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

(Article 7 EUTMR)]

Alicante, 23/10/2018

SHERIDANS

Seventy Six Wardour Street

London W1F 0UR

REINO UNIDO

Application No:	017898406
Your reference:	028674-1
Trade mark:	GREAT BURGER
Mark type:	Figurative mark
Applicant:	Gordon James Ramsay 539-547 Wandsworth Road London SW8 3JD REINO UNIDO

The Office raised an objection on 15/06/2018 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 14/08/2018, which may be summarised as follows.

1. The sign is not descriptive due to the unusual nature of the combination of the word elements and stylisation. The Applicant submits that the mark will be understood to mean “GR” “EAT” “BURGER”. The letters “GR” are presented in a different colour and a different font from the rest of the word elements, this requires a mental interpretation.

2. The Applicant submits that the Application mark should be accepted at least for “reservation and booking services for restaurants”. There is no relationship between taking reservations or restaurant bookings with a particular food stuff.

3. In the event that the Examiner is not in agreement with the Applicant’s submissions, then the Applicant requests an extension of time to file evidence of acquired distinctiveness pursuant to Article 7(3) EUTMR. Accordingly, the Applicant submits a Subsidiary claim whereby the Examiner renders its decision on the basis of the absolute grounds objection first, then if these grounds are not overcome the Applicant requests the opportunity to submit evidence of acquired distinctiveness.

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).

1/

The Applicant underlines that the sign is not descriptive due to the unusual nature of the combination of the word elements and stylisation.

The Applicant submits that the mark will be understood to mean “GR” “EAT” “BURGER” and that the letters “GR” are presented in a different colour and a different font from the rest of the word elements, which requires a mental interpretation.

The Office points out that the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The Office can’t agree with the Applicant on the fact that the mark is only suggestive.

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, emphasis added.)

The Office points out that a trade mark consisting of a word/an expression composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The Office assumes that the relevant consumers would immediately understand/read/see as being GREAT BURGER. We still can read GREAT BURGER and nothing else.

The Office does not agree with the Applicant on the fact that the mark is purely allusive. The average consumer would not need to make a considerable mental effort to understand further. In the notification of 15/06/2018, it is clearly explained that the distinctive character of a trade mark is assessed in relation to the goods and services for which protection is sought and the perception of the relevant public.

2/

The Applicant submits that the Application mark should be accepted at least for “reservation and booking services for restaurants” because there is no relationship between taking reservations or restaurant bookings with a particular food stuff.

The expression GREAT BURGER cannot be considered as being only allusive if the majority of the relevant public recognize it as having a clear meaning. The Office would rather say that the expression is certainly descriptive and devoid of any distinctive character, even more in relation to restaurant services. Nowadays, these terms are banal when referring to restaurants. Consumers are able nowadays to book a restaurant online. If they see GREAT BURGER, they will think that the restaurant is providing very good burgers.

The terms GREAT BURGER are not part of an abstract concept. The sign does not possess a sufficient degree of originality and resonance that requires at least some interpretation. The target public, the professional English consumers in UK, Irland and Malta, will immediately perceive the sign as communicating a value statement without the need to make a cognitive leap. What matters is the possible meaning and perception of the sign.

The sign applied for is simple, basic and so lacking in additional distinguishing features or striking figurative elements that it cannot carry out the ultimate function of the trade mark. There is absolutely no evidence to suggest that the relevant public will perceive the overall sign as an indication of commercial origin.

The Office can’t share the Applicant’s finding that the consumers will see first “GR” and then “EAT” & “BURGER”.

Furthermore, a difference must be observed between a sign which is descriptive and devoid of any distinctive character and a sign which is ONLY allusive. A sign which is allusive, alludes to the concept/message conveyed: the sign is likely to be considered acceptable then. But if the sign is descriptive and devoid of any distinctive character, it cannot be accepted for registration, even if the Applicant’s maintains the idea of a mere suggestion.

Therefore, the Office cannot waive the objection in relation to reservation and booking services for restaurants.

3/

The Applicant requests an extension of time to file evidence of acquired distinctiveness pursuant to Article 7(3) EUTMR in the event that the Office is not in agreement with the Applicant’s submissions. Accordingly, the Applicant submits a Subsidiary claim whereby the Examiner renders its decision on the basis of the absolute grounds objection first, then if these grounds are not overcome the Applicant requests the opportunity to submit evidence of acquired distinctiveness.

It should be noted that under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

Nevertheless, first, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods and services as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons or at least a significant proportion thereof, identify goods and services as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see judgment of 10/11/2004, T-396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C-108/97 and C-109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C-25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C-299/99, ‘Philips’, paragraph 63).

Thus, in accordance with Article 7(3) EUTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) EUTMR, provided that it ‘has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’ on the basis that Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) or (d) EUTMR, whereby registration must be refused for trademarks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade.

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. 17898406 is declared to be descriptive and devoid of any distinctive character pursuant to Article 7(1)(b) and (c) in United Kingdom, Irland and Malta for all the services 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.

Magali VOISIN