Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/05/2018

FINNEGAN EUROPE LLP

16 Old Bailey

London EC4M 7EG

REINO UNIDO

Application No:	017599515
Your reference:	12999.0087-00337
Trade mark:	100% COTTON
Mark type:	Figurative mark
Applicant:	Welspun India Limited. Welspun House, 6th Floor, Kamala City, Senapati Bapat Marg, Lower Parel (W), Mumbai . Mumbai Maharashtra 400013 LA INDIA

The Office raised an objection on 12/01/2018 pursuant to Article 7(1)(b)(c) and (g) 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 26/02/2018, which may be summarised as follows:

1. Descriptiveness. No protection is claimed for the phrase ‘COTTON 100%’ as such. The protection is sought for the particular combination of fonts and graphical elements, in contrasting shades and positions in the mark. As a whole, the graphical features are not simple or banal and the graphical elements do not refer to the goods or any of their features that could lead to a descriptive association with those goods. Refusals based on Article 7(1)(b) and/or (c) EUTMR may not apply to signs consisting of a non-distinctive, descriptive or generic element combined with other elements that result in the sign as a whole being above a minimum degree of distinctiveness.

2. The figurative elements of the mark are more complex than a mere ‘black circle’. The stylisation of the mark consists of the upper case letters ‘COTTN’ in a special typeface and a filled in circle with ‘100%’ in a contrasting colour in the middle. The circle is the dominant element and modifies the verbal element so that further mental steps are required to ‘decode’ the mark as ‘COTTON 100%’. Due to the position of the circle, the mark can be read as ‘COTTON’.

3. Deceptive character. Due to its graphical stylisation, the mark as a whole will not be immediately and without further reflection perceived as a description of any goods or services; therefore, it could not be deceiving in relation to the goods at issue. The goods to which an objection has been raised are all made of paper, glass fibre, plastic, etc. The specific materials are specifically chosen over regular textiles because of their intrinsic features.

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).

1. The sign is composed of the verbal element ‘100% COTTON’ and, as stated in the notification dated 12/01/2018, the Office defined ‘100%’ as ‘used adjectivally or adverbially with the meaning ‘entire(ly), complete(ly)’ (information extracted from Oxford English Dictionary on 12/01/2018 at http://www.oed.com/view/Entry/89464?redirectedFrom=one+hundred+per+cent#eid1150675) and ‘COTTON’ as ‘a soft white fibrous substance that surrounds the seeds of a tropical and subtropical plant and is used as textile fibre and thread for sewing’ (information extracted from Oxford Living Dictionaries on 12/01/2018 at https://en.oxforddictionaries.com/definition/cotton). The average English-speaking consumer would understand the sign as meaning ‘entirely or completely made with cotton’; therefore, the relevant consumer, notwithstanding the figurative element of a black circle, would perceive the sign as providing information about the kind and composition of the goods in question. In the present case, there is a clear link between the goods for which protection is sought and the fact that the sign indicates that those goods are completely made with cotton. In the Office’s view, the sign is not distinctive, even to the minimum degree required for registration, since it does not have the ability to indicate the commercial origin of the goods in question. In the light of the foregoing, the Office has decided to maintain the objection for the English-speaking consumer.

2. Contrary to the applicant’s assertion regarding the figurative elements, to confer distinctive character on a descriptive word element, the stylisation or graphics of the sign must be of sufficient significance to require the relevant public to make a mental effort to perceive the link between the word elements and the goods for which registration is sought (11/07/2012, T‑559/10, Natural beauty, EU:T:2012:362, § 25-27). The Office considers that the stylisation of the verbal element ‘100% COTTON’ is rather banal and will not divert the attention of the relevant public from the descriptive message of this word element. The figurative elements of the trade mark applied for, viewed as a whole, merely give the impression of an embellishment of the descriptive word element ‘100% COTTON’. Neither the stylisation of the mark, consisting of the upper case letters ‘COTTN’ in an allegedly special typeface nor the filled-in circle with ‘100%’ in a contrasting colour in the middle, as stated by the applicant, will be seen as particularly striking or imaginative. Therefore, they are not sufficient to confer on the trade mark applied for the minimum degree of distinctive character required for registration.

In this regard, the typeface is standard and, according to the Office’s Guidelines, descriptive/non-distinctive word elements appearing in basic/standard typefaces are not registrable. Moreover, descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the abovementioned shapes are used as a frame or border.

Deceptive character

Article 7(1)(g) EUTMR lays down that marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service, may not be registered.

The concept of ‘deceit’ presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived by a ‘sufficiently specific designation’ of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is made to believe that the goods and services possess certain characteristics, which they do not in fact possess, will be deceived by the trade mark (24/09/2008, T‑248/05, I.T.@Manpower, EU:T:2008:396, § 64-65).

3. As stated above and in the notification dated 12/01/2018, the sign applied for would be understood by the average English-speaking consumer as meaning ‘entirely or completely made with cotton’; consequently, it leads to a clear expectation and is likely to deceive consumers when used in relation to the goods for which protection is sought in Class 24, bed covers of paper, glass fiber fabrics, shower curtains of plastic, and in Class 27, non-textile wall hangings; linoleum for covering existing floors, as it conveys clear information indicating that the products designated under this sign are completely or entirely made with cotton, whereas the goods to which an objection has been raised are not or do not contain cotton. It must be assumed that the public will expect that the goods to which an objection has been raised are made completely or entirely with cotton. The applicant claims that, due to its graphical stylisation, the mark will not be perceived as a description of any of the goods and could not be misleading. However, according to the Guidelines, the fact that a sign contains figurative elements does not prevent it from being misleading and, as stated by the Office, the sign would be perceived as ‘100% COTTON’, despite the circle that replaces the letter ‘O’. Furthermore, the applicant in its reply argues that ‘…due to the placement of the circle, the mark can be read as “COTTON”’ (as can be seen on page 2 of its reply dated 26/02/2018, ‘The Mark’ section), which only reinforces the Office’s argument. Moreover, the applicant in its response states that the goods bed covers of paper, glass fiber fabrics, shower curtains of plastic, non-textile wall hangings; linoleum for covering existing floors to which an objection is raised are all made of the materials specified in the list; therefore, none of them are completely or entirely made with cotton. The applicant claims that the degree of attention in relation to the goods will be normal because the goods for which registration is sought are for mass consumption and target the average consumer. However, this does not mean that the sign is less likely to objected to on any ground for refusal.

For the abovementioned reasons, and pursuant to Article 7(1)(b)(c) and (g) and Article 7(2) EUTMR, the application for European Union trade mark No 17 599 515 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.

Moises Paulo ROMERO CABRERA