Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 22/05/2018

LANE IP LIMITED

2 Throgmorton Avenue

London, EC2N 2DG

REINO UNIDO

Application No:	017441411
Your reference:	0321.0911
Trade mark:	INSTANT MAGIC FACIAL MASK
Mark type:	Word mark
Applicant:	Islestarr Holdings Limited Unit 5, 50 Brook Green, Hammersmith London W6 7BJ REINO UNIDO

The Office raised an objection on 22/11/2017 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.

Following an extension of two months, the applicant submitted its observations on 27/03/2018, which may be summarised as follows:

1. No minimum level of imagination or artistic creativity is required in order to overcome Article 7(1)(b).

2. The Office provides a definition taken from Oxford English Dictionaries that cannot apply to the goods for which registration is sought; however, having reviewed the entry, the applicant contends that the conclusion reached based upon this single sentence is incorrect. The placement of the chosen definition, as a subsection of point 1, clearly demonstrates that the meaning of this definition is that the ‘desired results’ of the Office’s chosen definition are achieved through supernatural powers. The mark ‘INSTANT MAGIC FACIAL MASK’ could be considered vaguely allusive or suggestive of the positive effects of using a small number of the goods at issue. It has the minimum level of distinctiveness required in order to function as a trade mark. Descriptiveness must be assessed specifically in relation to the specific goods at issue, and the mere fact that a word is contained and defined in dictionaries does not mean that the mark is descriptive.

3. The Office has not considered the overall impression of the mark, which results from the use of the four words composing the sign in combination, in the context of the goods against which the objection has been raised.

4. The Office provides a definition of two of the words contained within the mark, but neglects to consider the remaining words of the mark applied for, FACIAL MASK. A facial mask is applied after cleaning and exfoliation. The Office’s definition, ‘a very effective and immediate face treatment’, cannot apply to all the goods for which registration is sought, as these goods, rather than constituting the individual components of the treatment referred to, are intended to be added to the treatment, which is the final product. The objections must be waived where the goods concerned do not fall within meaning that the Office contends the mark has.

5. In accordance with BABY-DRY (20/09/2001, C‑383/99 P, Baby‑Dry, EU:C:2001:461, § 39), this must be considered to confer distinctive character on the word combination ‘INSTANT MAGIC FACIAL MASK’, enabling the relevant public to identify the origin of the goods and distinguish them from those of other undertakings.

6. The mark has been protected by the UKIPO with registration No 3 229 512 for the same goods as the present application.

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).

Since the trade mark 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 mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

1. The objection sent on 19/01/2018 was based not on the level of imagination or artistic creativity, but on the fact that the mark describes certain characteristics of the goods for which protection is sought and is therefore devoid of any distinctive character.

2. The contested sign is the word mark ‘INSTANT MAGIC FACIAL MASK’, which the relevant consumers will perceive as consisting of four elements, namely ‘INSTANT’, meaning happening or coming immediately (information extracted from Oxford Living Dictionaries on 21/11/2017 at https://en.oxforddictionaries.com/definition/instant), ‘MAGIC’, meaning very effective in producing the desired results (information extracted from Oxford Living Dictionaries on 21/11/2017 at https://en.oxforddictionaries.com/definition/magic), and ‘FACIAL MASK’. Therefore, the relevant English-speaking consumer will understand the sign as having the following meaning, as stated in the notification of 22/11/2017: a very effective and immediate face treatment. The meaning of the mark will be clear to the average English-speaking consumers, who will immediately and without any difficulty establish a direct and specific link between the mark and the characteristics of the goods to which an objection has been raised and for which registration is sought.

In the present case, there is nothing subtle, indirect, concealed or vague about the message conveyed by the mark. The mark ‘INSTANT MAGIC FACIAL MASK’, in relation to the contested goods, immediately informs the English-speaking consumer, without further reflection, of the kind and quality of the goods in question; therefore, the relevant public would not be required to undertake any mental steps to ascertain the meaning of the mark applied for.

In the sign ‘INSTANT MAGIC FACIAL MASK’, there is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as grammatical analysis, before they would understand the meaning of the mark in relation to the goods in question. Consequently, the meaning conveyed is explicit, and the mark will not be perceived as suggestive or allusive by the relevant consumers. As a result, and considered as a whole, the mark ‘INSTANT MAGIC FACIAL MASK’ is not distinctive, even to the minimal degree required for registrability, since it is incapable of indicating the commercial origin of the goods in question.

Even though the dictionary definition supplied by the Office could not apply to the contested goods, as soon as the relevant consumers, who are well aware of the extensive use made of hyperbole in commercial language, see the trade mark applied to those goods, they will understand that the sign refers to goods that provide a very effective and immediate face treatment. In its current practice, the Office first explains the meaning/perception by the relevant public of the sign and only then provides dictionary references backing up that meaning, if need be (dictionary entries are not obligatory but optional).

The applicant argues that the mere fact that a word is contained and defined in dictionaries does not mean that the mark is descriptive. However, the assessment of a trade mark must be conducted in the context of the goods for which registration is sought. In the present case, this context is a significant interpretative aid in understanding how consumers will perceive the contested mark. Even though the mark could be considered somewhat vague in its meaning when viewed in isolation, any such vagueness or lack of clarity will be minimised or eliminated when consumers encounter the mark in the context of the relevant goods.

EU trade mark law does not require that a word actually be part of normal usage by the applicant’s competitors or included in a dictionary to warrant its refusal as an EU trade mark. Rather, what is essential is whether or not it contains an unequivocal message serving to identify a characteristic of the goods and services in question and whether or not the sign can be used for descriptive purposes (see 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 97).

3. Contrary to the applicant’s assertions, the sign ‘INSTANT MAGIC FACIAL MASK’ has been considered as a whole and presents no unusual combination of words that might require something of the relevant consumers, such as grammatical analysis, before they would understand the meaning of the mark in relation to the goods in question. The word combination does not contain any element that would make it easily memorable, bearing in mind the relevant context as seen above. The mere fact that it is composed of four basic English words in combination is insufficient to endow the mark with any distinctive character.

4. The applicant claims that the objection was applied to all the goods for which registration is sought. However, the notification dated 22/11/2017 is a partial objection; therefore, it applies only to the goods specified by the Office. Moreover, the section ‘Deadline for a reply’ mentioned again those goods to which the objection applied and that would be rejected, but the Office also indicated those goods for which the application would proceed.

Even though not all the goods to which an objection was raised are facial masks, in the Office’s view the goods to which an objection was raised can be ancillary and closely related, given that a facial mask is a skin care treatment for cleaning or smoothing the face. There are different kinds of facial masks with different purposes; nevertheless, a facial mask can be combined with other products either after or before the application, for instance to moisturise, cleanse or delay signs of ageing; before the application, the consumer can clean his or her face with soap or use preparations and products for removing make-up, for instance cotton sticks or cotton wool; after the application of a facial mask, it is possible to combine the treatment with the application of cosmetics or make-up, such as lipsticks, lip gloss, eyebrow cosmetics, eyebrow pencils and false eyelashes. Moreover, the cosmetics referred to may be seen as having additional properties to those normally expected from them (similar to a facial mask). The essential oils are used for skin care, so their use only supplements the use of a facial mask.

5. The sign applied for is not comparable to the mark ‘Baby-Dry’, which was the subject of the judgment of the Court of Justice cited by the applicant in its observations (20/09/2001, C‑383/99 P, Baby‑Dry, EU:C:2001:461), since the mark applied for is not an unusual juxtaposition of words and it cannot be said that the words ‘INSTANT MAGIC FACIAL MASK’ are uncommon in English.

6. Regarding the UKIPO registration and the priority claimed before the Office, 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/international system. Consequently, the registrability of a sign as a European Union trade mark can be assessed only on the basis of the relevant EU legislation. 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; therefore, the abovementioned registration cannot lead to a different result. Furthermore, the UK is only one of the English-speaking territories of the EU and acceptance by the UKIPO is not sufficient to consider the mark distinctive and therefore registrable.

Furthermore, Article 36 EUTMR (‘Effect of priority right’) lays down that the right of priority shall have the effect that the date of priority shall count as the date of filing of the EU trade mark application for the purposes of establishing which rights take precedence. Moreover, even if the meaning of the mark were assessed as from the date of this priority claim, the result would be the same.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods and services of one undertaking from those of its competitors.

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 17 441 411 ‘INSTANT MAGIC FACIAL MASK’ is hereby rejected for the following goods:

Class 3 Cosmetics, make up; skin care preparations; lipsticks; lip gloss; make-up powder and foundation; moisturisers; beauty care preparations, body care preparations, essential oils for personal use; preparations and products for removing make-up; creams and conditioners for the face; beauty masks; adhesives for cosmetic purposes; after-shave lotions; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; aromatics [essential oils]; astringents for cosmetic purposes; balms other than for medical purposes; bergamot oil; cakes of toilet soap; cedarwood (essential oils of-); citron (essential oils of-); cleansing milk for toilet purposes; cosmetic kits; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic-); creams (skin whitening-); essential oils; ethereal essences; ethereal oils; eyebrow cosmetics; eyebrow pencils; eyelashes (cosmetic preparations for-); jasmine oil; kits (cosmetic-); lavender oil; lavender water; lemon (essential oils of-); lotions for cosmetic purposes; lotions (tissues impregnated with cosmetic-); make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; milk (cleansing-) for toilet purposes; mint essence [essential oil]; oils for cosmetic purposes; pencils (cosmetic-); pencils (eyebrow-); pomades for cosmetic purposes; powder (make-up-); rose oil; shaving preparations; shaving soap; skin care (cosmetic preparations for-); skin whitening creams; soap; soap (cakes of-; )terpenes [essential oils]; tissues impregnated with cosmetic lotions; eyeshadow.

The application will proceed accordingly for the following goods:

Class 3 Lotions, creams and conditioners for hands and body; abrasive cloth; abrasive paper; abrasives; adhesives for affixing false hair; alum stones [astringents]; amber [perfume]; antiperspirant soap; antiperspirants [toiletries]; bath salts, not for medical purposes; baths (cosmetic preparations for-); beard dyes; bleaching preparations [decolorants] for cosmetic purposes; breath freshening sprays; breath freshening strips; colorants for toilet purposes; color-removing preparations; colour-brightening chemicals for household purposes [laundry]; cosmetic preparations for slimming purposes; cosmetics for animals; dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; dyes (cosmetic-); eau de cologne; emery; essences (ethereal-); extracts of flowers [perfumes]; eyelashes (adhesives for affixing false-); eyelashes (false-); false eyelashes; false hair (adhesives for affixing-); false nails; flower perfumes (bases for-); flowers (extracts of-) [perfumes]; foot perspiration (soap for-); gels (dental bleaching-); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; incense; ionone [perfumery]; javelle water; jelly (petroleum-) for cosmetic purposes; joss sticks; mint for perfumery; musk [perfumery]; moustache wax; nail art stickers; nail care preparations; nail polish; nail varnish; nails (false-); neutralizers for permanent waving; oils for perfumes and scents; oils for toilet purposes; perfumery; perfumes; permanent waving (neutralizers for-); petroleum jelly for cosmetic purposes; polishes (denture-); pumice stone; shampoos; slimming purposes (cosmetic preparations for-); soap (antiperspirant-); soap (deodorant-); soap for foot perspiration; sprays (breath freshening-); strips (breath freshening-); sunscreen preparations; sun-tanning preparations [cosmetics]; talcum powder, for toilet use; toilet water; toiletries; transfers (decorative-) for cosmetic purposes; varnish (nail-); varnish-removing preparations; waving preparations for the hair; wax (depilatory-).

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.

Moises Paulo ROMERO CABRERA