Partial refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/05/2019

BEST RECHTSANWÄLTE PartmbB

Hostatostr. 26

D-65929 Frankfurt am Main

ALEMANIA

Application No:	017932120
Your reference:	TM-525320/EM-HA
Trade mark:	HAIR FOOD
Mark type:	Word mark
Applicant:	The Procter & Gamble Company One Procter & Gamble Plaza Cincinnati, Ohio 45202 ESTADOS UNIDOS (DE AMÉRICA)

With the notification of 08/10/2018 (attached) the applicant was informed, that the sign applied for cannot be registered under Article 7(1)(b), (c) and 7(2) EUTMR after having received Third Party Observations (TPO).

With the above notice the applicant was given opportunity to submit observations in reply. On 14/12/2018 and on 22/03/2019 the applicant submitted observations. The main arguments can be summarized as follows:

1. It should be considered that the relevant goods are not foodstuff. Part of the evidence submitted refers to diets.

2. The term is not easily understood. Further explanations are necessary to grasp a meaning of the sign applied.

3. Hits of the evidence do not show that the term HAIR FOOD itself is descriptive. The applicant abundantly refers to the respective evidence and argues why the respective piece of evidence is not convincing.

4. The Third Party uses the term as a trade mark. It filed the observations because it wants to use the trademark itself and not because it believes HAIR FOOD to be a descriptive term.

5. Companies such as Ecoco Inc., Ekoeh and Palmer´s are also using the term HAIR FOOD as a trademark in countries outside Europe such as Brasil. Trade mark use is shown. On some web pages the TM symbol is used together with the term HAIR FOOD. The examples submitted in the writ of 22/03/2019 show that the customers will not regard the term HAIR FOOD as a mere indication that the product nourishes the hair.

6. Cited prior trade mark applications or refusal are not relevant.

Objection waived in part

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. Having given the above arguments careful consideration the examiner waives the objection for the following goods:

3 Soaps; perfumery, essential oils.

As regards those goods the argumentation can be followed that the sign is not close enough to fall under Article 7(1)(b) or (c) EUTMR. Insofar the applicant was convincing.

The objection is maintained on the grounds of Article 7(1)(b) and(c) for refusal in respect of the following contested goods.

3 Cosmetics; hair lotions; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

General considerations

The Court of Justice has consistently held that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (T-79/00, ‘LITE’).

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and/or services in respect of which registration is sought (20/03/2002, T-356/00, ‘Carcard’). For assessing descriptiveness under Article 7(1)(c) EUTMR, it is sufficient to establish that the mark consists exclusively of a sign or an indication that may serve, in trade, to designate the nature, intended purpose and/or other characteristics of the goods (30/11/2004, T‑173/03, ‘Nurseryroom’).

For the absolute ground for refusal laid down by Article 7(1)(c) EUTMR to apply, it is sufficient that there exists, from the perspective of the intended public, a direct and specific association between the sign and the categories of goods and services in respect of which registration is sought (27/02/2002, T‑106/00, ‘Streamserve’; confirmed by order of the Court of Justice of 05/02/2004 in Case C‑150/02).

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (e.g. judgment ‘Streamserve’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the word is used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, ‘Real People, Real Solutions’; 09/07/2008, T-58/07, ‘Substance for Success’).

Although it is clear from Article 7(1) EUTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1) EUTMR. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b). A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (12/02/2004, C-265/00, ‘Biomild’).

For a sign to fall within the scope of the prohibition of that provision, it must suggest a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40, upheld on appeal by 05/02/2004, C-150/02 P, Streamserve, EU:C:2004:75; and 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

Therefore, the mark may only be assessed, first, in relation to the understanding of the mark by the relevant public and, second, in relation to the goods or services concerned (30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 26; 27/02/2002, T-34/00, Eurocool, EU:T:2002:41, § 38). Moreover, account must be taken not only of the explicit and direct meaning of the word, but also of the connotation it can evoke.

The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’).

Article 7(2) EUTMR states that paragraph 7(1)(b) and (c) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The relevant public

In the present case, the goods target consumers in general as well as professionals. The public’s level of attentiveness may be heightened insofar as the professional consumers are concerned.

In terms of language, since the mark applied for is composed of English terms, its distinctiveness must be assessed with respect to, in particular, the English-speaking public in the European Union.

The sign’s descriptive character

The applicant submits that the sign HAIR FOOD does not give rise to the objections under Article 7(1)(b), (c) and 7(2) EUTMR.

As regards the respective parts, which form the sign it is undisputed what “hair” and “food” mean. The applicant insists, however that one would perceive the sign applied for as a distinctive one in relation to the goods applied for.

The goods at issue are:

3 Soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

The Office does not consider the applicant’s submissions and arguments persuasive in respect of the goods still at issue, which are highlighted. The connection between the indication given in the sign HAIR FOOD and the goods concerned is sufficiently direct for the relevant consumer to perceive the message contained in the sign and for that message to override the sign’s ability to indicate the commercial origin of the goods. Contrary to the applicant the Office is of the view that the relevant consumer, who encounters the term HAIR FOOD with the relevant goods, is unlikely to infer from such a term that the goods in question come from a specific undertaking. Its intended trade mark significance will not be received. It is more likely that the consumer will give the expression HAIR FOOD a meaning that is consistent with the context in which it will be used.

The meaning of a mark must be established from the perspective of the consumer targeted and not that of the applicant. The test to be applied is not always whether or not a particular expression exists as such (for example, in a dictionary), but if the expression as a whole is meaningful and what impression it will make for the relevant public.

In this regard, it must be stressed that the distinctive character of a trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods and services (consistent case-law on absolute grounds for refusal). The expression HAIR FOOD will be understood by the general public in England, Ireland and Malta are to be considered in assessing whether the mark is descriptive or distinctive.

Furthermore it has to be considered that the consumers will be directly confronted with the goods and see the sign HAIR FOOD at the same time. This is the situation which is relevant for the examination of the goods.

As regards cosmetics it has to be considered that it is a very broad category of goods. The refusal is justified for the respective broad term. See 28/06/2011, T-487/09, „ReValue“, EU:T:2011:317, § 74; 07/06/2001, T-359/99, „EuroHealth“, EU:T:2001:151, § 33. It is not excluded that some of the cosmetics might be applied to the hair or have other beneficial effects on the hair.

As regards hair lotions; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations they all refer directly to the hair as listed expressly in the specification.

All goods applied for listed in this section are used for the hair. The consumer can easily understand that the sign gives information on the goods (nourishment for the hair). Consequently, faced with the sign HAIR FOOD in relation to the concerned goods, the consumer will perceive it as simply an informative statement, informing the public, in a direct way, that the goods serve to nourish the hair. Bearing in mind all the above factors, it is highly unlikely that the relevant consumers will recognize the mark sought automatically as a sign which could distinguish the contested goods from those of other competitors. When the sign is used with respect to the goods at issue, the targeted public will merely perceive it as words with a meaning and not as a trade mark. It is recalled, that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (e.g. judgment of 23/10/2003, C-191/01 P, ‘Doublemint’).

As regards to the main arguments (in italics) in as far they have not been implicitly answered:

Argument: 1. It should be considered that the relevant goods are not foodstuff. Part of the evidence submitted refers to diets.

It has in fact been taken into consideration that not foodstuffs are applied for. For the goods listed above, absolute grounds of refusal apply. It is true that part of the evidence refers to other products, like diets. However this cannot lead to the acceptance of the sign for all categories of goods in class 3.

Actual use of the sign does not matter in the area of 7(1)(c), the sign is at least potentially descriptive. The Office has not raised the ground of Article 7(1)(d) EUTMR.

Argument: 2. The term is not easily understood. Further explanations are necessary to grasp a meaning of the sign applied.

The terms “hair” and “food” exist in the common language. It is not merely a suggestive term, but informs already about the product. Thus there will be no mystery about those terms.

A mark consisting of such a neologism remains descriptive if each of the word elements of which it consists is descriptive on its own and if the combination of those elements is not more than the sum of its parts (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 41; 15/05/2014, T-366/12, Yoghurt-Gums, EU:T:2014:256, § 16). Merely bringing two descriptive word elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned, regardless whether the word combination as such is also referenced in dictionaries (Biomild, § 39, 43).

Furthermore, Article 7(1)(c) EUTMR is not limited to indications which indicate the goods or services themselves. As the wording of the provision says any indication of a relevant characteristic is covered by it (10/03/2011, C-51/10, 1000, EU:C:2011:139, § 49). This may be for some goods or services the type (nature) of the goods or services, for others their purpose, and yet for others their field of use or their subject-matter. Here the sign describes at least the nature and the purpose of the goods.

The connotation indeed matters. See the landmark judgments 12.2.2004, C-363/99, „Postkantoor“, EU:C:2004:86, § 97; 23.10.2003, C 191/01 P, „Doublemint“, EU:C:2003:579, § 32).

Argument: 3. Hits of the evidence do not show that the term HAIR FOOD itself is descriptive. The applicant abundantly refers to the respective evidence and argues why the respective piece of evidence is not convincing.

It is conceded that part of the evidence submitted on its own might not be convincing. The applicant has made detailed comments and put forward its argumentation, which was in fact useful. The examiner agrees that a part of the evidence is not useful for the case. However, what is the subject matter is the examiner’s objection and not each and every piece submitted by the Third Party. For this reason the outcome cannot be a better one for the applicant.

Argument: 4. The Third Party uses the term as a trade mark. It filed the observations because it wants to use the trademark itself and not because it believes HAIR FOOD to be a descriptive term.

The examiner should rather not speculate about the possible intention of the Third Party. Even if it is like the applicant submits, this does not rest value of the part of the evidence and arguments submitted, which are pertinent (in part).

Argument 5: Companies such as Ecoco Inc., Ekoeh and Palmer´s are also using the term HAIR FOOD as a trademark in countries outside Europe such as Brazil. Trade mark use is shown. On some web pages the TM symbol is used together with the term HAIR FOOD. The examples submitted in the writ of 22/03/2019 show that the customers will not regard the term HAIR FOOD as a mere indication that the product nourishes the hair.

Here the applicant is right. As regards this part of the evidence, the examiner has not taken it into account for the partial refusal.

Argument 6. Cited prior trade mark applications or refusal are not relevant.

The examiner only agrees in part with this argument. In as far, for instance the German Patent and Trade Mark Office issued a refusal for comparable goods in class 3, this gives a hint, that absolute grounds of refusal apply.

Further considerations

Annex A7of the TPO submitted on 25/09/2018 shows a product, “HAIR FOOD”. The question is put to the consumer “What if we could give people products that feed their hair the way they were feeding themselves”. The submission of the TPO also show that there exist food-based cosmetics and also super food for the skin (skin-food). Also this is an indication that the sign at issue will be perceived a such product and not as a mere suggestive or fanciful sign. All this is a hint that the sign at issue is potentially seen as a descriptive and non-distinctive one.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign HAIR FOOD will be perceived by the consumers as pointing to the commercial origin of the objected goods. For the reasons mentioned above, the mark does not possess any actual distinctive character for those goods/services, pursuant to Article 7(1)(b) and (c) and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the aforementioned goods of the applicant from those of other undertakings. Pursuant to Article 7(2) EUTMR, this is true at least in the English-speaking countries of the European Union. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense.

Since the mark No. 017932120 HAIR FOOD lacks an inherent distinctive character and is also descriptive, it is barred from registration pursuant to Article 7(1)(b), (c) and 7(2) EUTMR and hereby refused in part for:

3 Cosmetics; hair lotions; cosmetic preparations for the hair and scalp; skin care preparations; cosmetic hair care preparations; hair cleaning preparations; hair styling preparations; hair tinting preparations; hair bleaching preparations; hair dyeing preparations; hair coloring preparations.

It may proceed to publication for the remaining goods:

3 Soaps; perfumery, essential oils, dentifrices.

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.

Wolfgang SCHRAMEK