Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 14/03/2019

CARPMAELS & RANSFORD LLP

One Southampton Row

London London, City of WC1B 5HA

REINO UNIDO

Application No:	017887910
Your reference:	T041171EM
Trade mark:
Mark type:	Figurative mark
Applicant:	KWV Intellectual Properties (Pty) Limited La Concorde, 57 Main Street Paarl 7646 ÁFRICA DEL SUR

The Office raised an objection on 26/04/2018 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter. The communication of the Office did not reach the applicant in its entirety due to technical reasons. Nor did the notification of 08/05/2018 reach the applicant correctly for the same technical reasons.

On 21/11/2018 the Office proceeded to notify the applicant of the provisional refusal of the application by registered mail.

On 17/01/2019, and in response to this last notice, the applicant informed the Office that the additional detail provided by the examiner did not materially affect any of the arguments set out in his reply filed 8 October 2018. The applicant confirmed that his October 8^th submissions still stood as his main submissions in this matter.

The applicant´s submissions of 08/10/2018 may be summarised as follows:

1- The mark depicts La Concorde House in Paarl, South Africa, which serves as the head office of the Applicant. La Concorde House’s ornate pediment depicts the Rape of Ganymede in which Zeus changes himself into an eagle in order to abduct the child Ganymede. The two columned allées lining the tiled walkway leading up to the house are visually distinct and immediately help draw the consumer’s attention to the house itself. Also, the style of architecture of the La Concorde House is unique to the Western Cape of South Africa.

2- The Mark is a well-known building with a direct connection to and association

with the Applicant and its history.

3- The Applicant refers to other marks accepted by the Office and states that these registrations illustrate that an artistic rendering of a house can, even without an accompanying house mark, be distinctive for Class 33 goods and is capable of serving as a badge of origin for consumers.

4- The Applicant reserves its right to make a subsidiary claim to acquired distinctiveness and to submit evidence of the same based on its historic use of the Mark should the examiner consider these submissions insufficient to overcome his earlier objections.

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 its objection.

General remarks

Pursuant to Article 7(1)(b) EUTMR, EU trade marks which are devoid of any distinctive character, i.e. trade marks that are not capable of distinguishing the goods or services specifically applied for by one undertaking from those of other undertakings, shall not be registered (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60), thus enabling the consumer who purchased the product identified with the trade mark to make his decision on the occasion of a subsequent acquisition on the basis of whether he had a positive or negative experience (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 18).

The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which registration is applied for and, second, by reference to the relevant public’s perception of the sign (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34 and 09/09/2010, C-265/09 P, α, EU:C:2010:508, § 32).

It is settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T 305/02, Bottle, EU:T:2003:328, § 34).

The goods at issue are mass consumption goods and are mainly aimed at average consumers. The awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

As the mark applied for is a figurative mark without any verbal element, the relevant public is the average consumer of the European Union.

Specific remarks on the applicant’s observations

1- The mark depicts La Concorde House in Paarl, South Africa, which serves as the head office of the Applicant. La Concorde House’s ornate pediment depicts the Rape of Ganymede in which Zeus changes himself into an eagle in order to abduct the child Ganymede. The two columned allées lining the tiled walkway leading up to the house are visually distinct and immediately help draw the consumer’s attention to the house itself. Also, the style of architecture of the La Concorde House is unique to the Western Cape of South Africa.

It is imperceptible to the eye that La Concorde House’s ornate pediment depicts the Rape of Ganymede in which Zeus changes himself into an eagle in order to abduct the child Ganymede.

Further, the combination of the remaining perceptible features of the mark is neither complex nor unexpected or unusual. On the contrary, applied to a winery mansion, these features are ordinary and lack any distinctive attribute that could be remembered easily. To come to this conclusion the Office is not obliged to give examples of facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. (15/03/2006, T 129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

2- The Mark is a well-known building with a direct connection to and association with the Applicant and its history.

It is extremely unlikely that La Concorde House in Paarl, South Africa, is known to the relevant public of the claimed goods, i.e. the average consumer of the European Union. As a consequence this public will not be able to link the wines to a specific winery.

3- The Applicant refers to other marks accepted by the Office and states that these registrations illustrate that an artistic rendering of a house can, even without an accompanying house mark, be distinctive for Class 33 goods and is capable of serving as a badge of origin for consumers.

The Office must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for legality. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be rigorous and complete, in order to prevent trade marks from being improperly registered or maintained. Such an examination must therefore be undertaken in each individual case. (Case C-51/10, Judgment of the Court of 10 March 2011, Agencja Wydawnicza Technopol sp. z o.o. v Office for Harmonisation in the Internal Market).

Representations of mansions, chateau’s, castles etc are not devoid of distinctive character per se. However, the relevant public is accustomed to the widespread use of such representations on wine bottles foremost, and will only ascribe them trademark significance if endowed by a striking and therefore memorable feature. The sign for which protection is sought lacks any such feature and is as a consequence incapable of fulfilling its essential function, which is to distinguish the goods or services of one undertaking from those of other undertakings.

4- The Applicant reserves its right to make a subsidiary claim to acquired distinctiveness and to submit evidence of the same based on its historic use of the Mark should the examiner consider these submissions insufficient to overcome his earlier objections.

The applicant requests that the Office first decides on inherent distinctiveness.

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application No 017887910 is declared to be non-distinctive 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.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Jean Marc SCHULLER