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

(Article 7 EUTMR)

Alicante, 12/02/2019

HEPWORTH BROWNE LIMITED

15 St Paul's Street

Leeds LS1 2JG

REINO UNIDO

Application No:	17 927 102
Your reference:	CRY-T6587EM
Trade mark:	CRYOCREAM
Mark type:	Word mark
Applicant:	Cryoskin Ltd. 29 Gildredge Road Eastbourne BN21 4RU REINO UNIDO

The Office raised a partial objection on 26/07/2018 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 07/08/2018, which may be summarised as follows:

1. Meanings of the sign/the sign in relation to the goods at issue

2. Similar mark registered by national office

3. Claim for acquired distinctiveness

Upon request of 23/11/2018 from the Office, the applicant informed the Office on 17/12/2018 by confirming/clarifying its previously raised claim for acquired distinctiveness as a subsidiary claim.

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.

1. Meanings of the sign/the sign in relation to the goods at issue

General remarks

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).

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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).

Applicant´s remarks

The prefix ‘CRYO’ is an abbreviation for cryogenic. The word cryogenic describes extreme refrigerants such as liquid nitrogen. These are not used for cosmetic preparations. It is inconceivable that a cream can produce a cryogenic cooling effect. Therefore the relevant customers would not perceive the sign as providing information that the goods at issue are moisturising creams and skin preparations which give a cryogenic effect. Therefore the sign does not describe the kind, quality or intended purpose of the goods in question.

In fact, the goods marketed under the trade mark ‘CRYOCREAM’ do not have any cooling effect whatsoever. The skin treatment preparations are used in conjunction with an applicator sold under the trade mark CRYOBALL. The ball is chilled in a refrigerator before use. It is not cryogenic, not least because an applicator using cryogenic temperatures would immediately burn the skin. The mark CRYOBALL is registered.

Office´s comments

The applicant contended that the prefix ‘CRYO’ is an abbreviation for ‘cryogenics’ describing extreme refrigerants such as liquid nitrogen which are not used for cosmetic preparations. However, the Office still is of the position – with point of departure in the notice of grounds for refusal - that the prefix ‘cryo’ is a combining form which may be used in various combinations to describe a condition, involving or producing a very low temperature or extreme cold (from Greek ‘kruos’: ‘frost’).

As to the applicant’s argument that the meaning of ‘cryo’ is [limited to] an abbreviation of ‘cryogenics’, 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 indicates itself, 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.)

Therefore, the Office maintains its position that the sign at issue ‘CRYOCREAM’ in relation to the goods at issue which for the sake of good order are:

Class 3 Skin treatment preparations, moisturising creams.

will be perceived by the relevant public as providing direct information about a quality of these goods, namely that these creams and skin preparations provide you with a very cold/cooling sensation upon application apart from invigorating the skin.

Moreover, an internet search as of 06/02/2019 has revealed that the word ‘cryo’ in question is commonly used in the relevant market for skin products:

https://www.amazon.com/Cryo-Slimming-Cellulite-Excellent-treatment/dp/B00LGY0QK8

https://shop.nordstrom.com/c/111skin

https://www.katesomerville.com/anti-aging-products-tightn-cryogenic-skin-tightening-gel

2. Similar mark registered by national office

Applicant´s remarks

In support of the Office´s objection, a favourable examination report issued in relation to the corresponding UK application is enclosed¹. As this is an English language mark it falls to be considered from the viewpoint of an English language speaking customer. The mark CRYOCREAM is neither descriptive nor devoid of distinctive character and evidently the UK examiner shares this view.

Office´s comments

As regards the national decision referred to by the applicant, according to case-law 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).

3. Claim for acquired distinctiveness

Applicant´s remarks

In case the objection is maintained, an extension of time/a further period for filing comprehensive evidence and arguments is kindly requested.

Office´s comments

With reference to the last two paragraphs/sections of this communication – see below – the Office hereby informs the applicant that once this decision, which does not terminate the examination proceedings, has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon art. 7(3) EUTMR and art. 2(2) EUTMIR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 927 102 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR in the relevant English-speaking territory for the following goods namely:

Class 3 Skin treatment preparations, moisturising creams.

The application may proceed for the remaining goods, namely:

Class 3 Non-medicated cosmetics and toiletry preparations.

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.

Finn PEDERSEN