Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 22/06/2018

Smile Lab Sweden AB

c/o Vinterviken Ekonomipartner AB

Sankt Eriksgatan 58

SE-11234 Stockholm

SUECIA

Application No:	017820515
Your reference:
Trade mark:	TEETH MASK
Mark type:	Word mark
Applicant:	Smile Lab Sweden AB c/o Vinterviken Ekonomipartner AB Sankt Eriksgatan 58 SE-11234 Stockholm SUECIA

The Office raised an objection on 23/02/2018 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 first observations on 23/01/2018, which may be summarised as follows: The combination of the words that comprises the sign applied for, ‘TEETH MASK’, does not exist in the EU and the resulting expression is new to the consumer. In addition, one of the cited articles on the objection letter contained a reference to the US market, which is not the territory that the applicant is seeking protection.

The applicant also raises the possibility of altering the trade mark in question.

In order to respond to the proposal of the applicant, the Office submitted a response, explaining that the said proposal was not acceptable.

The applicant again responded but did not offer any further arguments against the objection raised.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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 services’ 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 services in respect of which registration is sought (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In the objection raised by the Office, it was argued that the combination of the words ‘TEETH’ and ‘MASK’ resulted in a meaningful expression, one that would recognizable by the relevant English-speaking average consumer as a description of the goods concerned as cosmetic masks that would be applied to the consumer’s teeth. A number of internet hits were provided to demonstrate the current use of the said expression in the cosmetic business sector.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, ‘Companyline EU:C:2002:506, paragraph 21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

While the applicant argues that the expression ‘TEETH MASK’ is not used in the EU, and affirms that one of the links provided in the objection refers to the US market, no argument was made against the other links, aside from the claim that the two composing words at issue were combined incidentally by the writers.

The Office disagrees with the applicant’s assessment. The use of beauty masks is widespread, and the use of such techniques in teeth care was shown to be commonplace among those looking for teeth whitening. In addition to the evidence already provided, the Office would like to provide further evidence of such use.

1. Extract from the article “How to make an all-natural teeth whitening treatment” from the British webpage of Cosmopolitan (information extracted on 18/06/2018 at https://www.cosmopolitan.com/uk/beauty-hair/beauty-trends/how-to/a37655/how-to-make-natural-teeth-whitening/, emphasis added by the examiner)

The top three favoured ingredients for natural smile brightening are strawberries (mush them up), lemon (rinse your mouth out), and bicarbonate of soda (scrub, scrub, scrub!).

I combine the last two into a tooth mask not unlike the chemical heavy strips available to buy from the high street.

2. Image extracted from the webpage of MONTCAROTTE, a manufacturer and seller of oral care items with commercial representation in the EU (information extracted on 18/0/2018 at http://montcarotte.com/en/collection/1, emphasis added by the examiner)

Soothing Mask for teeth and gums sensitivity and discomfort relief. It alleviates gums and teeth discomfort. Especially recommended for use as part of the MontCarotte® Anti Age Whitening Program. It refreshes, soothes and enriches tooth enamel with hydroxyapatite, caring for its health and brilliance. Tea rose-colored Soothing Tooth Mask Sensitivity Relief soothes your teeth and gums at first touch.

Therefore, the Office regards as incorrect the applicant’s affirmation that the use of the expression ‘TEETH MASK’ would be new in the EU territory. As already sufficiently proven, the said expression is currently in use to describe a type of oral treatment, and would not be perceived by the relevant consumers as a badge of origin. This message is clear and unambiguous. Consequently, the mark at hand lacks any degree of distinctiveness when used in relation to the goods listed.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 820 515 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.

Christiano DOS SANTOS TIMBO