Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/01/2019

ADAMSONJONES

BioCity Nottingham Pennyfoot Street

Nottingham, Nottinghamshire NG1 1GF

REINO UNIDO

Application No:	017896910
Your reference:	6300/5023TEU
Trade mark:	ECO CBD
Mark type:	Word mark
Applicant:	Eco Vape Limited Cotes Park Lane Alfreton Derbyshire DE55 4NJ REINO UNIDO

The Office raised an objection on 03/07/2018 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 05/11/2018, which may be summarised as follows:

1. ECO CBD cannot be said to be directly descriptive of a number of goods objected because the alleged descriptive meaning of this trade mark does not have a direct or specific relationship with these goods, listed below:

Class 09	Apparatus and instruments for accumulating and storing electricity; batteries; electronic cigarette batteries; chargers; chargers for electronic cigarettes.
Class 10	Medical and veterinary apparatus and instruments; sprayers for medical purposes; spray bottles [vaporisers] for medical use; inhalators; vaporisers for medical purposes.
Class 34	Smoker's articles; cigarette cases; cigarette boxes; electronic cigarette cases; electronic cigarette boxes; smokeless cigarette vaporiser pipes

2. The level of attention of the relevant consumer would be very high, as the remaining goods would be high-priced, have a wide range of different flavours and compositions, and could affect their health if consumed.

3. The Applicant is the proprietor of the EU trade mark registration no. 015546526 ECO VAPE. The Applicant has used the suffix of its above trade mark and its company name ‘ECO’ in order to indicate origin. The use of the word ECO in the sign in question is in connection to its own house mark, ECO VAPE, and, therefore, the mark ECO CBD is not directly descriptive of the goods.

4. As the objection under Article 7(1)(b) is due to the objection under Article 7(1)(c), this should no longer be applicable..

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 and to the amended list of goods and services, the Office has decided waive the objection for the following goods:

Class 09	Apparatus and instruments for accumulating and storing electricity; batteries; electronic cigarette batteries; chargers; chargers for electronic cigarettes.
Class 10	Medical and veterinary apparatus and instruments; sprayers for medical purposes; spray bottles [vaporisers] for medical use; inhalators; vaporisers for medical purposes.
Class 34	Cigarette cases; cigarette boxes; electronic cigarette cases; electronic cigarette boxes; smokeless cigarette vaporiser pipes.

As regards to the remaining goods – including “Smoker's articles” – 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 ‘ECO’ and ‘CBD’ resulted in a meaningful expression, one that would recognizable by the relevant English-speaking smoking consumer as a descriptive indication that the goods objected consist of or contain Cannabidiol obtained through an environmentally friendly manner.

While the applicant is correct in its assumption that the level of attention of the aforementioned relevant consumer will be very high, the Office considers that to be exactly the reason why the consumer will recognise the descriptive character of the sign in question.

This relevant consumer, as argued in the objection letter, will be familiar with technical terms and acronyms related to smoking such as CBD, and will, without any mental effort, conclude that the goods and at issue consist or contain Cannabidiol.

As for the word “ECO”, the Office reaffirms that it will be taken by the relevant consumer already mentioned as a indication that the CBD in question was produced and extracted through an environmentally friendly manner. The fact that the applicant has registered a mark containing the same word combined with a different word altogether does not disqualify the objection raised or indicates any fault in its reasoning. In fact, the Office argues that, due to the widespread use of the word ECO, it seems unlikely that the relevant consumer, without any aid of figurative elements or other devices, will regard the use of word ECO as an indication of commercial origin rather that the common meaning used in actual conversations and written language.

It must be stated that examination of the eligibility for protection of a sign always relates to the goods and services specifically applied for. The consumer ‘is not sitting in a dark, empty room without any idea’, where he has to guess what goods and services are being offered for sale under the sign. Rather, the examination must be carried out on the basis of the goods and services specifically objected to.

As the goods are closely related to natural substances extracted from plants, it is likely that the relevant consumer will interpret the sign as provided by the Office: a descriptive indication that the goods objected consist of or contain Cannabidiol obtained through an environmentally friendly manner.

It must also be stated that the applicant has not disputed the meaning of the words ECO and CBD provided by the Office, which must be interpreted as an acknowledgement that the descriptions provided are correct. While the applicant disputes that the combination of the abovementioned words would be descriptive, it does not provide any alternative meanings for the sign, and merely explains that the word ECO would somehow indicate the commercial oprigin of the goods. However, the Court of Justice has stated that under Article 3(1)(c) of the First Council Directive of 21 December 1998 to approximate laws of the Member States relating to trade marks, the wording of which is identical to Article 7(1)(c) EUTMR, the component authority must determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future (see 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 30-31; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 56).

Moreover, it has to be stated that (emphasis added by the examiner):

“It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially”.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 879 221 is hereby partially rejected, namely for the following goods:

Class 05	Medical and veterinary preparations and articles; tobacco-free cigarettes for medical purposes; imitation cigarettes for medical purposes; electronic cigarettes for medical purposes.
Class 29	Edible oils.
Class 34	Tobaccos and tobacco products (including substitutes); smoker's articles; personal vaporisers and electronic cigarettes, and flavourings and solutions therefor; liquids for electronic cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; tobacco substitutes; cigarettes; flavourings, other than essential oils, for use in electronic cigarettes.

The application will proceed for the remaining goods, namely:

Class 09	Apparatus and instruments for accumulating and storing electricity; batteries; electronic cigarette batteries; chargers; chargers for electronic cigarettes.
Class 10	Medical and veterinary apparatus and instruments; sprayers for medical purposes; spray bottles [vaporisers] for medical use; inhalators; vaporisers for medical purposes.
Class 34	Cigarette cases; cigarette boxes; electronic cigarette cases; electronic cigarette boxes; smokeless cigarette vaporiser pipes

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