DECISION

of the Fifth Board of Appeal

of 6 November 2019

In case R 1194/2019-5

Kerry Luxembourg S.à.r.l.
17 rue Antoine Jans L-1820 Luxembourg Luxembourg	Applicant / Appellant

represented by FRKELLY, 27 Clyde Road Ballsbridge, Dublin 4, IRELAND

APPEAL relating to European Union trade mark application No 17 934 804

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Govers (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 24 July 2018, Kerry Luxembourg S.à.r.l. (‘the applicant’) sought to register the figurative mark

for the following list of goods as amended on 28 November 2018 and divided on 15 May 2019:

Class 7 - Machines for use in adding or applying flavourings to foodstuffs or beverages; machines for preparing or processing food or beverages;

Class 11 - Appliances for smoking foodstuffs or beverages.

2. By letter of 27 September 2018, the examiner informed the applicant that the trade mark did not appear eligible for registration for the goods claimed. The arguments of the examiner may be summarised as follows:

• The relevant English-speaking consumer would understand the sign as having the following meaning: uncontaminated smoke.

• The meanings of ‘CLEAN SMOKE’ composing the trade mark can be supported by the following dictionary references:

CLEAN: ‘Free from pollutants or unpleasant substances’ (https://en.oxforddictionaries.com/definition/clean);

SMOKE: ‘A visible suspension of carbon or other particles in air, typically one emitted from a burning substance’ (https://en.oxforddictionaries.com/definition/smoke).

• The relevant consumers would perceive the sign as providing information that the machines and appliances emit a pure, not contaminated smoke and thus treat/flavour food and beverages with an unpolluted smoke. The relevant consumer, notwithstanding certain figurative elements consisting of a stylised ‘O’ representing smoke, would perceive the sign as providing information about the quality and intended purpose of the goods in question.

3. The applicant submitted its observations on 13 February 2019, which may be summarised as follows:

• The combination ‘CLEAN’ and ‘SMOKE’ is an oxymoron. For this reason, the combination of ‘CLEAN’ and ‘SMOKE’ is unusual and striking. The mark is at the same time vague, non-specific, suggestive, and juxtaposes elements that appear to be contradictory. The combination is striking, illogical and memorable.

• The mark is not exclusively descriptive of the characteristics of the goods in question because it does not provide any substantive information as to their characteristics. It requires further explanation and requires the consumer to undertake several mental steps to reach a descriptive conclusion. The assessment of the mark ignores the specific goods for which protection is sought in these classes. Only one of the terms has any reference to relevance to smoke, namely ‘Appliances for smoking foodstuffs or beverages’ in Class 11.

• The figurative aspects of the mark are composed of a combination of two colours, green and blue, as well as a blue and grey stylised element in place of the letter ‘O’. The depiction of this replacement letter ‘O’ contains distinctive character – it is not an accurate or a common way to depict smoke or fire, nor a common stylisation to apply to a letter ‘O’.

• The sign applied for has a minimum degree of distinctive character because it introduces an element of invention, as smoke by its very definition would not be considered to be pure, unpolluted or uncontaminated and because the figurative elements are not negligible.

4. On 1 April 2019, the examiner took a decision (‘the contested decision’) refusing the trade mark applied for, under Article 7(1)(b) and (c), in conjunction with Article 7(2), EUTMR. The decision was based on the following main findings:

• The goods in relation to which an objection has been raised are machines and appliances for the treatment of foodstuffs, some of which are specifically described as being used for smoking foodstuffs or beverages (‘appliances for smoking foodstuffs or beverages’). In this context it is evident that the claim that the smoke being used in such machines or appliances is free from pollutants or contaminated particles is a meaningful message.

• This is further supported by the fact that other similar expressions are currently used in the relevant sector, in particular, the expression ‘pure food’ is used to refer to the attribute of ‘relating to, or concerned with the promotion of food that is free from preservatives, colouring, or other additives, or cultivated without the use of chemical fertilizers’ (http://www.oed.com/view/Entry/154843?redirectedFrom=pure+food#eid27530953 ).

• The term ‘pure’ is used to designate products that are ‘fully or nearly additive free’. In everyday language, the notion of food purity means there is no adulteration present that is harmful to human health, or that food is free of poisonous contaminating or deleterious substances that may be injurious to health. Thus, a product can be ‘pure’ if it is not mixed with anything that does not impair health.

• A ‘pure smoke’ designates the attribute of ‘smoke’ that is not mixed with anything that does not impair and is not deleterious to health (11/01/2016, R 1193/2015-1, PURESMOKE). Consequently, in the context of the contested goods, ‘CLEAN SMOKE’ is meaningful to the public.

• There are a number of possible meanings that can be ascribed to these words individually; however the definition of ‘CLEAN SMOKE’ is given as clearly indicating that the machines in Class 7 and appliances in Class 11 emit a pure, not contaminated smoke and thus treat/flavour food and beverages with an unpolluted smoke. The expression as such is meaningful and grammatically correct. The relevant public will understand it without the need to make a cognitive leap. Therefore, the message transmitted by the mark is, contrary to the applicant’s arguments, clear and direct.

• The applicant argues that the mark is not exclusively descriptive of the characteristics of the goods in question because it does not provide any substantive information as to their characteristics. It requires further explanation and requires the consumer to undertake several mental steps to reach a descriptive conclusion. The assessment of the mark ignores the specific goods for which protection is sought in these classes. Only one of the terms has any reference to relevance to smoke, namely ‘appliances for smoking foodstuffs or beverages’ in Class 11.

• The application covers in Class 7 ‘machines for use in adding or applying flavourings to foodstuff or beverages’. Flavourings are substances used to impart taste and or smell to food. There are different types of flavourings defined by the European Union legislation, such as natural flavourings and smoke flavourings. The ‘machines for preparing or processing food or beverages’ encompass the flavourings machines. The appliances in Class 11 are for smoking foodstuffs or beverages.

• As such the mark applied for when used in the context of flavourings machines and smoking appliances is a plain and simple qualitative indication of their aptness for emitting smoke that removes substances harmful to health. Accordingly, the Office cannot accept the applicant’s argument that the mark does not provide any substantive information as to the characteristics of the goods.

• Furthermore there is nothing vague, non-specific, and suggestive about the mark applied for in relation to the goods in the application. The combination ‘CLEANSMOKE’ makes perfect sense in relation to all the goods objected to. Moreover, it conveys an obvious meaning that the products exude the attribute of not being harmful to human health and being free of contaminants or ensuring that the use of the product will be such that the product elaborated or produced is not a product with smoke that is mixed with harmful constituents, or that the smoke flavour is not enhanced by chemicals that are harmful to health. This is a highly desirable and marketable quality of the goods in the application. There is absolutely nothing that can be found distinctive in using the expression ‘CLEANSMOKE’ for the goods. The expression applied for does not require several mental steps to reach a descriptive conclusion. It is just an ordinary message extoling the fact the applicant’s goods are concerned with the process of smoking that is not mixed with contaminants harmful to health. The mark applied for as a whole, therefore possesses no particular resonance. The Office cannot accept the argument that the mark requires further explanation to reach a descriptive conclusion.

• The applicant argues that the figurative aspects of the mark are composed of a combination of two colours, green and blue, as well as a blue and grey stylised element in place of the letter ‘O’. The depiction of this letter ‘O’ contains distinctive character – it is not an accurate or a common way to depict smoke or fire, nor a common stylisation to apply to a letter ‘O’. In the framework of the European Union Intellectual Property Network (EUIPN), the Office and a number of trade mark offices in the European Union have agreed on a Common Practice in relation to when a figurative mark, containing purely descriptive/non-distinctive words, should pass the absolute grounds examination because the figurative element renders sufficient distinctive character (also referred to as Convergence Project 3 or CP3 Practice).

• The CP3 project on figurative marks states that in general, descriptive/non-distinctive word elements appearing in basic/standard typeface with or without font effects are not registrable. Moreover, the mere ‘addition’ of single colours, as for example in the present case green and blue, to a descriptive/non-distinctive word element to the letters themselves, will not be sufficient to give the mark distinctive character. In addition figurative elements that are commonly used or customary in trade in relation to the goods and/or services claimed, such as a flame for smoking article, do not add distinctive character to the mark as a whole. The combination of the above indicated elements, which are not distinctive per se, will not change the consumer’s perception. In consequence, the mark at hand is immediately and directly descriptive of the relevant goods’ characteristics on the basis of Article 7(1)(c) EUTMR, in conjunction with Article 7(2) EUTMR.

• The applicant argues that the sign applied for has a minimum degree of distinctive character because it introduces an element of invention, as smoke by its very definition would not be considered to be pure, unpolluted or uncontaminated and because the figurative elements are not negligible.

• Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR.

• 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.

5. On 30 May 2019, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 1 August 2019.

Grounds of appeal

6. The arguments raised in the statement of grounds may be summarised as follows:

• The term ‘CLEANSMOKE’ is an invented term and is at most, suggestive of the applicant’s goods. The contested mark has a distinctive logo. The Office has previously accepted EUTM No 14 481 121 CLEAN MIST for ‘Apparatus for steam generating; humidifiers; de-humidifiers’ in Class 11 without raising any objections and without taking into account any acquired distinctiveness. If the Office’s interpretation of the present application had any foundation, it would apply even more strongly to that mark which does not have the characteristics of distinctive figurative elements of the present application. The nature of this registration means that there is no question of a change of practice. Even more significant is EUTM No  2 237 907, CLEANFIRE for ‘oxygen-fuel burners for industrial heating, and fuel and oxygen flow control panels for use with the burners’ in Class 11. The Office had originally objected to the registration of this mark on the same basis as the present application, but the applicant presented legal arguments against this and the objection was reconsidered and waived. When the same mark was subsequently refiled under No  4 514 261, CLEANFIRE, no objection was raised (see annex).

• In the same way that smoke would not be referred to as being clean, neither mist nor fire would be referred to as clean. Therefore these marks are directly comparable and according to the principles of equal treatment, the Office should apply the same standards to the present application and waive the objections.

• The mark as a combined term contains more than sufficient distinctive character when viewed as a whole. The distinctiveness of the mark is in the combination of words. The examiner should not presume that non-distinctiveness/descriptiveness lies in its entirety. The term ‘CleanSmoke’ is not part of the normal language or terminology used in the area concerned, to designate the kind or intended purpose of the goods at issue. If a consumer is looking to buy a machine for applying flavourings or for smoking, or even for removing contaminants, they are likely to use descriptive terms such as ‘flavouring machine’, ‘smoker’ or ‘decontamination machine’ etc. when searching. Such terms are nothing out of the ordinary and an objection to an application to register these terms as trade marks for such machines and appliances etc. would not be surprising. However, the applicant is not attempting to register any of these descriptive terms, rather it is looking to register the distinctive ‘CleanSmoke’ logo. The mark ‘CleanSmoke’ is not the usual way of referring to these machines and appliances.

• The Office has separated the mark into its components and has examined each component separately rather than considering the mark in its entirety. Moreover, even if the elements ‘Clean’ and ‘Smoke’ considered separately were considered devoid of distinctive character, this does not mean that their combination cannot have distinctive character. This is particularly the case where the mark involves a syntactically unusual juxtaposition of words. In this case, smoke by definition is made up of a visible suspension of particles and would not be described as being unpolluted or free from unpleasant substances (clean), and any meaningful interpretation of the mark involves several mental steps.

• It is well accepted that the mark must be assessed with specific regard to the contested goods. To extrapolate from one term which mentions smoke (appliances for smoking foodstuffs or beverages in Class 11) to other terms in a different class, Class 7, which do not reference smoking (Machines for use in adding or applying flavourings to foodstuffs or beverages; machines for preparing or processing food or beverages) is not justifiable.

• The references to pure as meaning additive free are not relevant. Clean does not mean containing no additives. Smoke can certainly be pure in terms of not containing anything except smoke, but smoke cannot and is not referred to as being clean, as it is by definition made up of a visible suspension of particles and would not be described as being unpolluted or free from unpleasant substances. Therefore, the comparison is not sustainable.

• ‘CleanSmoke’ is an oxymoron, given that smoke by definition means ‘a visible suspension of carbon or other particles in air’. Thus, smoke which is made up of a visible suspension of particles would not be described as being not contaminated or unpolluted, let alone pure. Therefore, the combination of ‘CLEAN’ and ‘SMOKE’ is unusual and striking and should be considered to be distinctive.

• Several mental steps or leaps are required and indeed the Office has made its own impermissible leap in extrapolating from the term containing smoke in the specification to the rest of the terms which have no mention of smoke. For all of these goods, the mark is distinctive (especially when combined with the distinctive logo element).

• The mark is more than the sum of its parts. Its constituent word elements create a cognitive dissonance because of their oxymoronic nature. It also has a distinctive logo element. The mark is not exclusively descriptive of the characteristics of the contested goods because it does not provide any substantive information as to their characteristics. It requires further explanation and requires the consumer to undertake several mental steps to reach a descriptive conclusion.

• The applicant would be prepared to exclude goods which emit smoke that remove substances harmful to health, i.e. decontamination apparatus, if that would facilitate the acceptance of the mark.

• The interpretation of the Office relating to products treated with smoke to remove contaminants does not follow from the description of goods and the applicant would be happy to exclude such goods if that would facilitate the acceptance of the mark.

• The contested mark is not descriptive or non-distinctive but rather is suggestive at most. The CP3 project is stated to only apply where the word elements are completely non-distinctive rather than merely weak.

• There is no support for this contention that the use of a flame in a logo is commonly used or customary in the trade. This is an empirical objection, which should be based on the facts as they stand in the marketplace. Further, the mark does not merely contain a flame, but rather the letter O in the word element ‘SMOKE’ is fashioned in its entirety into a depiction of a flame, in blue and grey. This stylised flame is not a true-to-life representation of a flame, as referenced in the CP3 project, and it is not common to the trade. Flames do not come in a combination of blue and grey, let alone in this shape. The replacement of the letter O with a stylised blue and grey flame is particularly distinctive and this is entirely ignored in the decision.

• The mark has been in extensive use and the applicant wishes to rely on acquired distinctiveness as a subsidiary claim. If the objection were upheld notwithstanding our submissions, the applicant would request to be given a further period of time within which to submit that evidence of acquired distinctiveness.

• In the following case (06/09/2017, R 433/2017-2, As Green As White Can Be (fig.), § 25, 26, 28) the mark was considered to be an oxymoron.

• Smoke by its very definition, being a visible suspension of carbon or other particles, would not be considered to be pure, unpolluted or uncontaminated. The mark therefore merely evokes a paradox, an oxymoron, without specifically describing the characteristics of the goods. It requires further explanation and requires the consumer to undertake several mental steps to reach a descriptive conclusion (12/01/2005, T‑334/03, Europremium, EU:T:2005:4, § 37; 02/12/2008, T‑67/07, Fun, EU:T:2008:542, § 33). The logo in ‘CleanSmoke’ is merely allusive and unfit to enable potential consumers to identify immediately and precisely one or more of the characteristics of’ the applicant’s goods.

• The figurative aspect was described as being ‘a stylised ‘O’ representing smoke’ which was considered to be negligible such that it did not endow the mark with distinctive character. This is incorrect. The figurative aspects of the mark are composed of a combination of two colours, green and blue, as well as an inventive blue and grey stylised element in place of the letter ‘O’. The depiction of this replacement letter ‘O’ contains distinctive character – it is not an accurate or a common way to depict smoke or fire, nor a common stylisation to apply to a letter ‘O’.

Reasons

7. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

8. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible. However, it is not well-founded.

Preliminary remark

9. Under Article 49 EUTMR, an applicant may at any time restrict the list of goods contained therein. However, the restriction must be made expressly and unconditionally (27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 60-62).

10. In the case at hand, the proposed limitation of the goods applied for is conditional and therefore does not comply with the abovementioned requirements. It is therefore rejected as inadmissible.

Article 7(1)(c) EUTMR

11. Article 7(1)(c) EUTMR excludes 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 services, or other characteristics of the goods or service, from registration.

12. Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that descriptive signs or indications relating to the characteristics of the goods or services in respect of which registration is sought may be freely used by all. That provision, therefore, prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35-36; 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25).

13. For a sign to be rejected as descriptive, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned to immediately perceive, without further reflection, a description of the goods and services in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

14. Only indications that are directly descriptive are ineligible for registration pursuant to Article 7(1)(c) EUTMR. In order to refuse to register a trade mark due to its descriptive nature, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive of the goods or services, or of characteristics thereof. 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).

15. The examination of applications for registration must not be minimal, but must be stringent and full in order to prevent trade marks from being improperly registered and to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59).

Relevant public

16. It is settled case-law that the distinctive character of a trade mark must be assessed by taking into account first, the goods or services in respect of which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question, who are sufficiently well informed and reasonably observant and circumspect (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C‑473/01 P & C-474/01 P, Tabs, EU:C:2004:260, § 33).

17. The average consumer’s level of attention is likely to vary according to the category of goods or services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 2; 07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 18 and the case-law cited therein).

18. The contested goods are ‘Machines for use in adding or applying flavourings to foodstuffs or beverages; machines for preparing or processing food or beverages’ in Class 7 and ‘Appliances for smoking foodstuffs or beverages’ in Class 11.

19. Neither the contested decision nor the applicant made explicit statements as to the relevant public, besides the assertion that the relevant public is English-speaking. In light of the nature and purpose of the goods, the Board finds that the relevant public consists mostly of professionals, although the general public cannot be excluded altogether. The awareness of the professional public will be high, and the general public will also display a heightened level of attention, in view, again, of the nature and purpose of the goods and of the fact that the goods are not goods of daily consumption or mass consumption and will only be purchased after careful selection. In this respect, the Board points out that even if the relevant public has a high level of attentiveness, this does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass-consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (11/10/ 2011, T‑87/10, Pipeline, EU:T:2011:582, § 27‑28).

20. Further, since the verbal element ‘CleanSmoke’ consists of two English words, the relevant public consists of English-speaking consumers in the European Union.

Descriptiveness of the sign’s verbal element

21. The mark applied for is the figurative mark that contains the verbal element ‘CleanSmoke’.

22. The contested decision correctly established the following meanings of the two words that the mark applied for consists of (Oxford English Dictionary):

‘CLEAN’: ‘Free from pollutants or unpleasant substances’ ;

‘SMOKE’: ‘A visible suspension of carbon or other particles in air, typically one emitted from a burning substance.’

23. The contested decision found that the relevant public will perceive the verbal element as having the meaning of uncontaminated smoke. Relevant consumers would perceive the sign as providing information that the machines and appliances emit a pure, uncontaminated smoke and thus treat or flavour food and beverages with an unpolluted smoke. The relevant consumer would thus perceive the sign as providing information about the quality and intended purpose of the goods in question.

24. The Board agrees with these contested decision’s findings. Given the combined meanings of the individual words in English, the Board considers that the expression, in relation to the contested goods, will be understood effortlessly as ‘uncontaminated smoke’. The meaning of the expression as a whole is indeed straightforward and immediately intelligible to English speakers. The message is unambiguous and evident, without any particular mental exertion being required on the public’s part in order to grasp its meaning.

25. The Board finds that relevant consumers will perceive the expression as a whole as providing the information that the contested ‘Machines for use in adding or applying flavourings to foodstuffs or beverages; machines for preparing or processing food or beverages’ in Class 7 and the contested ‘Appliances for smoking foodstuffs or beverages’ in Class 11 will indeed emit an uncontaminated smoke and thus treat or flavour food and beverages with an unpolluted smoke. This finding is valid both for the goods that explicitly mention ‘smoking’ in their description as for the ones that do not, as the combined words ‘clean’ and ‘smoke’ in relation to each of these goods indicate that the adding or applying flavourings, preparing or processing of food and beverages occurs by means of emitting uncontaminated smoke.

26. Contrary to the applicant´s assertions, the Board fails to see why the expression would be an unusual juxtaposition or would not make sense to consumers in relation to the goods applied for, because the message that is being conveyed by the mark applied for, used in relation to the goods for which protection is sought, is clear and straightforward, as has been explained in the preceding paragraphs. Certainly neither analysis nor a substantial mental leap is required to ascertain the possible meaning of the expression as a whole, since it simply consists of the combination of the two words placed together. For the English-speaking consumer the expression in relation to the contested goods will clearly be understood as a reference to the purpose or to a characteristic of the marked goods, in that they apply unpolluted smoke in order to add or apply flavourings to food or beverages, or to prepare or process food and beverages.

27. The examiner has correctly ascertained one of the possible meanings of the combination of the two words; the expression consists of, contrary to the applicant’s assertion that the examiner would have presumed the expression’s meaning, or that the expression as a whole would be distinctive. The meaning of the expression ascertained by the examiner is clearly descriptive in relation to the goods applied for, as has been explained. Further, as the Court has on many occasions further clarified, for a mark not to fall foul of Article 7(1)(c) EUTMR, there should be a perceptible difference between the words of the mark applied for and the mere sum of its parts, which assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or words 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, with the result that it is more than the sum of its parts (11/01/2015, T‑367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). In the case of the expression contained in the mark applied for, as has been previously explained, the impression created by it, in relation to the contested goods is direct and straightforward. Further, the Board recalls that a sign must be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

28. Consequently, the Board does not agree with the applicant that the expression is vague, non-specific and suggestive. Nor does the Board agree with the applicant that the expression would be striking, illogical and memorable, because it would juxtapose elements that appear to be contradictory to the extent that the expression is an oxymoron. The applicant asserts that since smoke by definition is a visible suspension of carbon or other particles, it will not be considered to be pure, unpolluted or uncontaminated. However, in order to understand the expression ‘clean smoke’ in relation to the goods applied for, no mental steps are required. The applicant provides no convincing reasons for its assertion that the relevant public will perceive a contradiction in the expression, as consumers apparently would believe that smoke somehow cannot be clean. The message of the expression is simply that the smoke being used is clean or has been cleaned. This message is not illogical nor is it contradictory, and will be immediately picked up on by the relevant public. Further, it is noted that the expression follows English grammar rules.

The mark applied for and its figurative elements

29. The mark applied for combines the verbal element ‘CleanSmoke’, represented in lower-case letters, except for the first letter of each word, which are in uppercase, i.e. ‘C’ and ‘S’, with figurative elements, i.e. the font used, the depiction of the word ‘Clean’ in the colour green, the word ‘Smoke’ in blue, with the letter ‘o’ in the word ‘smoke’ being a stylized element, partly in grey, which appears to represent smoke.

30. According to the applicant, the figurative elements of the mark applied for are such as to endow it with distinctive character. The Board notes that the font used in the mark applied for clearly is a common type face. As to the colours used in the mark, the mere addition of colours is not sufficient to give the mark distinctive character. Colours are commonly used in advertising to heighten the effect of the message and to attract the consumers’ attention (09/12/2010, T‑282/09, Carré convexe vert, EU:T:2010:508, § 23). The representation of the letter ‘o’ merely emphasizes the verbal element ‘smoke’.

31. The Board finds that the figurative elements, as a whole, applied to the word element ‘CleanSmoke’, as described above, are too minimal to endow that element with distinctiveness. Case-law confirms that when graphic elements cannot divert the relevant public’s attention away from the descriptive message, the word element remains the dominant element of the sign (12/04/2016, T‑361/15, Choice chocolate & ice cream, EU:T:2016:214, § 29 and case-law cited therein; 14/01/2016, T-318/15, TRIPLE BONUS, EU:T:2016:1, § 31 and case-law cited therein; 10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 20 and case-law cited therein; 20/11/2015, T-02/15, WORLD OF BINGO, EU:T:2015:914, § 22; 15/05/2014, T-366/12, YoghurT-gums, EU:T:2014:256, § 31-32; 11/07/2012, T-559/10, Natural beauty, EU:T:2012:362, § 26-27; 15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 15/09/2005, C-7/03 P, BioID, EU:C:2005:547, § 70‑74).

32. The Board thus finds that at least a significant part of the relevant public will perceive the figurative elements of the mark applied for as elements of mere decoration, or, in respect of the figurative ‘smoke’ element, as emphasizing the descriptive message of the mark applied for, which do not add distinctiveness to the descriptive term ‘CleanSmoke’.

33. These conclusions are consistent with the declaration of the European trade mark Offices in the context of the Convergence Programme CP3 (Common Communication on the Common Practice of Distinctiveness Word/figurative marks containing descriptive/non-distinctive words, 2 October 2015), which the applicant has referred to.

34. Although the Boards are not bound by this Common Communication of the trade mark Offices, as pursuant to Article 136(4) EUTMR they are independent, it is noted that the CP3 Common Communication states that the use of colours is not sufficient to distract attention from the fact that the word elements are clearly descriptive (pages 3 and 4 of the Common Communication). Further, there can be little doubt that the depiction of the letters in the present mark applied for is not on a par with the examples of distinctive marks given in the Common Communication, such as , and . Further, as stated above, the depiction of the figurative ‘smoke’ element is not striking, and it simply reiterates the descriptive message of the word ‘Smoke’ in the mark applied for.

35. In view of the above, the Board must conclude that the contested decision correctly found that the mark applied for, as a whole, is non-distinctive in respect of the goods applied for, which have been listed above. In the case of the mark applied for, the mere bringing together of a fully descriptive word element with non-distinctive figurative elements, does not endow the mark applied for, as a whole, with distinctive character. It is true that a minimum degree of distinctiveness suffices, but that is simply not the case of the present mark applied for.

36. The applicant makes reference to a previous decision of the Board (06/09/2017, R 433/2017-2, As Green As White Can Be (fig.), § 25, 26, 28), in which the mark applied for was considered to be an oxymoron. That mark is completely different from the present mark applied for, and as such the marks are not comparable.

37. Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited). Further, the Court has held that, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to another mark to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).

38. In light of the above, the Board finds that the contested decision did not err in finding that the mark applied for, taken as a whole, is objectionable on the basis of Article 7(1)(c) EUTMR for the contested goods.

Article 7(1)(b) EUTMR

39. It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Board shares the contested decision’s finding that the sign applied for also lacks distinctiveness with respect to the goods concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

40. A mark which, as in the case at hand, would simply be seen as a descriptive expression, cannot guarantee the identity of the origin of the marked goods and services to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods and services from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

41. English speakers will not see the mark as a badge of a particular trade origin for the goods at issue, but as a descriptive and informative expression, combined with non-distinctive figurative elements.

42. To conclude, it has become apparent that the mark applied for falls within the scope of the grounds for refusal set out in Article 7(1)(b) and (c) EUTMR because of the goods in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.

43. Consequently, the trade mark applied for is devoid of distinctive character under Article 7(1)(b) EUTMR.

44. By virtue of the foregoing, the appeal is dismissed and the case is remitted to the examiner for the examination of the subsidiary claim under Article 7(3) EUTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Remits the case to the examiner for further examination in accordance with Article 7(3) EUTMR.

Signed G. Humphreys

Signed C. Govers

Signed A. Pohlmann

Registrar: Signed H.Dijkema