Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 22/06/2018

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	17 632 721
Your reference:	T63248EU01
Trade mark:
Mark type:	Figurative mark
Applicant:	Canopy Growth Corporation 1 Hershey Drive Smiths Falls Ontario K7A 0A8 CANADÁ

The Office raised an objection on 10/01/2018 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.

Upon request of 08/03/2018 from the applicant, the Office extended on 13/03/2018 the time limit for submitting observations by two months till 10/05/2018.

The applicant submitted its observations on 08/05/2018, which may be summarised as follows:

1. The applicant disagrees on the following points [as raised in the Office´s notice of grounds for refusal of 10/01/2018]:

• The mark would simply be seen in the relevant market sector as a laudatory statement or element in relation to the goods at issue, the function of which is to communicate a quality 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 services to highlight positive aspects in relation to the goods at issue, namely that these are wrapped in plain wrapping paper in standard background colour or contained in plain, standard packaging, characterised by a neutral colour and by having no pattern, design, pictures nor writing on it.

• The fact that the mark contains certain stylised elements is not enough to render the whole mark distinct.

2. The goods applied for are not commonly described with the expression ‘plain package’. The trade mark does not in any way describe the character of the goods or the function of the goods [applied for] in Class 5, 25 and 34. None of these goods of the function thereof are commonly described by ‘PLAIN PACKAGE’.

3. The following similar EUTM applications have been registered by the Office:

EUTM no REPRESENTATION

• 11 908 837 NO NAME

• 14 341 382

• IR/WO853 947 Easy Package

• 5 317 441 Smart Package

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.

General remarks

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Office´s comments

The Office has taken note of the fact that the applicant disagrees with the conclusion, contained in the Office´s notice of grounds for refusal, in particular that the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed which merely services to highlight positive aspects in relation to the goods at issue, namely that these are wrapped in plain wrapping paper in standard background colour or contained in plain, standard packaging, characterised by a neutral colour and by having no pattern, design, pictures, writing, etc., on it.

In that respect, the Office would also like to draw the attention to the fact that no objection as to descriptiveness of the sign under art. 7(1)(c) EUTMR has been raised by the Office. Therefore, in principle the Office agrees with the applicant that the sign at issue is not directly descriptive as such for the goods applied for in Class 5, 25 and 34.

However, the Office is of the position that the mark applied for

will be perceived as non-distinctive by the relevant public in relation to the goods at issue, namely in the way that these goods are sold in plain, standard packaging material. An example of such plain, neutral standard packing material could also be environmental-friendly packaging which normally is characterised as colourless or neutral in colour such as brownish because of the re-cycling or the re-use process of various packing/packaging materials which may also be seen as a further positive aspect linked to the goods applied for.

Therefore, the Office maintains its position that the sign is devoid of any distinctive character within the meaning of art. 7(1)(b) and art. 7(2) EUTMR.

As regards the applicant’s argument that 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).

In addition it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during this period. The Court of Justice is also aware of this market and practice evolution and have stated 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 7(2) EUTMR, the application for European Union trade mark No 17 632 721 is hereby rejected for all the goods applied for, namely:

Class 5 Medical marijuana and cannabis and derivatives thereof; hemp-based dietary supplements for general health and well-being, hemp-based protein powder, protein and fibre powder, meal replacement bars; medicinal herbal extracts for medical purposes namely medical cannabis and marijuana extracts; medicinal herbal preparations, namely marijuana preparations including dried flower and marijuana derivatives that may be legally produced, namely liquids, oils, oral sprays, capsules; medicinal cannabis oils; products for administering medical marijuana and cannabis namely, buccal sprays, gel caps, and transdermal patches; hemp based beverages for medicinal and health purposes; cannabis based beverages for medicinal and health purposes; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases, the relief of pain, the treatment of acne, the treatment of chronic pain, the treatment of glaucoma, the treatment of headaches, the treatment of inflammatory connective tissue diseases and injuries, the treatment of inflammatory muscle diseases and disorders, the treatment of metabolic disorders, namely diabetes, bulimia nervosa, anorexia, obesity and hypothyroidism, the treatment of psychiatric diseases, namely, mood disorders, anxiety disorders, cognitive disorders, schizophrenia, the treatment of skin irritations, namely bee stings, sunburn, rashes, sores, corns, calluses, and acne, the treatment of the musculoskeletal system, namely, connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries, wounds; topical anesthetics; delivery systems in the nature of topical applications, namely, foams, gels, creams, sprays, lotions and ointments which act as a base and prepare the skin to receive therapeutic preparations that are absorbed into the blood stream through the skin; analgesic preparations; antibiotic preparations; cannabis capsules, cannabis sprays; cannabis products, namely, salves, concentrated pastes and tinctures containing cannabinoids.

Class 25 Casual clothing; dress clothing; t-shirts, shirts, sweatshirts, hoodies, tank tops, jackets, lab coats, headwear namely hats, caps, and visors, toques, dresses, skirts, sweatpants, pants, undergarments, scarves, belts, gloves.

Class 34 Products for administering medical marijuana and cannabis, namely, hand pipes, water pipes, hookahs, nebulizers, atomizers, oral vaporizers; smoking accessories, namely hand pipes, water pipes, hookahs, nebulizers, atomizers, oral vaporizers; marijuana, cannabis and derivatives thereof, namely hashes, resins, concentrates, and oils, hashes and waxes for smoking; cannabis extracts, namely, hashish, resins and oils; cannabis products, namely, oils; hemp.

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.

Finn PEDERSEN