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

(Article 7 EUTMR)

Alicante, 08/04/2019

ELZABURU, S.L.P.

Miguel Angel, 21

E-28010 Madrid

ESPAÑA

Application No:	017921620
Your reference:	CE-20180237
Trade mark:
Mark type:	Figurative mark
Applicant:	The VB Holding, LLC 2727 Chemsearch Boulevard Irving Texas 75062 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 13/08/2018 pursuant to Article 7(1)(b) EUTMR and Article 7(2) 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.

2. The applicant was granted an extension of two months and submitted its observations on 12/12/2018 which may be summarised as follows:

• The mark applied for is formed by an uncommon, original combination of words; it also incudes a plus sign which adds distinctiveness to the sign.

• There are a number of possible non-descriptive meanings for the mark. Due to its unusual arrangement the mark has no clear meaning, and there is no sufficiently clear and specific relationship between the sign and the goods claimed in classes 3 and 5; the mark could be understood as referring to many other goods and services within the veterinary sector.

• Neither the allegedly promotional nature of the sign nor its allegedly laudatory character pose a bar to its ability to distinguish the goods it identifies from those of other undertakings.

• While the mark could be considered suggestive, no evidence is provided to support the specific assumption that consumers will conclude that according to veterinarians, the goods claimed are “veterinarian’s best (products)”.

• Examples of registered EUTMs of a similar nature are given, among others, EUTM No 0123069191 - Vetz Petz, and EUTM No 015120058 - Pharma BEST.

• The applicant refers to case-law in support of its arguments.

• The applicant claims that the mark has acquired distinctiveness through its lengthy and extensive use throughout the EU (the applicant clarified on 19/12/2018 that this claim is subsidiary).

3. Pursuant to Article 75 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).

The Office cannot find anything distinctive about the sign in relation to pet care products and food supplements for pets.

As for the words in the mark, there is nothing original about the combination “VET´S BEST”; it merely refers to a veterinarian’s best (product, choice etc.) for pets. Even if it is not specified what the word BEST refers to it is clearly understood as indicating the best goods offered/selected by vets. There is nothing distinctive about the words in the mark, neither on their own nor combined. Both words are common English words and when combined the message conveyed is obvious.

As regards the “plus sign” it is rather perceived as a green cross which is a symbol very commonly used in the medical/veterinary field. As such it also lacks any distinctive character as it merely reinforces the reference to the word “VET”.

In relation to pet care products and supplements for pets, the Office fails to perceive any other meaning of the mark than that of the best products (for pets) chosen//selected by vets. There is a sufficiently clear relationship between the sign and the goods claimed in classes 3 and 5. The mark is no more than a laudatory statement that the goods in question are, according to vets, the best and most suitable products for pets.

As regards the applicant’s argument that a number of similar marks have been accepted by the EUIPO, 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Moreover, the examples given are trademarks with a higher degree of distinctive character than the applicant’s mark. For example “Vetz Petz” is an unusual combination and spelling.

In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark easily and instantly as an indication of commercial origin in relation to the goods in question.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 017921620 is declared to be non-distinctive in the English-speaking countries the UK, Ireland and Malta as well as in Sweden, Denmark, Finland, Cyprus and the Netherlands where English is widely understood, for all the goods claimed, namely for:

Class 3 Pet care products, namely, non-medicated pet shampoos and conditioners, non-medicated grooming preparations for pet's skin and coat care.

Class 5 Food supplements for pets.

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.

Cecilia ALIN