Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/03/2018

LADAS & PARRY LLP

Temple Chambers, 3-7 Temple Avenue

London EC4Y 0DA

REINO UNIDO

Application No:	017398521
Your reference:	1T17698138
Trade mark:	PILLOWPOUT
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 10/11/2017 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 30/11/2017, which may be summarised as follows.

1. Applicant’s PILLOWPOUT mark is comprised of two component terms, PILLOW and POUT, which both begin with plosive “p” sounds. The alliteration binds the components of the mark together to create a sign whose impression as a whole is greater than any meanings derived from descriptive capacities the individual terms may have. There is no plain relationship between the common meanings of the terms PILLOW and POUT. The combination here of the two terms, both nouns, into a singular trademark creates a juxtaposition that is unusual in nature, thereby conveying an impression sufficiently removed from the meanings of the individual terms.

2. The term POUT refers to a facial expression often used to convey sullenness or displeasure.

3. The term PILLOW has numerous relevant meanings or connotations. In addition to the possible connotation suggested by the Examiner, a comparative reference to pillows could also invoke the cushioning nature of pillows to suggest a purpose of giving their users softer lips. PILLOW could also refer to pillows as a means of drawing a figurative connection to sleep or beds. In relation with cosmetics goods, PILLOW could therefore imply that the goods are meant for application overnight.

4. The Examiner’s refusal to register Applicant’s mark is supported by only two pieces of evidence, in the form of articles found on the internet. Neither submission shows use of the actually applied-for phrase PILLOWPOUT, but rather the phrase “pillowy pout.” One of the two submitted articles is from a website targeted toward consumers in New York City in the United States, and is therefore not relevant to a determination of how consumers in the European Union would perceive the mark. The evidence therefore does not establish that the actual 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.

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)(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).

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).

This clearly applies to the present case. The sign ‘PILLOWPOUT’ is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. In the present case, the average English-speaking consumer would understand the sign as a misspelling of the term ‘PILLOWYPOUT’ which means to have bigger fuller lips. This misspelling would go unnoticed to the average consumer who is also used in seeing such misspellings in the relevant trade and because phonetically they are similar, since when conjoint the ‘y’ is not that pronounced between the consonants ‘w’ and ‘p’. Therefore the Office maintains its position that the relevant consumers would perceive the sign as providing information about the intended purpose of the goods in question.

In terms of the applicant’s argument that the term ‘pillow’ could have different meaning in relation to the objected goods, the Office reminds 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.)

The Office does not agree with the applicant that the term POUT refers to a facial expression used to convey sullenness or displeasure. Descriptiveness must not be assessed in the abstract without reference to the context in which a mark is likely to be used. In particular, reference must be made to the goods for which the trade mark will be used. In the present case the word ‘pout’ is used in the relevant trade of cosmetics to designate plump lips as illustrated by the following references : “Scientists reveal what makes the perfect pout (and why Emma Watson has the best lips in Hollywood)” from the Mail Online, http://www.dailymail.co.uk/sciencetech/article-4386610/Scientists-reveal-makes-perfect-pout.html, 06/04/2017, “5 Simple Tips And Exercises To Get The Perfect Pout’ http://www.stylecraze.com/articles/get-the-perfect-pout/#gref , 29/11/2017).

As regards the argument that it is up to the Office to show that other similar signs are used in the market, 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).

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 Office has provided two examples to illustrate the descriptive meaning of the sign in relation to the goods for which protection was sought. One of them was from the widely read in the UK online version of the Evening Standard and the other from a US source. As this look was first launched by US celebrities, as illustrated in both extracts, it is evident that this trend first appeared in the US and then was rapidly spread into Europe.

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 17 398 521 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.

Aliki SPANDAGOU