Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 19/06/2018

R. VOLART PONS Y CIA., S.L.

Pau Claris, 77, 2º, 1ª

E-08010 Barcelona

ESPAÑA

Application No:	017258501
Your reference:	MC40018
Trade mark:	FOSSIL SHELL FLOUR
Mark type:	Word mark
Applicant:	Perma-Guard, Inc. 60 North Cutler Drive North Salt Lake Utah 84054 ESTADOS UNIDOS (DE AMÉRICA)

The Office has received the applicant’s letter of 13/06/2018 informing about the fax error. The Office has checked the fax transmission reports and the status of the delivery and no inaccuracies have been found. However, as a matter of courtesy and considering that the reply from the applicant has been received the day of notification of the decision, the Office re-sends the decision and re-establishes the deadline to file an appeal that counts from the day of this notification.

The Office raised an objection on 17/10/2017 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.

On 14/12/2017 the applicant submitted request for extension of time to submit the arguments. On 06/02/2018 the applicant provided its observations, which may be summarised as follows:

1. The sign ‘FOSSIL SHELL FLOUR’ does not have the meaning attributed by the Office. It is an abstract name that does not contain any reference to the product involved: the diatomaceous earth.

2. The sign merely indicates that the goods applied for are in form of ‘flour’.

3. The goods involved do not belong to the highly specialised market sector.

4. The internet search provided by the Office is not enough to prove that the sign is objectionable.

5. The internet evidence provided by the Office refers to the trade mark name ‘FOSSIL SHELL FLOUR’ and to the nutritional supplements and not to the non-nutritional animal feed additive.

6. The applicant provided documents related to the several diatomaceous earth products of competitors, in which the expression ‘FOSSIL SHELL FLOUR’ is not mentioned.

7. The applicant provided documents related to its US trademarks ‘Fossil Shell Flour’ in which the first use in commerce is the 01/09/1959.

8. The applicant was the first and the most successful marketer that used the term ‘FOSSIL SHELL FLOUR’ to describe its diatomaceous earth products. That is why its competitors started to make a use of this term.

9. The Organic Martials Review Institute (OMRI) recognised the applicant’s product. The applicant provided the OMRI certificate.

10. The applicant submitted subsidiary request claiming that the sign has acquired distinctive character through use within the meaning of the Article 7(3) EUTMR.

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.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office will now respond to the applicant’s comments.

The Office disagrees with the applicant’s assertion that the term ‘FOSSIL SHELL FLOUR’ does not have a descriptive meaning in relation to the goods in question. The Office has already demonstrated in its letter of 17/10/2017 that this term is, indeed, perceived as a meaningful expression. The Office has sufficiently justified its objections by providing results of the internet search and examining the meaning of the term, firstly, by reference to the goods for which registration is sought and, secondly, by reference to the perception of the relevant public.

As a result, the Office concluded that the expression ‘FOSSIL SHELL FLOUR’ consists exclusively of a meaningful expression that is used on the relevant market and will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of marketed products, namely that they are animal feed additives in Class 1 comprised of diatomaceous earth used as an anti-caking ingredient.

Taken as a whole, the meaning of the term ‘FOSSIL SHELL FLOUR’ is clear to English-speaking consumers related to the animals breeding - such as farmers, ranchers and pet owners etc. - who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is sought. Therefore, the mark conveys obvious and direct information regarding the kind and quality of the goods and services in question.

According to settled case-law, ‘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’ (judgment of 26/11/2003, T-222/02, ‘ROBOTUNITS’, paragraph 34).

Furthermore, by prohibiting the registration as Community trade mark 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 for 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 (judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 31).

The fact that the goods at issue can be described by other technical expression, namely the diatomaceous earth, does not suffice to make the sign distinctive. It is not uncommon for products from the industry of feed additives to have both a technical and a marketing name. Moreover, if the relevant public is an average consumer it will be even more likely to understand the descriptive meaning of the marketing name ‘FOSSIL SHELL FLOUR’ than its technical equivalent.

The Office considers that in the case at hand, it is irrelevant whether the sign is directed at the specialised or not specialised sector of public. This is because, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the part of the relevant public is average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

As regards the applicant’s argument that the Office failed to prove that the sign has non-distinctive character the Court has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience (judgment of 15/03/2006, T-129/04, ‘Forme d'une bouteille en plastique’, paragraph 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T-194/01, ‘Tablette ovoïde’, paragraph 48).

The applicant provided documents related to the several diatomaceous earth products of competitors, in which the expression ‘FOSSIL SHELL FLOUR’ is not mentioned. Firstly, the evidence provided mostly refers to the products sold on the US market and therefore cannot have a decisive role in the assessment of the sign. Secondly, the fact that some other marketers do not make use of the sign is irrelevant. In its objection letter, the Office provided clear evidence indicating that at least some competitors use the term ‘FOSSIL SHELL FLOUR’ in relation to the their diatomaceous earth products.

Moreover, the Office considers that the sign is non-distinctive not because is ‘so frequently used’ in relation to the goods and services at issue that it has no capacity to distinguish trade origin, but because it is descriptive of the characteristics of the goods at issue.

It is settled case-law that there is a clear overlap between the scope of the grounds for refusal set out in Article 7(1)(b) to (d) (judgment of 12/02/2004, C-363/99 ‘Postkantoor’, paragraph 67 and 85 and judgment of 12/02/2004, C-265/00 ‘BIOMILD’, paragraph 18). In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (judgment of 12/06/2007, T-190/05 ‘TWIST & POUR’, paragraph 39).

Moreover, the applicant’s argument that the Office only showed use of the nutritional supplements and not of the non-nutritional animal feed additive applied for, has to be disregarded. In its letter of 17/10/2017, the Office clearly stated that the internet search allowed the conclusion, that the term ‘FOSSIL SHELL FLOUR’ refers to: “a diatomaceous earth used in animal feeds for protection against infestation by mites, larvae and other insects during storage. It inhibits the growth of mold, fungal spores and bacteria. It enables the feed to flow better making the feed less likely to mould due to the moisture absorbency characteristics.” The Office indicated different applications of the product and did not limit the evidence to the nutritional supplements.

As regards the US trademark ‘Fossil Shell Flour’ 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 the term ‘FOSSIL SHELL FLOUR’ has a certain commercial background and is well known on the relevant market, the Office points out that the applicant failed to prove distinctive character in relation to the goods for which registration is sought, as it did not provide any relevant evidence, such as surveys, evidence of the market share held by the mark, statements from chambers of commerce, industry or other trade and professional associations, sales volumes, advertising material or evidence of the duration of use, etc.

According to settled case law, since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on its experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T-194/01, ‘Tablette ovoïde’, paragraph 48).

The fact that The Organic Martials Review Institute (OMRI) recognised the applicant’s product is irrelevant for the assessment of the registrability of the sign at issue. This is because this Institute certifies organic production and not the intellectual property rights.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and/ and Article 7(2) EUTMR, the application for EUTM No 17258501 ‘FOSSIL SHELL FLOUR’ is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in English-speaking territory (Ireland, Malta, UK) 9 for all the goods claimed, namely:

Class 1 Animal feed additive comprised of diatomaceous earth for non-nutritional purposes for use as an anti-caking ingredient.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Monika Karolina SZALUCHO