Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 31/01/2018

BRANDSTORMING

11, rue Lincoln

F-75008 Paris

FRANCIA

Application No:	017360009
Your reference:	OW/EM/1
Trade mark:
Mark type:	Figurative mark
Applicant:	OFF-WHITE LLC c/o Gelfand, Rennert & Feldman LLP, 360 Hamilton Ave., #100 White Plains New York 10601 ESTADOS UNIDOS DE AMÉRICA

The Office raised an objection on 27/10/2017 pursuant to Article 7(1)(b) and (c) EUTMR 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.

The applicant submitted its observations on 22/11/2017, which may be summarised as follows:

1. The applicant disagrees with the finding that the mark is not registrable. The English-speaking consumer would understand the words ‘OFF WHITE’ as having different meanings, as demonstrated in Appendices A-F. The English-speaking consumer would perceive these words as indicating different shades of white from yellowish to greyish; therefore, it is not a clear and precise colour. The consumer would also perceive these words as a symbol of mixed street cultures of any race, as demonstrated in the in Urban Dictionary (Appendices E-F). The applicant´s founder and artistic director explained the meaning and interpretation of the mark applied for; these statements are supported by five internet links:

1. www.coveteur.com

2. www.vogue.com

3. www.magazine.com

4. www.interviewmagazine.com

Therefore, the mark applied for will be interpreted differently depending on the public.

2. Even if the mark were recognised as a colour, the link between the goods in question and the mark is insufficiently close for the mark to fall within the scope of the prohibition laid down by Article 7(1) EUTMR. The words ‘OFF WHITE’ do not have a descriptive meaning as they describe only one possible characteristic of the goods. Consumers are aware that the goods may be offered in different colours.

3. The trade mark applied for is a figurative mark containing figurative and stylised elements. It contains a black elongated hexagon inside which are white stylised letters in an original typeface. These figurative elements enhance the distinctiveness of the trade mark applied for.

4. Several EUTMs including the same colour name have been registered and some have been accepted in decisions of the Boards of Appeal, such as EUTM No 14 058 374, EUTM No 14 545 149, EUTM No 10 864 668 and EUTM No 15 120 793.

Pursuant to Article 75 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 waive the objection for the following goods:

Class 3 Soaps for personal use; Cosmetics; Scented sachets.

The objection is maintained for the remaining goods.

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).

In response to point 1) For a trade mark to be refused it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

The goods to which an objection has been raised and which are covered by the mark applied for concern everyday/mass consumption goods that target the average consumer. The Office maintains its opinion that the mark is clearly understandable as a colour by English-speaking consumers in the European Union.

In response to point 2) The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services. 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. Therefore, 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 kind, thus eclipsing any impression that the mark could indicate a trade origin.

Therefore, the Office maintains its position that the mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought from those of competitors. The mark simply refers to the colour of the goods.

In response to point 3) The trade mark at issue is made up of several components but, 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).

The Office maintains its position that the figurative elements of the mark are minimal and do not endow the mark applied for with any distinctive character. The font, style and basic colours in the mark applied for lack originality and the relevant consumer would not have to make an effort to read it; therefore, the mark is devoid of any distinctive character. Furthermore, the Office maintains its opinion that the black hexagon is a basic shape (Decision of Boards of Appeal R0175/2000-4).

In response to point 4) As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35). It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

The Office notes that the EUTMs cited by the applicant consist of more than a simple colour name (EUTM No 10 864 668), were registered for different goods (EUTM No 14 058 374 and EUTM No 14 545 149), include colour names in different languages (EUTM No 15 120 793) or were accepted on the basis of acquired distinctiveness. Therefore, they are not comparable to the mark applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 360 009 is hereby partly rejected for the following goods:

Class 9 Glasses; Sunglasses; Boxes [cases] for glasses; Cases for sunglasses; Bags adapted for laptops; Sleeves for laptops; Laptop carrying cases; Cases for mobile phones; Cell phone covers; Protective helmets; Spectacle frames; Cases and covers for tablets, PDAs (personal digital assistants) and MP3 players; hands-free kits, straps, wrist straps and neck straps for mobile telephones, smartphones, videophones, tablets, PDAs (personal digital assistants) and MP3 players.

Class 14 Jewelry; Lapel pins [jewellery]; Cufflinks; Watches; Wall clocks; jewelry and costume jewelry of precious metals and their alloys and coated therewith, namely rings, earrings, bracelets, brooches, pendants, charms, chains and chains for watches, necklaces, medals, medallions; precious stones, semi-precious stones; horological and chronometric instruments, watch bands, watch cases; key rings of precious metals and their alloys or coated therewith; presentation boxes for watches; jewelry cases.

Class 20 Pillows; Cushions; Beds; Mattresses; Furniture.

The application will be accepted for:

Class 3 Soaps for personal use; Perfumery; Colognes; Toilet water; Perfumes; Fragrances for personal use; Skin care lotions [cosmetic]; Antiperspirants; Deodorants for personal use; Cosmetics; After shave lotions; After-shave balms; Body wash; Non-medicated bath preparations; Non-medicated skin care preparations; Room fragrances; Potpourri; Aromatherapy oils; Fragranced beads for use in the home; Scented linen sprays; Scented sachets.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Petra CHARUZOVÁ

Enclosure: 5 pages