Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/01/2019

FINNEGAN EUROPE LLP

1 London Bridge

London SE1 9BG

REINO UNIDO

Application No:		017933011
Your reference:		12999.0102-00337
Trade mark:
Mark type:		Figurative mark
Applicant:		Welspun India Limited. Welspun House, 6th Floor, Kamala City, Senapati Bapat Marg, Lower Parel (W), Mumbai . Mumbai Maharashtra 400013 LA INDIA

The Office raised a partial objection on 23/08/2018 pursuant to Article 7(1)(b) and (c) EUTMR 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, which forms an integral part of this decision.

The applicant submitted its observations on 23/10/2018, which may be summarised as follows:

The sign must be examined as a whole. It appears that evaluation of the alleged descriptiveness of the mark was based on the dictionary meaning of the word elements HYPER and DRY alone, without due regard to the overall presentation of the mark as applied for.

It has to be noted that according to Cambridge Dictionary, the term hyper- is used as a prefix which in combination with another terms constitutes a single meaningful word, for example, hypercritical. However, the mark as applied for contains two separate distinct words: HYPER DRY. In that regard, the said dictionary also provides a meaning of a standalone word hyper as too excited and energetic:

The relevant English-speaking consumer would perceive the word HYPER as meaning hyperactive, too excited or unusually energetic. As such, the mark HYPER DRY can be rephrased EXCITED DRY or ENERGETIC DRY. When the word HYPER is placed next to the word DRY, the lexical structure is not only grammatically incorrect but triggers in the minds of the relevant public a cognitive process and requires an interpretative effort to understand the meaning behind the mark. The mark as a whole therefore is a certain play-on-words creating an intrigue and interest in the mark rather than merely describing any features of the goods.

The unusual nature of the combination of the words HYPER and DRY in relation to goods in class 24 creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which the mark is composed of.

Therefore, there is no sufficiently direct and specific association between the word element of the mark and the goods for which registration is sought. In the present case, the word HYPER, at best, is a term that will evoke a certain association with a characteristic that the applicant seeks to attribute to its goods. It does so without informing the user of that characteristic in a specific and objective way. Therefore, the term HYPER DRY is too vague to serve to designate any characteristics of goods in question.

It is also of utmost importance that the mark in question is a composite mark consisting of the word ‘hyper’ placed above the word ‘dry’, both presented in stylised

font, and a graphical element surrounding the words. The main features of the mark as applied for are the positioning of the words on top of each other and the graphical shape surrounding the words. Even if the graphical element could be perceived by the relevant consumers as a drop, the element is highly stylised and is far from realistic or a true-to-life

portrayal of a drop. As such, it cannot be considered as providing purely descriptive

information about the goods.

Lastly, the applicant draws attention to EUTMs composed of the term HYPERDRY or containing elements HYPER or DRY and/or minimal graphical elements that were accepted for registration by the EUIPO in class 24, including the EUTM 006260038 SUPER DRY registered for towels.

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).

As regards the applicant’s argument regarding the meaning of the word hyper:

The meaning of the word ‘hyper’ as referred by the Office to in the objection letter is of ‘having too much of a quality’. In combination with the adjective ‘dry’ the message the sign conveys in respect of the objected goods in class 24 , which are all towels, is that they dry very well and quickly.

As for the incorrect grammatical structure of the word combination that results in lack of clear meaning and hence only in an allusive character of the sign, the Office wishes to state the following:

For combinations consisting of prefixes with another word, such as in the case at hand, it is decisive whether the meaning of the combination changes if its elements are written together or separately. It is the view of the Office that the expression ‘HYPER DRY’ must be considered descriptive for towels, even though it consists of a combination of separated words. Its meaning in relation to these goods remains for the consumer clearly understandable, namely as providing the information that the products have the quality of quick drying, such as quick drying towels. In light of the above, the Office maintains that the sign is descriptive and not allusive. It is very unlikely that the consumer would, when confronted with the sign in relation to the goods at hand, attach to the word HYPER a meaning of a standalone word in the sense of excited and energetic. In this respect it should stressed that according to established case law or a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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 combination of HYPER and DRY does not, in relation to the objected goods, create 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. (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

With regard to the stylization of the sign, the question to be considered is whether the stylisation of the sign are sufficiently distinctive for the sign to act as a badge of origin. In the present case, the Office is of the opinion that the sign is presented in a typeface that does not have a sufficient impact on the mark as a whole to render it distinctive, as it is neither sufficient to distract the attention of the consumer from the descriptive meaning of the word element nor likely to create a lasting impression of the mark. As far as the figurative element consisting in a shape of a drop is concerned, it would be seen by the relevant public as only reinforcing the descriptive message of the sign, namely that the goods can dry liquids quickly.

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

As regards the applicant’s argument that a number of similar registrations 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and

Article 7(2) EUTMR, the application for European Union trade mark No 017933011 is hereby rejected in part, namely for the following goods:

Class 24: Towels; terry towels; bath towels; towels [textile]; beach towels; bath

sheets (towels); large bath towels; towels of textiles; towels of textile.

The application will proceed accordingly for the following goods:

Class 24:

Bedsheets; comforters; comforters (bedding); comforters [covers]; comforters for beds; duvets; pillow cases; pillow shams; shams (pillow-); quilts; bed quilts; quilts of textile; bed blankets; blankets (bed -); bed clothes and blankets; bed blankets made of cotton; bed linen and blankets.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 be filed only when the appeal fee of EUR 720 has been paid.

Robert MULAC