Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 21/06/2018

CSY St Albans

45 Grosvenor Road

St. Albans, Hertfordshire AL1 3AW

REINO UNIDO

Application No:	017783911
Your reference:	EMT7691
Trade mark:	EST. 2017 NATURE'S DOG FOOD CO.
Mark type:	Figurative mark
Applicant:	Cleveland Scott York IP Ltd 10 Fetter Lane London EC4A 1BR REINO UNIDO

The Office raised an objection on 22/02/2018 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 a number of goods for which protection is sought, and is deceptive in regard to the remaining ones, for the reasons set out in the attached letter.

The applicant submitted its observations on 29/03/2018, which may be summarised as follows.

1. While the phrase “NATURE’S DOG FOOD” has a descriptive meaning, the juxtaposition of the phrase NATURE’S DOG FOOD with the abbreviation Co. creates a memorable sign.

2. The sign applied for employs a series of visual devices, which produce a mark which will comfortably perform the essential function of a trade mark, namely: (a) a ‘bouncy’, irregular font; (b) The position of the word CO. on the vertical, with the rest of the mark featured horizontally; (c) The use of a rectangular border around the term NATURE’S; (d) The device of a leaf as a replacement for an apostrophe in the term NATURE’S; and (e) The device of a dog bone in the initial letter D appearing in the mark.

3. The use of the stylised device of a leaf in the mark is merely allusive, not descriptive or non-distinctive – as dog food does not contain leaves. The device of the dog bone is cunningly inserted in the letter D – this is not a usual way of representing the term DOG on food products and also lends added distinctiveness to the mark applied for. Therefore, the graphic design elements in play do distract the attention of the consumer and create something which gives a lasting impression, when one considers the impression given by the mark as a whole. A number of examples from the EUIPO guidelines is provided to support this claim.

The applicant also requested the items “Aromatic sand for pets” and “Litter for animals” to be deleted from the application.

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.

As for the objection raised on the grounds of deceptiveness, the Office accepts the limitation of goods requested, and waives the objection on these grounds.

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.

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).

The Office will now assess, in order, the arguments from the applicant.

1. While the phrase “NATURE’S DOG FOOD” has a descriptive meaning, the juxtaposition of the phrase NATURE’S DOG FOOD with the abbreviation Co. creates a memorable sign.

The Office disagrees with this assessment. Since the applicant has agreed that the phrase “NATURE’S DOG FOOD” has a descriptive meaning, the Office will solely discuss the alleged distinctiveness of the aforementioned juxtaposition.

First of all, since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office would also like to point out that it is not disputed that by the applicant that ‘Co’ is a generic abbreviation standing for ‘Company’, which is commonly used in the name of such legal entities. This abbreviation or other generic legal abbreviations merely designating a type of company (such as ‘Ltd’, GmbH, Sprl, SA, etc.), are so commonly encountered in everyday life as part of company names, that consumers would tend to ignore them as trademark elements, and would only take them in for what they really are, i.e. a generic abbreviation, merely designating the nature of the provider of goods and/or services (see by analogy, the ruling of the Second board of Appeal of 13 October 2009 in R 387/2009-2 – ECO LTD (FIG. MARK)). Thus, the abbreviation ‘Co’, as such, is devoid of distinctive character with respect to the goods at issue.

The Office also would like to draw the applicant’s attention to the second paragraph of page 05 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 3, Non-distinctive trade marks, (Article 7(1)(b) EUTMR), which states:

Abbreviations of the legal form of a company such as Ltd., GmbH, etc. cannot add to the distinctiveness of a sign.

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). In the present case, the meaning conveyed by the combination ‘Nature’s DOG Food Co’ is the same meaning conveyed by adding each element separately and in sequential order. There is nothing vague or unusual for the combination ‘Nature’s Dog Food Co’’ as to syntax or meaning.

Therefore, the Office dismisses this argument.

2. The sign applied for employs a series of visual devices, which produce a mark which will comfortably perform the essential function of a trade mark, namely: (a) a ‘bouncy’, irregular font; (b) The position of the word CO. on the vertical, with the rest of the mark featured horizontally; (c) The use of a rectangular border around the term NATURE’S; (d) The device of a leaf as a replacement for an apostrophe in the term NATURE’S; and (e) the device of a dog bone in the initial letter D appearing in the mark.

The Office also disagrees with this argument. In order to counter this assessment, the Office would like first to draw attention to the sign in question:

The last paragraph of page 32 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks

Article 7(1)(c) EUTMR states:

Where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark, the mark is registrable (highlights provided by the examiner).

The Office disputes the notion that type font used in sign in question distract the consumer from the meaning of the expression “NATURE’S DOG FOOD”, or cause a last impression by itself. There is nothing remarkable about the said ‘bouncy’ font that would stand out at a first impression.

As for the perpendicular position of the word ‘Co.’ in relation to the remaining words on the sign, the Office draws attention to the last paragraphs of page 34 and 35 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks Article 7(1)(c) EUTMR:

In general, the fact that the word elements are arranged in vertical, upside-down or in one or more lines is not sufficient to endow the sign with the minimum degree of distinctive character that is necessary for registration.

However the way in which the word elements are positioned can add distinctive character to a sign when the arrangement is of such a nature that the average consumer focuses on it rather than immediately perceiving the descriptive message (highlights provided by the examiner).

The Office states that the fact that the portion of the verbal element that is positioned in a vertical alignment is a non-distinctive one, and also, as it consists of a minimal portion of it, would not draw the consumer’s attention in the manner required by the guidelines, and, therefore, cannot add sufficient distinctiveness to the sign in question.

The use of a rectangular frame around the word ‘NATURE’S’ is also found to be insufficient to add distinctive character to a sign, as stated by the first paragraph of page 36 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks Article 7(1)(c) EUTMR:

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 (highlights provided by the examiner).

As for the devices of a leaf and a dog bone, the Office would like to draw attention to their size proportion in regards to other elements present of the sign applied for. It is the Office’s opinion that both of the said devices consist of but a minimal part of the sign. This is confirmed by the graphic role that both of them perform on the sign: an apostrophe, and the space inside the letter ‘D’. The Office is of the opinion that these elements will not be readily recognized and remembered by the relevant consumers, but regarded as merely unremarkable decorative details on the sign. This is supported by the last paragraph of page 37 of the Guidelines for Examination in the Office, Part B, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, Descriptive Trade Marks Article 7(1)(c) EUTMR:

In general, when a figurative element that is distinctive on its own is added to a descriptive and/or non-distinctive word element, then the mark is registrable, provided that said figurative element is, due to its size and position, clearly recognisable in the sign (highlights provided by the examiner)

The Office argues that the case in point is similar to the examples provided on the Guidelines on the subject, where the devices are placed as substitutes of graphic symbols on the sign:

Furthermore, the leaf element just emphasizes the natural aspect of the goods, and pictures of bones commonly appear on dog food packages.

It must also be stated that the examples the applicant has cited as corroborative of his thesis have the aforementioned devices displayed in a more prominent fashion than the one employed in the sign in question:

Therefore, the argument provided by the applicant has to be dismissed.

In closing, the Office maintains that the sign applied for, , will be regarded by the relevant English-speaking consumer as description of the goods for which protection is sought, namely, that they would be dog-food made from natural ingredients. The expressions ‘EST. 2017’ and ‘CO’ serve merely to state the date from which the applicant began to operate, and the commercial nature of its enterprise, and do not add any degree of distinctiveness to the sign. Similarly, the visual elements present in the sign can be classified as commonplace elements – a common typeface and black rectangle framing the word elements – or negligible ones – images of a dog bone and a leaf, which are minuscule in size when compared to other elements. Furthermore, the leaf element just emphasizes the natural aspect of the goods, and pictures of bones commonly appear on dog food packages. Therefore, do not endow the trade mark as a whole with any distinctive character. They do not possess any feature regarding the way in which they are combined which allows the mark to fulfil its essential function for the pet foodstuff goods for which protection is sought.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 783 911 is hereby rejected for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Christiano DOS SANTOS TIMBO