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

(Articles 85 and 7 EUTMR)

Alicante, 30/04/2019

MATHYS & SQUIRE LLP

Abbey House 32 Booth Street

Manchester Lancashire M2 4AB

REINO UNIDO

Application No:	017285421
Your reference:	T14604EU
Trade mark:	MANUKA HONEY
Mark type:	Word mark
Applicant:	Manuka Honey Appellation Society Incorporated c/o Buddle Findlay, Level 18, PWC Tower, 188 Quay Street Auckland NUEVA ZELANDA

The Office raised an objection on 16/01/2018 pursuant to Article 85 EUTMR (Article 83(1) EUTMR) because it found that the mark applied for is intended to distinguish goods that are certified by the applicant of the mark in
respect of a geographical origin.

On 07/03/2018 and on 15/05/2018 the applicant requested extensions of the time limit, which were granted by the Office.

On 13/07/2018 the applicant submitted its observations, indicating its wish to amend the Regulation of Use (RoU) in such way that it no longer refers to the geographical origin of the product, but to its chemical characteristics.

As the list of such characteristics was confidential by that time, in the same communication, the applicant requested an extension of the time limit.

In view of the abovementioned information and despite the fact that the RoU was still under revision by the applicant, on 03/08/2018 the Office raised an objection pursuant to Article 85 EUTMR (Articles 42(1) and 83(1) EUTMR) because it found that the mark applied for is intended to distinguish goods that are certified by the applicant of the mark in
respect of a geographical origin and it is also descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 03/10/2018, which may be summarised as follows:

1. The RoU no longer makes reference to the geographical origin of the product in question, but to its particular chemical characteristics.

2. With regard to the descriptiveness, the term ‘Manuka’ is not descriptive in the European Union, as it comes from Maori. The botanical name is Leptospermum scoparium, while in English it is called ‘Tea Tree’. It grows also in Australia, where it is known as ‘Tea Tree’ or ‘Jellybush’ plant. The applicant provided evidence that acknowledged that the Leptospermum scoparium plant was commonly known as ‘Manuka’ in New Zealand: ‘…while “Leptospermum Scoparium Honey” may be a descriptive term that would not be registrable as a Certification Mark, the term “Manuka Honey” is entirely different and cannot provide the consumer with direct and specific information about the product. It is a distinctive term that is capable of indicating certification.’ This is in line with case-law (20/09/2001, C-383/99 P, BABY-DRY, EU:C:2001:461, § 40), as there is a perceptible difference between the term submitted for registration and the one used in common parlance. There must be a sufficiently direct and specific relation between the sign and the goods and services to enable the public to perceive it immediately as descriptive (20/11/2007, T‑458/05, Tek, EU:T:2007:349, § 80). In the present case, ‘the mark would need to include the entirely different element “Leptospermum Scoparium”, and/or it would need to incorporate further descriptive elements to inform the consumers, directly and specifically that the honey is from that plant.’, which is not the case.

3. The Office did not take into account ‘the specific (and different) function of a certification mark in comparison to a classic trade mark’. A certification mark serves to distinguish goods certified by its owner either from those certified by others or not certified at all. The dictionary references provided by the Office showed that ‘Manuka Honey’ was not purely descriptive. They demonstrated that the expression ‘has become known as a designation for honey of a particular kind, with particular characteristics. That is, a honey that has other special properties quite different from other honey from the same plant. This is the very basis for a certification mark.’.

4. The applicant made reference to a previous case, according to which ‘a court, which assesses the distinctive character of a trade mark by carrying out solely an analysis of its descriptive character, makes an error in law’ (30/11/2011, T-123/10, COMPLETE, EU:T:2011:706, § 58). Based on the quotation provided, the applicant claimed that the Office had made such an error, as it provided no further grounds to support its objection in relation to Article 7(1)(b), except for those related to Article 7(1)(c) EUTMR. Therefore, the objection related to non-distinctiveness should be waived.

5. Third parties have started using ‘Manuka Honey’ to designate honey that was not made from Leptospermum scoparium and did not possess particular characteristics. That is why the term has to be registered as a certification mark.

In addition, in the abovementioned communication, the applicant indicated its wish to claim acquired distinctiveness.

On 15/11/2018, together with further comments on the RoU, the Office issued a request for clarification on the nature of the claim.

On 08/01/2019, the applicant replied that the claim of acquired distinctiveness was a subsidiary claim. On 15/01/2019, the applicant provided the final version of the RoU, which no longer made reference to the geographical origin of the product for which certification is sought.

Consequently, in this letter, the Office will respond only to the arguments related to the mark’s inherent distinctiveness, and it will decide on the subsidiary claim in the course of the proceedings for the consideration of the subsidiary claim, after the present decision becomes final.

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 based on the descriptive and non-distinctive character of the sign. The objection related to the geographical origin has been waived.

Article 83(1) EUTMR defines the EU certification mark as a mark that is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified (emphasis added).

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).

In reply to the applicant’s first argument, in view of the fact that the RoU contains no reference to the geographical origin of the product in question, but to its particular chemical characteristics instead, the objection based on the geographical origin has been waived, in accordance with Article 85(3) EUTMR.

In relation to the second argument of the applicant, for a sign to fall within the scope of the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

The descriptiveness of the sign has to be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (see 02/04/2008, T-181/07, Steadycontrol, EU:T:2008:86, § 38; and 21/05/2008, T-329/06, E, EU:T:2008:161, § 23, 26/02/2016, Hot Sox, EU:T:2016:102, § 20 and the case-law cited therein).

The Office disagrees with the applicant that the term ‘Manuka’ would not be understood by the relevant, well-informed and circumspect English-speaking public. While assessing the mark, the Office used as a reference base the ordinary understanding of the expression in question and the available dictionary entries. A quick check in the English dictionaries showed that it is a term with a clear meaning. The entries for ‘Manuka Honey’ have been provided by the Office in its communication of 03/08/2018. Therefore, both ‘Manuka’ and ‘Manuka honey’ have entries in the dictionaries used in the English-speaking territory of the European Union, as shown below and in the letter of 03/08/2018.

(information extracted from Collins Dictionary on 16/04/2018 at https://www.collinsdictionary.com/dictionary/english/manuka )

(information extracted from Oxford Dictionaries on 16/04/2018 at https://www.collinsdictionary.com/dictionary/english/manuka ).

The Office agrees with the applicant that the term comes from Maori, but it is used in English, as are thousands of other terms borrowed from many other languages and incorporated into English. In addition, the same or similar plant can have different names that are understood by the relevant public.

Since the 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).

In view of the above, the term ‘Manuka Honey’ would be perfectly understandable by the relevant public within the concrete market, as it provides the consumer with direct and specific information about the product. The fact that the same product may have different names does not prevent the relevant consumers from understanding it.

The case-law of the Court of Justice and Court of First Instance has evolved considerably since 20/09/2001, C‑383/99P, BABY-DRY, EU:C:2001:461 (02/08/2004, R 262/2003-2, ECONOMY PLUS, § 11). In addition, as demonstrated above, there is no difference between the term submitted for registration and the one used in common parlance.

Finally, when a sign contains information about the characteristics of the goods or services in relation to which it is to be used, it may nonetheless qualify for registration if that information is presented in an original or imaginative manner. There are several linguistic and stylistic techniques by which a descriptive message can be clothed in distinctiveness: unusual syntax, alliteration, rhyme, paradox, a play on words and so forth. No such technique appears in the sign.

In relation to the applicant’s third argument that while assessing the mark, the Office did not take into account that it is a certification mark, the Office points out that 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 services in respect of which registration is sought (29/04/2004, C‑468/01 P - C‑472/01 P, Tabs (3D), EU:C:2004:259, § 39; 26/11/2003, T‑222/02, Robotunits, EU:T:2003:315).

As demonstrated above and in the Office’s letter of 03/08/2018, the expression in question has a clear and unequivocal descriptive meaning in relation to the goods:

The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods for which protection is sought. In the present case, the average English-speaking consumer would understand the sign as having the following meaning: honey from the nectar of the manuka tree.

…

In the present case, the relevant consumers would perceive the sign as providing information that the good, honey, in Class 30, is honey produced from the nectar of the manuka tree. Therefore, the sign describes the kind of the good in question.

In this regard, the Office’s practice, based on the applicable case law, is the following:

Although there is a public interest underlying Article 7(1)(c) EUTMR that descriptive terms should not be registered as trade marks so as to remain freely available to all competitors, it is not necessary for the Office to show that there is, on the part of third parties, a present or future need to use, or concrete interest in using, the descriptive term applied for (no konkretes Freihaltebedürfnis) (judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 61).

Whether there are synonyms or other, even more usual, ways of expressing the descriptive meaning is thus irrelevant (judgment of 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 42).

Given that the mark has a clear descriptive meaning in relation to the goods for which certification is sought, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any other function, including certification of goods. The Office cannot grant an exclusive right to use a commonly used expression (as indicated in the dictionary entries), without any alteration, to one market operator. This applies both to individual and to certification marks. Even if, due to its specific function, the certification mark can give information on the characteristic it certifies, it cannot be exclusively descriptive of a characteristic of the goods it aims to certify.

In relation to the applicant’s fourth argument, it is worth mentioning that the judgement indicated by the applicant does not contain paragraph 58, but the Office understands that it refers to paragraph 43. The quotation cannot be taken out of context and it is linked to the specific case. The court has afterward confirmed many times that a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

As stated in the Office’s communication of 03/08/2018:

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 85 EUTMR and 42(1) EUTMR, as it is incapable of performing the essential function of a certification trade mark, which is to distinguish goods or services certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified.

As the mark is descriptive, it is, therefore, also devoid of distinctive character.

The last argument of the applicant cannot be considered by the Office in the examination of absolute grounds of refusal, which at the present stage assesses the inherent distinctiveness of the mark in question.

As stated, the certification mark at issue possesses no inherent distinctiveness, as it has proved to be a merely descriptive expression, with no alteration of its plain meaning.

For the abovementioned reasons, and pursuant to Article 85 EUTMR and Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union certification mark No 017 285 421, ‘MANUKA HONEY’, is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in the English-speaking territory, that is, in Ireland, Malta and the United Kingdom, for all the goods claimed:

Class 30 Honey.

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 TOMCZYNSKA