Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/07/2018

GREAVES BREWSTER LLP

Copa House, Station Road

Cheddar, Somerset, BS27 3AH

REINO UNIDO

Application No:	017366601
Your reference:	KH/T1607EU00
Trade mark:
Mark type:	Figurative mark
Applicant:	Unex Designs Ltd Woodland Business Park Torquay, Devon, TQ2 7AT REINO UNIDO

The Office raised an objection on 03/11/2017 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.

The applicant submitted its observations on 21/02/2018, which may be summarised as follows.

1. The mark is not descriptive and is distinctive.

2. The mark was accepted for registration in the UK on the grounds of distinctiveness acquired through use.

3. The sign has acquired distinctiveness through use and the applicant submits evidence to support this claim.

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.

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).

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.

‘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).

The Office maintains that the mark is descriptive of the kind and intended purpose of the goods in question because the relevant consumer, notwithstanding certain stylised elements, would perceive it as providing the obvious and clear information that the goods are medicines such as herbal preparations and products used for treating diseases or undesirable conditions in pets. Consequently, it is also devoid of any distinctive character, as it is not able to serve as a badge of origin.

As regards the applicant’s argument that the mark was accepted for registration in the UK on the grounds of distinctiveness acquired through use, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

In addition to the abovementioned arguments, in the application for the registration of the EUTM, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. You also indicated that this claim was meant as a primary claim.

In your claim, you indicated that the trade mark applied for had acquired distinctiveness through use in relation to herbal preparations for treating stress in pets; veterinary herbal products.

In support of your claim, you submitted evidence of use on 21/02/2018.

The evidence to be taken into account is, in particular, the following:

1. witness statement by the Managing Director of Unex Designs Limited indicating, inter alia:

   1. dates of first launch of Pet Remedy in some Member States;

   2. export sales from the UK into some EU countries between 2012 and 2017;

   3. market share of Pet Remedy products in the UK, 3-5%, being used in over 3 000 veterinary practices and 180 different rescue organisations in the UK;

   4. evidence of Pet Remedy presence at various events in the UK since 2013;

2. list of top customers for 2016 with turnover figures;

3. awards won in the UK in the last 5 years;

4. Google printout dated 01/06/2017 showing the first page of hits for ‘pet remedy’;

5. Facebook statistics for the Pet Remedy page;

6. Amazon reviews dated prior to the date of the application;

7. sample of UK publications from 2013 containing advertisements for Pet Remedy products;

8. information about and/or Facebook details of distributors in Belgium, Portugal, Finland, Greece, France and Germany and extracts from Amazon Italy, Spain and Germany.

9. advertising, marketing and sales figures for 2014-2017.

Assessment of the evidence

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The Office indicated, in its notice of 03/11/2017, that the relevant public was English-speaking public. For the purposes of the assessment of the geographical extent of use of , the English-speaking part of the public is considered the public in the United Kingdom, Ireland and Malta.

A trade mark must be assessed in relation to the goods in respect of which registration of the sign is sought and in relation to the perception of the relevant public.

1. As regards the witness statement by the Managing Director of Unex Designs Limited, as far as the probative value of this kind of evidence is concerned, statements drawn up by the applicant itself or its employees are generally given less weight than independent evidence. This is because the perceptions of the applicant may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence or evidence originating from independent sources. In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

2. The list of top customers in itself is not sufficient to prove acquired distinctiveness. It is not possible to determine where most of the customers listed come from. In addition, the turnover numbers next to each customer are too general to allow specific conclusions to be drawn about the use of the trade mark. The applicant has failed to provide precise turnover figures and demonstrate their relationship to the mark applied for, or their link to the relevant goods.

3. The awards won demonstrate that the product marketed under the sign Pet Remedy is good but do not say anything about the sign and the perception of it by the relevant public.

4. As regards the Google printout, the Office notes that the applicant’s products appear on the first page of hits. However, the consumer perception of the sign cannot be established based solely on this evidence.

5. The numbers of fans and followers on Facebook or Twitter do not say anything about the real use of the sign on the market. This evidence is therefore not sufficient in itself.

6. The Amazon reviews provide information about customer satisfaction with the applicant’s product(s). However, they do not give any information about the customer perception of the sign applied for. Based on this evidence, the Office is not able to conclude that the customers bought the product because of the sign under which it is marketed. There are various different criteria that customers use when purchasing products online (price, product characteristics, delivery time etc.)

7. The Office notes the sample of advertisements in UK publications. However, information about the circulation of these publications is missing. It is not clear how many individuals or organisations these publications reach. Moreover, information that could demonstrate the link between the advertisements and consumer perception is missing.

8. The information about and/or Facebook details of distributors in Belgium, Portugal, Finland, Greece, France and Germany and details from Amazon Italy, Spain and Germany are not taken into account, as they relate to irrelevant territories. The relevant territories for which acquired distinctiveness must be proven are the UK, Ireland and Malta.

9. As regards the advertising, marketing and sales figures for 2014-2017, the Office is not able to determine what territories these figures cover. It is not clear where the advertising took place or how large an audience it reached. In the same vein, the sales figures do not contain information about relevant territories where the goods were sold.

In general, the applicant did not submit enough evidence from third parties (e.g. invoices or sales brochures). In addition, most of the abovementioned evidence relates to only the United Kingdom. Relevant evidence from Ireland and Malta is missing.

There is a lack of evidence from independent sources such as trade associations, consumer organisations or chambers of commerce to demonstrate the degree of recognition of the mark on the market.

From the evidence submitted by the applicant, it is obvious that the sign is being used. However, the applicant has not sufficiently demonstrated how the relevant consumer perceives the sign in relation to the goods for which registration is sought.

The evidence must demonstrate that a significant proportion of the relevant public for the goods for which registration is sought in the relevant territory sees the trade mark as identifying the relevant goods of a specific undertaking; in other words, that the use made of the mark has linked that mark in the minds of the relevant public with a specific company’s goods, regardless of the fact that the wording at issue is descriptive and lacks inherent distinctiveness.

In conclusion, there is no evidence that has acquired distinctiveness through use.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 366 601 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.

Stanislava MIKULOVA