Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/03/2018

LADAS & PARRY LLP

Temple Chambers, 3-7 Temple Avenue

London EC4Y 0DA

REINO UNIDO

Application No:	017365412
Your reference:	1T17697921
Trade mark:	SEXYSMOKY
Mark type:	Word mark
Applicant:	Bare Escentuals Beauty, Inc. 71 Stevenson Street, 22nd Floor San Francisco, CA 94105 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24/10/2017 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 01/12/2017 which may be summarised as follows.

• Applicant’s ‘SEXYSMOKY’ mark is not descriptive, since it does not immediately or directly describe Applicant’s goods.

• The SEXYSMOKY mark does not inform consumers in a direct and obvious manner about the kind, quality, or intended purpose of Applicant’s goods. In order to understand the nature of the mark in relation to the goods and services, a consumer would necessarily need to reflect further on the mark and its potential meanings.

• The Examiner premised the refusal to register Applicant’s mark on only a few pieces of evidence, including dictionary definitions of the term ‘SEXY’ and the term ‘SMOKY’ and three articles found on the internet. The evidence does not establish that the terms comprising Applicant’s mark, either individually or in combination, have an ordinary meaning in relation to Applicant’s goods that consumers would understand as providing immediate or direct information.

• At best, the Examiner’s evidence indicates that consumers understand the phrase “smoky eye” to refer to a particular style or look, and that consumers may find such a style alluring. The evidence does not establish that consumers would recognize the phrase ‘SEXYSMOKY’ without additional information to immediately refer to such a look.

• While Applicant maintains that the applied-for mark is inherently distinctive, applicant submits that the mark is, at a minimum, a suggestive or allusive mark. The phrase ‘SEXYSMOKY’ is not merely promotional or laudatory.

• Applicant submits that the applied-for mark is inherently distinctive per se as the mark combines two alliterative terms to create a rhyming sound pattern that will catch the attention of consumers to form a memorable impression. The applied-for mark is comprised of two component terms, SEXY and SMOKY, which both begin with sibilant “s” sounds and end with the long vowel sound “ɪ.”

• The meaning of the mark is open to interpretation. The term SMOKY has numerous relevant meanings. the term SEXY has a subjective meaning that differs from consumer to consumer, and therefore at best refers to “vague positive connotations” without referring to the goods themselves.

• The EUIPO has accepted numerous trade marks containing the terms ‘sexy’ or ‘smoky’ for similar or related goods in Class 3. The routine registration of the terms SEXY and SMOKY respectively, in connection with cosmetics and beauty products, indicates that consumers recognize the term as having the capacity to distinguish source, rather than serving as a merely laudatory element.

Decision

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.

In the present case, the Office does not reintroduce arguments which have already been discussed, but builds on those arguments and, in this refusal, addresses the arguments of the applicant.

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.

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).

‘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).

Explanation on the meaning of the words constituting ‘SEXYSMOKY’

As already explained in the enclosed notice of grounds for refusal, the trade mark applied for consists of the terms ‘sexy’ and ‘smoky’. Taken as a whole, the words ‘SEXYSMOKY’ immediately inform consumers without further reflection that the goods applied for are cosmetics and cosmetic preparations which can be used to create a sexy smoky look. The expression “Smokey eyes” refers to a particular technique of applying eye shadow. Therefore, sexy smoky describes the outcome of the application of that technique in order to create a smoky appearance of the eyes that provokes or intends to provoke sexual interest. Other cosmetics than eye shadow may as well create a sexy smoky look.

The relevant public

In the present case, the objectionable goods covered by the trade mark applied for are mass consumption goods and are mainly aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will vary from average to above average depending on price and sophistication of the goods. Moreover, since the sign ‘SEXYSMOKY’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

On the descriptive character of the trade mark applied for

The Applicant takes the view that its ‘SEXYSMOKY’ sign is not descriptive, since it does not immediately or directly describe Applicant’s goods. The ‘SEXYSMOKY’ sign does not inform consumers in a direct and obvious manner about the kind, quality, or intended purpose of Applicant’s goods. In order to understand the nature of the sign in relation to the goods and services, a consumer would necessarily need to reflect further on the sign and its potential meanings.

Since the sign 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 trade mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31). A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

In the present case, the trade mark applied for considered as a whole, does not require any additional mental effort in order to lead the relevant public to the perception of describing the goods at issue as cosmetics and cosmetic preparations which create a sexy smoky look. The description ‘SEXYSMOKY’ could function in relation to the rejected goods, for example eye shadow, emphasizing their particular characteristic to create such a look. Therefore, the Office maintains that, taken as a whole, the term ‘SEXYSMOKY’ immediately informs consumers, without further reflection, that the goods applied for create a sexy smoky look, and that there are no mental steps required to deduce the meaning of the words ‘SEXYSMOKY’. This is in itself a characteristic of the goods, without the need to specify further, of what the terms ‘sexy’ or ‘smoky’ may consist of subjectively. Therefore, the sign conveys obvious and direct information regarding the intended purpose, kind or quality of the goods in question. The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind.

Although the term applied for ‘SEXYSMOKY’ does not appear in dictionaries, this is not decisive when assessing the eligibility of the sign for registration. 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 sign 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). Taking into consideration the arguments elaborated above, the combination of the words ‘sexy’ and ‘smoky’ cannot be viewed as an unusual or ambiguous combination or as a lexical invention capable of giving the sign applied for a distinctive character (26/01/2006, R 0366/2005-4, PERSONAL PAGES, § 20).

As regards the argument that insufficient evidence was provided, 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. (15/03/2006, T-129/04, Plastikflaschenform, EU:T:2006:84, § 19). The Operations Department applies the same standard.

It follows that the link between the words ‘SEXYSMOKY’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR. 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.

On the non-distinctive character of the trade mark

The Applicant states that the applied-for mark is inherently distinctive, or at least, suggestive or allusive. The phrase ‘SEXYSMOKY’ is not merely promotional or laudatory. The Applicant submits that the applied-for mark is inherently distinctive per se as the sign combines two alliterative terms to create a rhyming sound pattern that will catch the attention of consumers to form a memorable impression. The applied-for mark is comprised of two component terms, SEXY and SMOKY, which both begin with sibilant “s” sounds and end with the long vowel sound “ɪ.” The meaning of the sign is open to interpretation. The term SMOKY has numerous relevant meanings. the term SEXY has a subjective meaning that differs from consumer to consumer, and therefore at best refers to ‘vague positive connotations’ without referring to the goods themselves.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

As mentioned in the enclosed notice, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21).

This is clearly applicable to the present case, as has been demonstrated above. Given that the sign has a clearly descriptive meaning in relation to the goods applied for, the impact of the sign on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the sign could indicate a trade origin.

The meaning of the sign is not open to interpretation. The case that the applicant refers to is not relevant to the case at hand. ‘Vorsprung durch Technik’ was a suggestive slogan which was deemed to require interpretation on the part of the public. The present sign is not a slogan but rather a neologism composed of two descriptive words placed together. No interpretation as to their meaning is required by the relevant public, due to their clear descriptive nature both separately and together. Therefore this argument of the applicant must be set aside. As explained above, out of several possible meanings of the terms, one is sufficient to deem the term descriptive in relation to the goods at hand. This would still be true, even if the sign created a rhyming sound pattern, since the consumer will focus its attention rather on the descriptive meaning of the words than on their random sound pattern.

The sign for which protection is sought would simply be seen in the relevant market sector as a laudatory expression, since the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that they enable their users to achieve a sexy smoky look by applying the cosmetics. The consumers may, for example, also feel more attractive with their achieved sexy smoky look. The words which constitute the sign are commonly used in the relevant market in connection with the marketing of the goods concerned. Consequently, the sign is neither suggestive nor allusive. Therefore, the sign is devoid of distinctive character.

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 (05/03/2003, T-194/01, Soap device, EU:T:2003:53, § 48). The applicant has not shown that the trade mark in question has a distinctive character and so it must be refused protection. It is in the public interest that descriptive signs should be free to be used by all and not reserved to undertaking alone because they have been registered as trade marks (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31).

Previous case law from the Office

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; and 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 applicant submitted the following examples for EUTM registrations containing the term ‘SEXY’ in Class 3:

• 001052380 – ‘SEXY HAIR’

• 001968999 – ‘HOT SEXY HIGHLIGHTS’

• 006292445 – ‘SEXY’

• 002548469 – ‘SEXY SEXY WOMAN’

• 003952033 – ‘SO…? SEXY’

• 004887634 – ‘SEXY SECRETS’

• 005116611 – ‘SIZE SEXY’

• 009640475 – ‘PLAY SEXY’

The applicant submitted the following examples for EUTM registrations containing the term ‘SMOKY’:

• 008667297 – ‘SMOKY LASH’

• 012042651 – ‘SMOKY STRETCH’

• 012301594 – ‘SMOKY EXTRAVAGANT’

• 014229413 – ‘NAKED SMOKY’

However, these trade marks differ from the sign at issue, in particular since they do not coincide in the two terms ‘sexy’ and ‘smoky’, but also since they include different additional verbal elements. Therefore, they have a different overall meaning in relation to the goods in question. Furthermore, it should be pointed out that the submitted examples of EUTM registrations were carried out under different administrative practice standards. Since then, the practice of registration has evolved in accordance with the highest juridical jurisprudence.

The mere existence of trade marks containing the terms ‘sexy’ or ‘smoky’ does not serve as an indication of a valid claim to register these terms together for goods in Class 3, since there are no indicates that consumers recognize the term as having the capacity to distinguish source, rather than serving as a merely laudatory element.

As has been established by the Office above, ‘SEXYSMOKY’ as a whole is descriptive and non-distinctive. The fact that the attention of the consumer varies from average to above average, confirms that they will have no doubt that the combination ‘SEXYSMOKY’ refers to the characteristics of the goods. The consumers that use these products and know the market will not perceive the sign as designating commercial origin.

Outcome

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 17 365 412 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.

Frank MANTEY