Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/10/2018

AGENCY TRIA ROBIT

P.O. Box 22

Riga, LV-1010

LETONIA

Application No:	017770901
Your reference:	AL-EUTM-2018-16-3D11
Trade mark:
Mark type:	Three-dimensional
Applicant:	Marina Eduardovna Amaffi Veresaeva Str., 6, Flat 99 Moscow 121357 FEDERACIÓN DE RUSIA

The Office raised an objection on 07/03/2018 pursuant to Article 7(1)(b) 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.

The applicant submitted its observations on 25/04/2018, which may be summarised as follows:

1.- The applicant does not agree with the Office’s view that the 3D form of the perfume bottle applied for is not sufficiently different from other bottle forms in the relevant market (perfumery sector). To support this statement the applicant searched in Google for the following term: ‘cylindrical perfume bottles’. Even a standard shape of a product can be registered as a 3D trade mark, if a distinctive feature appears on it (judgment of 18/01/2013, T-137/12. Vibrator, EU:T:2013:26, § 34-36). The applicant further stresses the very distinct features that differentiate the applied sign from other perfume bottles available in the relevant market such as having: (i) a column-shaped body of the bottle of striking red colour; (ii) rich golden floral decorations at the upper and lower part of the body of the bottle that in total take almost half of the bottle body; (iii) an elegant red crystal ornamentation at the bottom part of the bottle body; and (iv) a big red crystal embedded into the golden cap of the perfume bottle with a red strip at the upper part of the cap. Consequently, even providing that the shape of the bottle body itself does not probably depart much from the usual range of bottle shapes, the way all the above referred elements are combined together with the striking deep colour is not found at the relevant perfume market.

2.- Additionally, as proven in the prior point, several of the features of the applied 3D mark are unique, and therefore the overall impression created by the combination of these unique features definitely makes the consumers distinguish the applied goods from those of another undertaking (fulfilling the indication of origin function). Moreover, the applicant has a series of perfume bottles of the same design but in different striking colours, which as a whole promotes for better and easier identification of the origin of the goods.

3.- Additionally, the applicant disagrees with the Office’s view that end users usually direct their attention more to the label or name of the product than to its shape or packaging. Perfumes are goods of infrequent and risky consumption and therefore the average consumer examines them carefully. In this sense, consumers would definitely give higher attention to the shape and, in addition, they are perfectly aware of the shapes and appearances in the field of beauty care and perfumes.

4.- Lastly, the applicant argues with the example of the bottle with a bent neck that everyone recognizes as of J.P. Chenet, that ‘not always a word mark or logo is recalled better than a 3D mark’ and, therefore, a higher threshold of distinctiveness for the 3D shapes is incorrectly applied. In this regard, EUIPO registered a wide range of 3D marks representing containers the appearance of which does not depart significantly from the norms and customs of the relevant sector (perfumery, beverages) and in comparison with the disputed 3D sign is much more distinctive in respect of the applied goods of Class 3.

From the EUIPO examples provided by the applicant, find below an extract of the closest related, particularly those marks protected in the same Class 3 as the disputed 3D shape applied sign:

• EUTM nº 3 788 767, , application filed in 2004.

• EUTM nº 6 913 636, , application filed in 2008.

• EUTM nº 1 514 751, , application filed in 2000.

• EUTM nº 6 267 058, , application filed in 2007 but is expired.

• EUTM nº 9 723 289, , application filed in 2011.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the marked product or service to the consumer or end-user by enabling him/her, without the possibility of confusion, to distinguish the product or service from others which have a different origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

Article 7(1)(b) EUTMR precludes the registration of trade marks which are devoid of distinctive character which alone renders them incapable of fulfilling that essential function (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

Since the EUTM applied for consists exclusively of figurative elements lacking any word elements, it will be perceived in the same way throughout the European Union irrespective of any linguistic differences between the different Member States (30/09/2009, T-75/08, !, EU:T:2009:374, § 26; 12/09/2007, T-141/06, Texture of glass surface, § 36).

The signs 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; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

Therefore, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, in to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

Firstly, as already conveyed in the official communication of 07/03/2018, the perception of the relevant public is not necessarily the same for a shape mark consisting of the appearance of the product itself or its packaging as it is for a word mark, a figurative mark or a shape mark that does not have that appearance. Although the public is used to recognising the latter marks instantly as signs identifying the product, this is not necessarily so where the sign is indistinguishable from the appearance of the product itself or its packaging, as in the present disputed case.

In this regard, the Office maintains that the appearance of the mark for which protection is sought does not depart significantly from the norms and customs of the relevant sector. Therefore, end users will usually direct their attention more to the label or name of the product than to its shape or packaging. In this regard, the Office partly disagrees with the statement of the applicant who claimed that ‘perfumes are goods of infrequent and risky consumption and therefore the average consumer examines them carefully’ and, therefore ‘would definitely give higher attention to the shape’. It is true that the level of attention of consumers is higher in the perfumery sector, however what is claimed here is that the shape or packaging of the product itself, which is what is trying to work as a source indicator, does not depart significantly from the norms and customs of the relevant sector, and the consumer will normally then look for the distinctiveness or commercial origin in its label or name with a view to be able to identify the good and reproduce future purchases if the experience is positive.

Secondly, with reference to the applicant’s reasoning supporting the uniqueness of the applied sign, particularly for its combination of exceptional features and of an outstanding striking deep red colour, the Office stresses that such combination does not make the shape itself exceptional with regard to the goods object of protection since it is simply a variant of a common shape in an area where there is a huge diversity of designs and that it is simply not enough to enable a consumer to identify the concerned goods (judgements of 07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 32; and 07/02/2002, T-88/00/, Torches, EU:T:2002:28, § 37).

Moreover, the more closely the shape or other elements of the mark for which registration is sought resembles those elements most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character (24/11/2016, T-578/15, Device of a solar cell, EU:T:2016:674, § 16; 07/10/2004, C-136/02 P, Three-dimensional torch shapes, EU:C:2004:592, § 31; 29/4/2004, C-456-457/01, Tabs, EU:C:2004:258, § 39; 12/1/2006, C-173/04, Standbeutel, EU:C:2006:20, § 30). Lastly, only a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of identifying origin is not devoid of any distinctive character for the purposes of that provision (09/11/2016, T 579/14, Device of a pattern, EU:T:2016:650, § 25; 12/01/2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 31; 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 28).

In this regard, following the argumentation of the last official communication, the Office upholds its view that the disputed sign ‘consists merely of a combination of presentational features, namely a red glass bottle of a simple cylindrical shape with golden elements with a floral motive, and a golden cap with a red crystal top. These would be seen by the relevant consumer as typical of the forms of packaging of the goods in question. This shape of the bottle is not markedly different from various basic forms of packaging commonly used in trade for the goods at issue; it is merely a variation thereof’.

Based on the foregoing, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b), 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. (judgments of 29/04/2004, joined cases C-468/01 P to C-472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33).

Lastly, as regards the applicant’s argument that similar 3D shapes have been registered by 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).

As a preliminary observation,

With regard to the most close related examples of registered 3D shapes provided by the applicant (EUTM nº 3 788 767, EUTM nº 6 913 636, EUTM nº 1 514 751, EUTM nº 6 267 058, and EUTM nº 9 723 289), although they result similar in appearance to the here disputed 3D shape and coincide as well in the protection of goods of class 3, 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 (please note that the most recent example dates of 2006), 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 all the above mentioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 17 770 901 is hereby rejected for all the goods claimed:

Class 3

Perfumery and fragrances; Perfumes; Scented water; Toilet water.

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