Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/02/2018

SODEMA CONSEILS S.A.

16 rue du Général Foy

F-75008 Paris

FRANCIA

Application No:	017354317
Your reference:	CD/REC/1701650
Trade mark:
Mark type:	Figurative mark
Applicant:	MAESTRO TEQUILERO, S.A. DE C.V. Calle Guillermo Gonzalez Camarena No. 800 - Piso 4 Colonia Santa Fe, Delegacion Alvaro Obregon, Ciudad de Mexico Mexico 01210 MÉXICO

The Office raised an objection on 02/11/2017 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 02/01/2018, which may be summarised as follows:

• The shape of the bottle is a type of laboratory flask (Erlenmeyer flask) which features a round flat bottom, a rounded conical body and a cylindrical and parallel neck.

• The bottle is an atypical and unique combination of features for the packaging and presentation of the goods in class 33.

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)(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).

The applicant claims that the shape of the bottle is a type of Erlenmeyer flask and this shape is an atypical and unique combination of features for the packaging and presentation of the contested goods. As regards the trade mark at issue, the Office argues that the shape of Erlenmeyer flask may resemble each other because of several components (consisting of a bottle with a round flat bottom, a rounded conical body and a cylindrical and parallel neck). However, contrary to the applicant’s assertion, the overall impression is as follows: the shape of the bottle does not alone ensure that it stands out as a shape of Erlenmeyer flask so as to apart it from all other alcoholic beverage bottles and be seen as an indicator of origin. The shape in question is not markedly different from various basic shapes for the goods in question, which are commonly used in trade, but is a variation of those shapes. On the page 3 of the attachment, the applicant shows different shapes of bottles, including several bottles with a peculiar round lower part. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for alcoholic beverage bottles and it will not enable the relevant public immediately and with certainty to distinguish the applicant’s bottle from those of another commercial origin.

In the light of the above, regardless of how detailed the sign applied for may be described; the Office maintains that the sign will primarily be perceived as a representation of an alcoholic beverage bottle, which does not depart significantly from the norm or customs of the sector.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 017354317 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.

Selin GÜNEL