Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 24/07/2018

VAN INNIS & DELARUE

Wapenstraat 14

B-2000 Antwerp

BÉLGICA

Application No:	017458803
Your reference:	17.0299AD.EU
Trade mark:
Mark type:	Position
Applicant:	Thom Browne, Inc. 240 W 35th Street, Suite 1600, 16th Floor New York New York 10001 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/11/2017 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 23/03/2018, which may be summarised as follows:

1. A subsidiary claim of acquired distinctiveness

2. The five contiguous vertical lines are distinctive

3. The Office has similar trade mark registrations for class 25.

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.

Preliminary remark

The mark at issue is a position mark applied for five contiguous vertical bands, the first, third and fifth bands being white, the second band being red, and the fourth band being blue placed along the placket. The first and fifth white bands are of a smaller width than the second, third, and fourth vertical bands.

This is the representation of the mark:

The goods applied for are in class 25: Clothing, namely, shirts, T-shirts, polo shirts, oxford shirts, blouses.

A subsidiary claim of acquired distinctiveness

The Office takes due cognisance of the request of the applicant, claiming a subsidiary claim of acquired distinctiveness.

The five contiguous vertical lines are distinctive

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31).

The applicant holds that the five lines are distinctive. While, the applicant admits that there are similar combination of colours on the market, the colour and shape combination of the mark applied for is distinctive enough so as to allow consumers to identify the products coming from the applicant from those coming from different businesses.

The Office is not convinced by the applicant’s arguments. The mark in question simply consists of a red, white and blue vertical stripes placed on the placket of a shirt. As demonstrated by the Office in its letter, there is nothing original about this design. The Office has provided examples by several clothes companies (El Ganso, Purificación Garcia, Piel de Toro and El Capote) with very similar designs on their shirts. While it is true that none of the designs quoted are identical to the one applied for by the applicant, however it is also true that the mark applied for does not significantly depart from the designs cited. Established case law is clear in this regard – the criteria set for distinctiveness is not whether there are ‘identical’ norms or customs of the sector, in this case vertical lines placed on a placket, but whether the mark significantly departs from the norm or customs. The Office believes that the mark applied for, is not significantly different from the examples cited by the Office. Although one can argue that the mark applied for and the examples cited are different, however the Office believes that the mark is not significantly different from the examples cited.

The Office refers the applicant to two cases, which the Office believes are very similar to the case at hand: Case T-64/15 - and Case R 1232/2017-2 . The trade marks applied for in these cases were also for clothing in class 25. The marks in these cases consist of stripes and chevrons respectively. In both cases, the Courts and the Board of Appeal held that the marks are not distinctive and hence were refused registration for class 25.

In particular the Office notes that the Court in Case T-64/15 in paragraph 20 held that:

First, as the Board of Appeal correctly observed in the contested decision, the pattern concerned is extremely simple which, as such, lacks a distinctive character (paragraphs 22, 32 and 33 of the contested decision).

Interpreting by analogy, the Office believes that the mark in question is also extremely simple and lacks distinctiveness. The mark in question is not capable of constituting, for the average consumer an indication of the commercial origin of the products at issue. The lines on the placket will not be construed as a trade mark or a business identifier, but as a banal decoration on the shirt, the main purpose of which is to give a particular sense of style and fashion to the product.

The Office has similar trade mark registrations for class 25.

The applicant holds that the Office has registered a number of trade marks similar to the application at hand.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 458 803 is declared to be non-distinctive pursuant to Article 7(1)(b) for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Alistair BUGEJA