Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 04/06/2018

GÖHMANN Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft mbB

Landschaftstraße 6

D-30159 Hannover

ALEMANIA

Application No:	017363318
Your reference:	SOFTFOAM
Trade mark:	SOFTFOAM
Mark type:	Figurative mark
Applicant:	PUMA SE Intellectual Property Department Attn.: Elena Minea PUMA Way 1 D-91074 Herzogenaurach ALEMANIA

The Office raised an objection on 21/11/2017 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.

After an extension of two months, the applicant submitted its observations on 08/01/2018, which may be summarised as follows:

• The element ‘FOAM’ contained in the subject mark has a number of meanings, as demonstrated by the attached dictionary definitions.

• The trade mark as a whole is not descriptive and lacking distinctive character, the sign does not create any link with the goods and services. The words ‘SOFT’ and ‘FOAM’ would not be used in the same sentence to refer to footwear. Furthermore, the combination as a whole, ‘SOFTFOAM’, is unusual in relation to footwear; therefore, the mark has a sufficient degree of creativity and imaginativeness to be distinctive.

• The Office has previously registered other similar 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.

General remarks

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 services’ 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).

By prohibiting the registration as European Union trademarks 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 trademarks.

(23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

‘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’ (26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34).

Applicant´s remarks

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The application in question seeks registration for the sign ‘SOFTFOAM’. As already pointed out in the previous communication, ‘SOFTFOAM’ is a soft rubber which is used to make mattresses and cushions.

As regard to the applicant’s arguments regarding the various meanings of the element FOAM contained within the mark, the Office would advise that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

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, emphasis added.)

Although the word ‘FOAM’ has, as pointed out by the applicant, different meanings, this does not lead automatically to the mark being distinctive and non-descriptive.

The applicant argues that there is no direct link between the mark ‘SOFTFOAM’ and the goods for which registration is sought, namely footwear. The words ‘SOFT’ and ‘FOAM’ would not be used in the same sentence to refer to footwear. Furthermore, the combination as a whole, ‘SOFTFOAM’, is unusual in relation to footwear; therefore, the mark has a sufficient degree of creativity and imaginativeness to be distinctive.

The trade mark must be assessed in relation to the goods for which registration is sought, namely footwear. When encountering the mark ‘SOFTFOAM’ in relation to shoes, for example, the relevant consumer would immediately and without further reflection perceive the mark as claiming the shoes contain soft foam, for example to give cushioning in the soles or to make them lightweight.

Contrary to the applicant’s arguments, ‘SOFT’ and ‘FOAM’ are commonly used together to refer to the comfort of a shoe. The fact that the two words are joined together is not sufficient to make the mark distinctive, as the combination as a whole does not create a new neologism that is sufficiently different from that produced by the mere combination of the composite elements.

The Office therefore maintains that the mark ‘SOFTFOAM’ has a direct link with the goods in question and would be perceived immediately as information about the proportion of a component, namely soft foam, and the quality, namely added comfort as a feature, of the goods in question. Due to the clear descriptive message of the mark and because the mark is considered not striking or unusual in relation to the goods in question, the mark is also non-distinctive.

Finally, as regards the applicant’s argument that a number of similar registrations have been accepted by 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 European Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 363 318 is hereby rejected for the following goods:

Class 25 Footwear.

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