Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/12/2018

BSB Rechtsanwälte

Hohenzollernstr. 93

D-80796 München

ALEMANIA

Application No:	017869310
Your reference:	2297M305-EU
Trade mark:	pantys
Mark type:	Figurative mark
Applicant:	EC Brand Comercio, Importação e Exportação de Vestuário em Geral LTDA Av. Barão de Tatuí, 1200 - CJ 2ª, Jardim Vergueiro Sorocaba, SP 18030-000 BRASIL

1. The Office raised an objection on 11/04/2018, pursuant to Article 7(1)(b) and (c) EUTMR 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.

2. After an extension of two months, the applicant submitted its observations on 10/08/2018, which may be summarised as follows:

• The sign ‘pantys’ as a whole is distinctive and not descriptive for the refused goods and services.

• The Office has not shown evidence of use or of the understanding of the word “pantys” or “panties” for hygienic and sanitary products. The listed goods in class 5 are neither panties, nor are they incorporated into panties, or sold in the same place as panties.

• The Office states that pantys are “short underpants worn by women and girls; tights; pantyhose”, however, such items are not sanitary or hygienic products. The web sites provided by the examiner show leggings and tights, but not any products listed in class 5.

• As for the goods in class 25, none of the goods are panties and the Office did not show that the relevant consumers understand them to be panties.

• As for the retail services in class 35, the mark is not descriptive because ‘pantys’ is not an indication for such services, specifically as some of the goods, such as those in class 5, are not panties.

• The applicant refers to European and German case law in support of its arguments.

3. Pursuant to Article 75 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 waive the objection for the following goods:

Class 25: Pyjamas; sport pants.

The objection is maintained for the remaining goods and services.

The Office also waives the Spanish-language 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).

The Office cannot find other than that the mark ‘pantys’ as a whole is descriptive and devoid of any distinctive character for the goods and services at issue.

As shown in the Notice of grounds for refusal the word “panty” means “short underpants worn by women and girls”. The term “panty” is thus a broad term which includes all kinds of underpants, including briefs, tangas, thongs, and hipsters to name a few.

Some of the goods applied for are expressly defined as panties, namely hygienic panties in class 3, and modelling belts, namely panties, and maternity clothes, namely panties in class 25.

Women’s underwear and women’s lingerie in class 25 are wide terms which include all kinds of panties.

Sanitary briefs in class 3 are also a form of panty which are worn to protect the wearer from menstrual or incontinence leakage.

Hygienic absorbents, sanitary napkins, sanitary towels, incontinence pads, and protectors for panties [hygiene products] are all worn to protect panties and underpants from menstrual fluids and urine, and they can be incorporated into panties.

As regards “hygienic panties” and “hygienic pants” in class 5 they can be period panties or incontinence panties as “pants” and “panties” are used interchangeably in relation to such goods. It is noted that the products are also called “incontinence panties” and “period panties”.

“Liners made of layers of fabric for underwear” in class 25 are panty liners of cloth and textiles which are obviously used with panties. See the following web site:

See the following web sites:

https://www.amazon.co.uk/Pantiepads-Disposable-Panties-Built-Menstrual/dp/B009SKFQO8

Pantiepads Disposable Panties with Built-In Menstrual Pad, Large, 3 Count

https://www.amazon.co.uk/Period-Panties-Menstrual-Underwear-UndiePads/dp/B009SKFQFW

Period Panties With Built-in Pad Size Medium 3 Pack Menstrual Underwear by UndiePads

https://www.weareverincontinence.com/incontinence-panties/

…Convenient Incontinence Underwear for Women

….Similar to other styles, these panties have antimicrobial fibers, which reduce the bacteria that cause odor. They include a sewn-in super absorbent Unique-Dri™ pad which traps liquid for all-day built-in protection. If you’re experiencing moderate incontinence we recommend our Lovely Lace Trim panties have a waterproof outer layer to prevent leakage and provide double protection, leaving you feeling safe all day long. These incontinence panties have an elegant sexy style with generous rear coverage.

https://www.cocooncenter.co.uk/always-discreet-underwear-super-night-m-9-panties/37019.html

Always Discreet Underwear Super Night M 9 Panties are incontinence panties to protect the woman from important urinary leaks and to forget an overactive bladder.

https://ecodreams.co.uk/product-category/clothpad/panty-liners/

Panty liners

Cloth Panty Liners have a light absorbency and are best suited for everyday wear or as back up to a menstrual cup or tampon. They can also be used for slight bladder leaks.

Considering the above, it is clear that some of the goods at issue are panties or are in the form of panties.

The mark “pantys” is an obvious misspelling of “panties”, and the two words are pronounced identically. Therefore, when viewing the mark in connection with the goods at issue the relevant consumers would immediately understand the message of the mark and see it as descriptive and informative message and not as an indication of commercial origin.

As for the retail service in class 35, the word “pantys” simply indicates that they relate to the selling of panties and thus indicate the subject matter of the services.

See the Office Guidelines, Part B, Examination, Section 4, Absolute Grounds For Refusal, Chapter 4, Descriptive Trade Marks, Article 7(1)(c) EUTMR , 2.7 Terms Describing Subject Matter In Goods Or Services where it states that:

…In the event of services, where a sign consists of a term indicating a certain industry, such as ‘CLOTHING’ or ‘CARS’, and it can be reasonably assumed that a services provider (e.g. in the field of advertising or retail services) could specialise to meet the characteristics of that particular industry, an objection to subject matter should be raised.

It is clear that “pantys” indicates the subject matter of the retail services applied for. Anyone viewing the mark in connection with the selling of women’s underwear, lingerie, underwear and sanitary products would immediately understand that the products in question are panties.

As regards the objection made regarding the Spanish word “pantis” the Office waives the objection as the applicant is correct in stating that tights and pantyhose are not applied for, and that they are not panties or have anything to do with panties.

As for the figurative element of the mark, it merely consists of a basic and standard typeface in lower case letters which would not be given any trade mark significance by the relevant consumers and consequently does not add any distinctiveness to the mark.

See also the Office’s Guidelines, Part B, Examination, Section 4, Absolute Grounds For Refusal, Chapter 4, Descriptive Trade Marks, 4.2 Assessment of the figurative threshold, where it states that:

“In general, descriptive/non-distinctive word elements appearing in basic/standard typeface, lettering or handwritten style typefaces — with or without font effects (bold, italics) — are not registrable.

4. For the abovementioned reasons and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 869 310 is hereby rejected for the following goods and services:

Class 5: Hygienic absorbents; sanitary napkins; sanitary briefs; sanitary towels; incontinence pads; protectors for panties [hygiene products]; hygienic panties; Hygienic pants.

Class 25: Liners made of layers of fabric for underwear; women's underwear; modeling belts namely panties; women's lingerie; maternity clothes, namely panties.

Class 35: Online retail trade services of women's underwear, lingerie, underwear and sanitary products.

The application may proceed for the remaining goods, namely for:

Class 25 Modeling belts, namely bras; pajamas; clothing for dancers, namely t-shirts, sweaters, trousers, leggings, shorts and jackets; athletic apparel, namely shirts, pants, coats, footwear, hats and caps, athletic uniforms; sports pants; bras; maternity bras; maternity clothes, namely bras; sports bra; tops for women with inlaid bras.

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.

Anne-Lee KRISTENSEN

Enclosures: A copy of the Notice of grounds for refusal, and print-outs of the above cited Internet references. 5 pages.