Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 12/02/2019

BALDER IP LAW, S.L.

Paseo de la Castellana 93

E-28046 Madrid

ESPAÑA

Application No:	017939202
Your reference:	EUTM/538603/BF
Trade mark:	STYLISH TOUCH
Mark type:	Word mark
Applicant:	The Yankee Candle Company, Inc 16 Yankee Candle Way South Deerfield, Massachusetts MA01373 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 29/08/2018 pursuant to Article 7(1)(b) 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.

After an extension of the time limit to file observations in reply, confirmed on 26/10/2018, The applicant submitted its observations on 03/01/201, which may be summarised as follows:

1. The mark is distinctive because ‘STYLISH’ does not refer to the sense of smell.

2. The mark is fanciful and unusual in relation to fragrances and scented sprays.

3. USPTO has accepted the mark.

4. EUIPO has accepted several marks containing the word ‘TOUCH’, applied for goods in class 3.

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.

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).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C 517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T 138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C 456/01 P & C 457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 42; and 03/12/2003, T 305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 21).

The Office cannot share the applicants’ opinion expressed in the first argument, stating that the mark is distinctive because ‘STYLISH’ does not refer to the sense of smell and the goods are fragrances and scented sprays.

The Office understands that the goods applied for are ‘Room fragrances; air fragrancing preparations; scented room sprays. The trade mark is ‘STYLISH TOUCH’, and has to be considered in its entirety and as a whole. Furthermore, the objection has been raised under Article 7(1)b lack of distinctiveness and 7(2) EUTM only, and not under 7(1)c descriptiveness.

The expression ‘STYLISH TOUCH’ in relation with room fragrances; air fragrancing preparations; scented room sprays, which are often sold in stylish bottles and other forms and shapes, like scent sticks, will be understood by the relevant consumer as ‘a fashionably elegant and sophisticated detail or addition. The meaning of the term has been clarified using dictionary references. The subject expression ‘STYLISH TOUCH’ consists of a grammatically correct syntax of English words and is an advertising hyperbole whose meaning remains quite clear for consumers.

Regarding the second argument, the fact that the sign at issue can be perceived as fanciful and unusual, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the effect of using the goods concerned, namely that using the room fragrances you will add style to your home. (judgment of 21/01/2010, C 398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 34). As stated in the notification of 29/08/2018, room fragrances and fragrancing preparations, like reed diffusors or scented sticks, are offered on the market in stylish bottles and presentations, in different styles and smells.

As regards the national decision referred to by the applicant, according to case-law, the Office would like to contend that the European 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 EUTM must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community 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. (See judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47.)

As regards the applicant’s argument that a number of registrations containing the word ‘TOUCH’ have been accepted by the EUIPO it has to be stated that, 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).

Only part of the mentioned registrations, e.g. ‘ELEGANT TOUCH’, ‘PERFECT TOUCH’ or ‘FRESH TOUCH’ possess the same syntactic structure as the mark at hand, namely an adjective followed by a noun, and are in that sense comparable.

Most of the referred to registrations containing the word ‘TOUCH’ have been issued more than ten years ago and since then the trade mark practices of the Office have evolved with time. Under these circumstances it cannot be expected that the conditions under which these marks were assessed at the time can be extrapolated to the consideration of the grounds of registration of the present application for the purposes of casting doubt on the conclusion that the trade mark applied for descriptive of the goods and is devoid of distinctive character in accordance with Article 7(1)(b) and (c) EUTMR.

Furthermore, none of the mentioned registrations contains ‘room and air fragrance preparations’.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 017 93 92 02 is hereby rejected for all the goods.

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.

Carine CEELEN