Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/06/2018

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	017571324
Your reference:	TMU/RW2/5995736
Trade mark:	BIOFLEX
Mark type:	Word mark
Applicant:	Avery Dennison Corporation 207 Goode Avenue Glendale 91203 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/12/2017 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 20/04/2018, which may be summarised as follows.

1. The sign has no meaning and, even though the element ‘BIO’ may itself be descriptive, the word combination ‘BIOFLEX’ creates an impression that is distinctive, and neither the combination nor the word ‘FLEX’ per se describes any characteristics of the goods.

2. The trade mark ‘BIOFLEX’ does not designate the nature or quality of the goods, and the link between the goods and the mark is too vague to confer descriptive character on the mark in relation to the goods.

3. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR was made in error and should be waived, the objection under Article 7(1)(b) EUTMR should also be waived.

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.

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 the present case, the sign applied for immediately informs consumers, without further reflection, that the goods in question are flexible and made of organic material.

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 or services of one undertaking from those of its competitors.

To the applicant’s observations, the Office replies as follows:

1. The sign has no meaning and, even though the element ‘BIO’ may itself be descriptive, the word combination ‘BIOFLEX’ creates an impression that is distinctive, and neither the combination nor the word ‘FLEX’ per se describes any characteristics of the goods.

According to the dictionary quotation provided by the Office, ‘FLEX’ means ‘flexibility’. The meaning of this term was extracted from an official dictionary (Collins English Dictionary), which is reliable and contains valid information.

The applicant’s argument that the element ‘FLEX’ will not be perceived as a descriptive indication is not convincing, as the word ‘FLEX’ informs consumers, without further reflection, that the goods in question are flexible.

The elements ‘BIO’ and ‘FLEX’ are English words; there is nothing unusual about these abbreviations or their combination that might lead to the assumption that these elements separately or together would not be used in everyday parlance. Contrary to the applicant’s argument, the Office, on the basis of the results of its examination, can attribute only a descriptive meaning to the sign applied for. As established in the course of the examination, there is no perceptible difference between the expression ‘BIOFLEX’ and the mere sum of the elements ‘BIO’ and ‘FLEX’. The combination is not imaginative or surprising. The overall impression conveyed by the mark is not different from the mere combination of the individual meanings of each of the elements composing it. Furthermore, the relevant public will not memorise the sign easily and instantly as a distinctive trade mark for the services in question. The mark is descriptive of the goods for which registration is sought and, consequently, lacks any distinctive character. The relevant public will perceive this combination as informational and descriptive rather than as a memorable and distinctive trade mark. The average English-speaking consumer in the EU will understand the expression ‘BIOFLEX’ in the context of the goods in question with the meaning given by the Office.

2. The trade mark ‘BIOFLEX’ does not designate the nature or quality of the goods, and the link between the goods and the mark is too vague to confer descriptive character on the mark in relation to the goods.

The sign, in relation to the services for which registration is sought, is directly descriptive. The mark ‘BIOFLEX’ as a whole would immediately inform consumers that the goods in question are flexible and made of organic material. Therefore, the mark consists essentially of an expression that conveys obvious and direct information regarding the nature and quality of the goods in question. It follows that the link between the words contained in the mark 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) and (b) and Article 7(2) EUTMR.

There is no need for any additional mental steps to understand the connection between the mark and the services. Therefore, the Office cannot agree with the applicant that there is no obvious or direct link between the trade mark and the services to which an objection has been raised.

3. The objection under Article 7(1)(b) EUTMR relies on the objection under Article 7(1)(c) EUTMR. As the objection under Article 7(1)(c) EUTMR was made in error and should be waived, the objection under Article 7(1)(b) EUTMR should also be waived.

The Office agrees with the applicant that, if the objection under Article 7(1)(c) EUTMR were waived, there would be no ground for the objection under Article 7(1)(b) EUTMR. However, in the present case, the Office has not decided to waive the objection under Article 7(1)(c) EUTMR and, therefore, finds this argument irrelevant.

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 17 571 324 is hereby rejected.

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.

Liina PUU