Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/02/2018

DENNEMEYER & ASSOCIATES

P.O. Box 1502

1015 Luxembourg

LUXEMBURGO

Application No:	017546921
Your reference:	PEP1126EM
Trade mark:	PEPUP
Mark type:	Word mark
Applicant:	Mister Pepup Boulevard Georges Favon 43 CH-1204 Genève SUIZA

The Office raised an objection on 04/12/2017 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 26/01/2018, which may be summarised as follows.

1. The relevant public will not notice that the sign, ‘PEPUP’, is composed of the two words ‘PEP’ and ‘UP’, the expression pep up is always spelled with a space between the words. Consequently, the mark is a neologism without any meaning. Consumers of the goods for which registration is sought are normally attracted to the branding and appearance of the products, and will not spend time analysing the meaning of the verbal element when acquiring such goods. Accordingly, the mark is not descriptive under Article 7(1)(c) EUTMR.

2. The sign consist of a invented term that is not composed of other words, the fact that the two words ‘PEP’ and ‘UP’ can be found within the mark does not make it devoid of distinctive character, it is the mark as a whole that must be assessed. The mark is undoubtedly sufficiently distinctive and the Office should waive its objection and register it.

3. The Office has already accepted the marks IR No 874 015 ‘PEPUP’ and EUTM No 12 223 781 ‘mister pepup’ for registration, in accordance with the principle of equal treatment the present mark should therefore be registered.

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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office maintains that the relevant English speaking consumer immediately will recognise the phrase pep up although it is missing the space between pep and up. Merely removing this space without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign. This is an established principle with a vast amount of examples from case-law, see for example: 12/02/2004, C-265/00, Biomild, EU:C:2004:87; 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506); 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246.

A neologism is a newly coined word or expression, the sign in question, by contrast, will with overwhelming probability be perceived as the well-known expression pep up, only missing the space between its two component words. An artificial analysis would be needed to deem this expression to have no particular meaning, whereas the perception of it according to the direct meanings of the component words is likely to be automatic.

Consequently, the Office maintains that taken as a whole, the expression ‘PEPUP’ immediately informs consumers without further reflection that the goods applied for will pep up beverages such as drinks and cocktails, or, alternatively, that the consumer will be pepped up by consuming the goods. Therefore, the mark conveys obvious and direct information regarding the intended purpose of the goods in question. It follows that the link between the words ‘PEPUP’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

2.

As the Office maintains that the mark is descriptive; therefore, it also maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

3.

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).

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 17 546 921 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.

Lars Paalgard SOYLAND