Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/07/2018

Maria Nikolaeva Vladimirova

Polk. G. Yankov Str., bl. 104, office 5

BULGARIA-1797 Sofia

BULGARIA

Application No:	017880524
Your reference:
Trade mark:	MARRAKESH
Mark type:	Word mark
Applicant:	ROYAL AXON LIMITED Office No.507,Jumeirah Bay X2 Tower, Cluster X, JLT Dubai 337188 EMIRATOS ÁRABES UNIDOS

The Office raised an objection on 18/04/2018 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 observations on 04/06/2018, which may be summarised as follows:

1. The name ‘MARRAKESH’ is not descriptive for tobacco and cigarettes. The geographical name will not be associated with characteristics of the goods in question because it has no reputation for the goods in Class 34. The geographical name ‘Marrakesh’ is associated generally with an exotic tourist destination, known also as the ‘pink town’. The city is also known for production of leather, carpets, wrought iron, spices, etc.

2. The most popular variety of tobacco is Nicotiana tabacum and this variety comes from tropical America. The most commonly used variety is ‘Virginia blend’, which was cultivated originally in Virginia, but is nowadays widely grown in the Balkans, in Russia, Turkey and India. There is no possibility that consumers of goods in Class 34, tobacco and cigarettes, marked with the sign ‘MARRAKESH’, would be deceived into thinking that these originate from the town of Marrakesh.

3. Expert practice shows that certain geographical names, such as Paris, Munich, Spain, etc., are associated with particular goods, such as perfumes, beer, olive oil. In the present case there is no link between the geographical name ‘Marrakesh’ and a specific characteristic of the goods in question. The consumers will relate the goods to their producer - Royal Axon Limited, but not with the city of Marrakesh. Therefore, the mark cannot be interpreted unambiguously as directly deceptive, because it evokes more than one association. Since consumers will be forced to conduct research to establish the origin of the goods, they will not be deceived. The sign ‘MARRAKESH’ is not deceptive for the goods applied for.

4. The applicant has a contract for a sale of tobacco goods with a company that is registered and trading in Casablanca, Morocco.

5. Similar marks have already been registered at different national offices and also at the EUIPO.

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)(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).

In response to the applicant’s submissions, the Office states the following:

Before assessing the arguments of the applicant, it should be noted that the mark ‘MARRAKESH’ seeks protection for manufactured tobacco; tobacco products; cigarette tobacco; roll-your-own tobacco; smoking tobacco; pipe tobacco; hookah tobacco; absorbent paper for tobacco; tobacco tins; articles for use with tobacco; cigarettes containing tobacco substitutes; humidifiers for tobacco; tobacco jars; tobacco pipes, not of precious metal; cigars for use as an alternative to tobacco cigarettes; tobacco containers and humidors in Class 34.

1. The fact that a geographical location is very famous for one product, in this case for example traditional women’s caftans, does not automatically mean that it will not be recognised for another product.

Furthermore, the Office does not only refuse terms that are very famous for certain goods and service, it is sufficient that it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned (15/01/2015, T‑197/13, MONACO, EU:T:2015:16, § 51; 25/10/2005, T‑379/03, Cloppenburg, EU:T:2005:373, § 38).

While it is true that the name of the city may be associated with different products as well, this does not exclude a link with tobacco products. Moreover, Marrakesh is a major city with a lot of different manufacturing industries and it is very likely the relevant public will accept the name of the sign as an indication of the geographical origin of the goods in question.

2. It may be true, as the applicant says, that other places have better growing conditions for tobacco. However, this argument has no bearing on the descriptiveness of the sign. Usually consumers, even of cigarettes and other tobacco products, do not have such deep specific knowledge. However, even if they do, this does not exclude in any way the likelihood of connection between the geographical place and the products, because there is no reason to exclude MARRAKESH as a possible place of origin of the products.

3. The distinctive character of a trade mark must always be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29).

Consequently, considering consumers in the market for goods such as cigarettes and tobacco, it is highly likely that they will perceive ‘MARRAKESH’ as the indication of the geographical origin of the goods. There is no reason to assume that the public will not accept the sign directly as descriptive. The Office disagrees that any mental exercise is necessary to perceive MARRAKESH as a geographical indication of the goods for which registration is sought, bearing in mind that MARRAKESH is a well-known geographic location in North Africa, which is known in Europe, or at least in the southern part of Europe.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

Whether or not the public will be deceived by the meaning of the sign is not relevant for the refusal. For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is irrelevant if the goods are actually produced or not in the geographical place; the relevant factor is that the public may perceive the sign as an indication of the geographical origin of the goods and that is sufficient to apply the article.

4. In the present case the contract between the applicant and its business partner does not influence the perception of the public in the European Union either. The contract concerns the product distribution outside the European Union, so it should be set aside.

5. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO and national offices, 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).

Furthermore:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Despite the exhaustiveness of the abovementioned arguments, for the sake of the applicant, the Office might give the following explanations of the cited signs.

For the examples given by the applicant concerning national marks in Bulgaria, Germany and Turkey, in these countries neither French (for the German mark) nor English are official languages, which was most probably sufficient for the national offices to accept the marks as registrable.

For the US and the Indian marks, the Office cannot assume the degree of familiarity of the local public with the meaning of the signs in question or to what extent other factors such as a declaration of use (USA) or misspelling in the name (India) might influence the decision of those national offices.

For the EUTM application, it is sufficient that ‘Winston Churchill’ is a significant distinctive element and ‘Montblanc’ is a classic example for registrability of a geographical name for almost any kind of product. ‘Casablanca’ is a sign that was registered more than 20 years ago. Since then the Office’s practice has developed, so it cannot be a good example for comparison. Moreover, the sign is different.

Bearing in mind the descriptiveness of the sign under examination, it is also devoid of any distinctive character pursuant to Article 7(1)(b) EUTMR as stated in the Office’s objection letter. Therefore, the Office maintains its opinion that the relevant public will not perceive the mark as a badge of commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 880 524 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.

Maria Slavova