Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/06/2018

Bomhard IP, S.L.

C/Bilbao, 1, 5º

E-03001 Alicante

ESPAÑA

Application No:	017545518
Your reference:	8670-gru-21555/EM
Trade mark:	MAGIC BERRY
Mark type:	Word mark
Applicant:	Beiersdorf AG Unnastr. 48 D-20253 Hamburg ALEMANIA

The Office raised an objection on 18/12/2017 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 16/04/2018, which may be summarized as follows.

1. No descriptive character: The sign MAGIC BERRY constitutes an unusual word combination that is fanciful and has no immediate clear meaning to the average English-speaking consumer in relation to the concerned goods in class 3 (cosmetics and cosmetic preparations). The Office assumed that the word “MAGIC” is used as an uncountable noun and has, thus, erroneously submitted the definition of the expression “the magic of”. In the current case, the word “MAGIC” will be perceived by the relevant consumers as an adjective qualifying the noun “BERRY” meaning: “Used in magic or working by magic; having or apparently having supernatural powers [emphasis added]”. The definition of ‘BERRY’ provided by the Office is not disputed. However, the combination of both terms is semantically nonsensical in relation to non-medicated cosmetics and cosmetic bath and shower preparations. Even if the word “MAGIC” is (erroneously) perceived as an uncountable noun, the term is, then, grammatically incorrect (the correct being e.g. “the magic of a berry”) and a new without any clear meaning in relation to the abovementioned goods.

2. No direct and unequivocal link between the mark and the goods at issue. A mental effort would be required from the customers to give any meaning to MAGIC BERRY as the term does not convey a direct and immediately understandable meaning. Contrary to the Office’s argumentation, the mark applied for as a whole, creates an unclear message which is far removed from any potential meanings of the sum of its parts and, therefore, it clearly does not provide information regarding the intended purpose of the goods at issue (to accentuate a person’s natural colouring and/or improve their physical appearance and skin condition) or the quality of the goods at issue. The Office´s argumentation that the goods applied for “are made of or contain extract of berries” is therefore flawed. What matters is the assessment of the mark as a whole. MAGIC BERRY describes neither the quality nor the intended purpose of the goods at issue.

3. No descriptive use demonstrated by the Office. The two presented screenshots/weblinks clearly do not serves as basis fort he objection as they are not real examples of customary usage of the term MAGIC BERRY, for or in connection to the goods at issue, namely “non-medicated cosmetics; cosmetic bath and shower preparations”. Moreover, the EUIPO Guidelines state that the evidence showing the alleged descriptive character of a sign should be “carefully assessed in order to find out whether the word is actually used in a descriptive manner, as often the difference between descriptive and trade mark use on the internet is vague and the internet contains a vast amount of unstructured, unverified information or statements”.

4. Precedent value. Numerous similar marks have been accepted for publication by the Office for goods in class 3, e.g. 44 EUTM applications accepted in the last five years containing the word “MAGIC” for, inter alia, goods in class 3.

MAGIC as a standalone for goods in class 3, such as the following:

 MAGIC, No. 8321515 for “Sizing and starch”;

 MAGIC, No. 1886910 for, inter alia, “Soaps, cosmetics, all for cosmetic purposes”;

 MAGIC, No. 689711 for, inter alia, “Depilatories for facial hair in the form of powder or cream”

MAGIC combination marks for goods in class 3, such as the following:

 TEINT MAGIC, No. 12928719

 CONCENTRATED MAGIC, No. 12756904

 MAGICSTRIPES, No. 12737995

 MAGIC PEARL, No. 17543802

 MAGIC HOUR, No. 17354911

 MAGIC SLIMY, No. 17238221

 MAGIC TOUCH, No. 16217283

 MAGIC FOUNDATION, No. 16211501

 MAGIC RETOUCH, No. 13926662

BERRY as a standalone has been registered for goods in class 3:

 No. 12081964 for, inter alia, “Cosmetics; Pencils (Cosmetics-); Creams (Cosmetics-)”;

 No. 9320599 for, inter alia, “Cosmetics”.

BERRY combination marks (7 examples cited) allowed for publication.

The abovementioned marks serve to highlight the threshold of distinctiveness for the purpose of the registrability assessment in relation to marks comprising the words “MAGIC” or “BERRY”.

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. The EUIPO is under a duty to exercise its powers in accordance with the general principles of European law, such as the principle of equal treatment and the principle of sound administration (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, §§ 73 and 74).

5. No ground for refusal resulting from Article 7(1)(b) EUTMR as it is entirely based on the alleged descriptive character of the trade mark applied for. As argued above, the applied sign is not a purely descriptive term for the claimed goods in class 3 and, therefore, Article 7(1)(b) EUTMR does not apply.

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.

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).

In the official communication sent on 18/12/2017, the analysis of descriptiveness of the word mark MAGIC BERRY was based in the semantic meaning of the terms that compose the sign as conveyed by the Collins dictionary definitions (MAGIC: ‘If you refer to the magic of something, you mean that it has a special mysterious quality which makes it seem wonderful and exciting to you and which makes you feel happy’. BERRY: ‘Berries are small, round fruit that grow on a bush or a tree. Some berries are edible, for example blackberries and raspberries’). The applicant claimed that the definition of MAGIC provided by the Office is not accurate as it relates to an uncountable noun instead of an adjective. The Office agrees with such statement and proceeds to amend the conceptual definition accordingly below; although it underlines that the meaning does not change only its accurate application within the sentence according to its correct function as an adjective that modifies the noun expressing qualities of the same one (i.e. of ‘BERRY’):

MAGIC ‘Possessing or considered to possess mysterious powers; If you say that something is magic, you think it is very good or enjoyable’ (information extracted from Collins Dictionary on 22/06/2018 at https://www.collinsdictionary.com/dictionary/english/magic )

Therefore, according to the conceptual meaning of the elements constituting the sign and as established in the official communication, ‘the average English-speaking consumer would understand the sign as having the following meaning: A small and round fruit that grows on a bush or a tree that has a special mysterious quality which makes it seem wonderful’.

In addition, the reasoning establishing the relation between the semantic meaning of the applied sign MAGIC BERRY and the goods requested in class 3 is dully motivated in the official writ as follows:

the relevant consumer would perceive the sign as providing information that ‘the goods applied for, such as non-medicated cosmetics; cosmetic bath and shower preparations, are made of or contain extract of berries that have a special mysterious quality for the skin. Particularly, internet searches on the relevant market have shown that berries keep organ systems toned and help reducing skin damage (signs of aging), acne and black spots’.

and, in conformity with the new definition above included it could now be added:

‘or that are simply very good or enjoyable for the skin’.

In this regard, the Office disagrees with the applicant’s reasoning that

1. the combination of both terms is semantically nonsensical in relation to non-medicated cosmetics and cosmetic bath and shower preparations. The Office finds it rather weak just arguing that there is no connection among the meaning of the applied sign and the goods requested because the term MAGIC BERRY is grammatically incorrect (the correct being e.g. “the magic of a berry”), all without further reasoning.

2. the two presented weblinks clearly do not serve as basis for the objection as they are not real examples of descriptive customary usage of the term MAGIC BERRY, for or in connection to the goods at issue. The Office stresses that (a) the Australian website uses the term MAGIC BERRY with a clear descriptive nature as it refers to ‘Acai berry’ as a ‘magic berry’ (see in the website: ‘But first, what is this magic berry? Better known as Acai berry, it is shaped like a grape and is dark purple in colour. But first, what is this magic berry? Better known as Acai berry, it is shaped like a grape and is dark purple in colour’) and, therefore, not as an indication of commercial origin as stated by the applicant, and (b) the website related to Schizandra Berry uses the term ‘magic berry’ or ‘super berries’ to refer to those placed on the market today and are associated with radiant skin health. Blueberries, acai berry and even goji berry all contain high levels of skin affirming antioxidants, phytonutrients and vitamin compounds. Now there’s a new berry on the block you may not have heard of — schizandra’. In consequence, both sites show that on the relevant market of non-medicated cosmetics and bath and shower preparations, berries keep organ systems toned and help reducing skin damage (signs of aging), acne and black spots. Thus, the these characteristics description shall be available to be used by any undertaking under public interest purposes and not monopolized by one single company.

Moreover, in accordance with the judgement 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added, 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’. Therefore, the Office partially maintains that it is sufficient basis to object under descriptiveness when one of the possible meanings of the term MAGIC BERRY designates specific features of the goods concerned; in this case, ‘the quality’. Notwithstanding, in conformity with the reasoning of the applicant, the Office waives its assertion that the sign describes the ‘intended purpose’ of the goods in question, since as correctly argued by the applicant it is not pertinent in the current case and it was clearly a mistake during the examination process. Therefore, the applied sign is subject of the description of quality characteristics that shall be available to be used by any undertaking under public interest purposes.

From the perspective of the overall assessment of the applied sign, the term MAGIC BERRY, conversely to what is claimed by the applicant, it does not result as a fanciful and unusual composition of words with no direct and unequivocal link with the goods at issue. Moreover, as mentioned above, the sign is composed of elements that have a clear and unambiguous meaning and the significance of the sign as a whole is immediately apparent to the relevant consumer without any mental exertion. Therefore, there is nothing original, resonant, requiring interpretation or setting off a cognitive process in the minds of that public, when the sign is used for the goods at issue. Moreover, surely the relevant consumer, which is, reasonably well informed and reasonably observant and circumspect, will not take a mental effort with several steps to make any sense of the mark or to deduce the meaning of the term MAGIC BERRY. In consequence, the applied sign undoubtedly transmits to the relevant consumer a descriptive meaning in relation to the goods in question.

Lastly, although the applicant would have proved that the sign MAGIC BERRY does not constitute a ‘usual, meaningful expression’ in relation to the goods applied for, in accordance to the case-law of the European courts reflected before (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39), a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR.

In addition, even if the applied sign was not considered descriptive pursuant to Article 7(1)(c) EUTMR, MAGIC BERRY would simply be seen in the relevant market sector as a laudatory slogan, the function of which is to communicate an inspirational and motivational statement. 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 are made of or contain extract of berries (i) that have a special mysterious quality for the skin, which makes it wonderful, or (ii) that are simply very good or enjoyable for the skin, particularly, in comparison to alternative goods from other producers in the same relevant market. In other words, the expression MAGIC BERRY will be understood as a purely laudatory, generic description or designation of quality that relates in particular to the aim of the goods offered, and it is not capable of establishing a link to a particular undertaking and distinguishing, in the manner of a trade mark, the goods of the applicant from those of other undertakings that are active in the same field (see Board of Appeal decision, MAGIG SHAPER, Case R 2514/2015-5, of 26 October 2016, § 18).

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).

In consequence, with regard to the examples of registered trade marks listed by the applicant in the enclosures of the observations writ, although they present an analogous structure, particularly those combinations of [MAGIG + word(s)] and [BERRY + word(s)], and that they coincide, inter alia, in class 3 with the disputed sign, it shall be stressed that, every sign, like the one object of this writ, is examined by this Office based on its own merits and characteristics, in the light of the EUIPO current practice, and always in conformity with applicable provisions of the EUTMR and the relevant jurisprudence. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77; OHIM v Erpo Möbelwerk, § 45, and OHIM v BORCO-Marken-Import Matthiesen, § 45). In addition, during the examination process of any applied sign, the Office acts according to the exercise of circumscribed powers and not as a matter of discretion. Therefore, the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77; 12/12/2013, C-70/13 P, Photos/com, EU:C:2013:875, § 44; 25/09/2015, T-209/14, Grünes Achteck (fig.), EU:T:2015:701, § 64).

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 17 545 518 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.

María Luisa ARANDA SALES