Total refusal of an application for a EU trade mark under Articles 7 and 42 of the European Union Trade Mark Regulation (EUTMR) no. 2017/1001

Alicante, 21/09/2018

Merkenbureau Knijff & Partners B.V.

P.O. Box 5054

1380 GB Weesp

The Netherlands

Application No	17869608
Your reference	MS/TM90340EU00
Trade mark	POP. DROP. FIZZ. SIP.
Applicant	Tasty Greens LLC 1090 King Georges Post Road, Suite 505 Edison, New Jersey 08837 USA

• Procedure

The Office raised an objection on 4 April 2018, pursuant to articles 7(1)(b), (c) and 7(2) EUTMR, because it was found that this sign is descriptive of certain characteristics of the goods, as well as devoid of any distinctive character for the reasons set out in the attached letter.

On 30 May 2018 the applicant replied with the following counter-arguments:

1. The individual words may be descriptive, but it is the overall impression that counts.

2. No imaginativeness or conceptual tension is required.

3. The dots are unusual.

4. The combination is not commonly used with these goods.

5. There is no direct link with the goods.

6. The sign was accepted in the USA.

• Decision

Pursuant to article 94 EUTMR, it is up to the Office to make a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due and careful consideration to the applicant’s arguments, the Office has decided to maintain the objection and refuse the application for all goods:

5

Dissolving or effervescent tablets primarily containing vitamins and herbs to make vitamin enhanced beverages.

• Refutal of counterarguments

The Office comments on this refusal and the applicant’s arguments hereunder:

1. The individual words may be descriptive, but it is the overall impression that counts.

The overall impression is just a sequence of the individual, descriptive words. There is nothing more to it.

2. No imaginativeness or conceptual tension is required.

This argument taken from the “Vorsprung durch Technik”-judgment has been used in all slogan cases so far and with little to no success. When the slogan is made up of ordinary dictionary words with clear meanings and it has no imaginativeness or conceptual tension at all or just anything that is out of the ordinary, then there is literally nothing to attract the attention of the public. In such cases the slogan must be considered a banal statement that only describes certain profitable aspects of the goods and services, without pointing out to the relevant public that the goods originate from a certain source. It is clear that this situation applies here.

3. The dots are unusual.

Whether or not dots behind words are usual, the relevant consumer of these goods will not recognize a trade mark origin in a tiny black dot behind a word.

4. The combination is not commonly used with these goods.

Whether or not this indication is commonly used with these goods is of no importance. What matters is, how the relevant consumers interpret the sign in direct relation to the goods.

The arguments used in the BABY-DRY-judgment of 2001 are not valid any more (“the common parlance argument”). Since the POSTKANTOOR- and BIOMILD-judgments signs used in trade to distinguish goods originating from one undertaking from those of other undertakings must show a significant difference in relation to the common parlance of the relevant trade circles.¹

5. There is no direct link with the goods.

The goods are effervescent tablets that must be popped out of the blister, dropped into a glass, the drink must fizz in order to dissolve the tablet completely and at the end of this short process the ready made drink can be consumed (sipped). All four verbs have a direct bearing on the products. Applicant is therefore erring, when it says that the word would have no direct link to the goods.

6. The sign was accepted in the USA.

The Office is not bound by decisions made by national trade mark authorities or even by its own decisions made in the past in similar or identical cases. Each case has to be judged on its own merits, taking into consideration the valid trade mark regulation and its interpretation by the Boards of Appeal of the Office and the Courts in Luxembourg:

“Finally, as to the applicant's arguments on national applications and earlier decisions of the Office, it must be borne in mind that it is settled case-law, first of all, that the Community trade mark system is autonomous and, secondly, that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, and not the Office's practice in earlier decisions (see judgments in Cases T-122/99 Procter & Gamble v OHIM (soap bar shape) [2000] ECR II-265, paragraphs 60 and 61; T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; and T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). Accordingly, the Office is bound neither by national registrations nor by its own previous decisions. Furthermore, as the Office rightly argued, neither the reference to a national registration that postdates the examiner's refusal of the application for registration, nor the reference to registrations by the Office that are open to subsequent challenge before the bodies responsible for reviewing their legality, may be accepted as relevant.”

(Judgment of the General Court dated 5 December 2002 in the case T-130/01 REAL PEOPLE, REAL SOLUTIONS, par. 31)

• Conclusion:

• The expression “POP. DROP. FIZZ. SIP.” is an understandable English word combination which tells the relevant trade circles how to use the goods, namely by popping the effervescent tablet from its blister, dropping it into a glass, letting it fizz by adding water and then by sipping the ready made vitamin drink.

• The sign is descriptive of the way in which the goods should be used and should therefore be refused based on article 7(1)(c) EUTMR in respect of all goods.

• Apart from a tiny, black dot behind each word, the word sequence shows nothing fanciful that could endow the whole with some distinctiveness.

• Furthermore, signs like the one under examination which consist of ordinary dictionary words with a pertinent meaning in relation to the goods are hardly ever considered badges of a special commercial origin.

• Exhortations like the one under examination, are quite frequent and they are, when they do not contain any significant differences² (see above) not considered trade marks.³ They should therefore be refused under article 7(1)(b) EUTMR as well.

• How to appeal this decision

Under Articles 66-68 of the European Union Trade Mark Regulation no. 2017/1001 you have a right to appeal against this decision. A notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed.

The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720,00 has been paid.

Robert KLIJN BRINKEMA