is not a naturalistic reproduction of a burger/sandwich, as argued by the applicant, does not change this finding. The sign is not such as to make a strong visual impression. Its characteristics and colours, which largely replicate ordinary features of a hamburger, albeit in a simplified and stylised version, are in addition common to neon signs and are unlikely to be committed to memory as a trade mark by the consumers concerned.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 189 002 is hereby rejected for all the services 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.

Alistair BUGEJA