Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 31/07/2019

Katarzyna Binder-Sony

ul. Poznańska 23/6

00-685 Warszawa

POLONIA

Application No:	017939619
Your reference:	1124235
Trade mark:	YOGA CAFÉ
Mark type:	Word mark
Applicant:	Rajan Pillai 300 East 40th Street New York 10016 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised two objections on 07/09/2019 and 29/04/2019 pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letters, which form an integral part of this decision.

The Office took the view that the relevant Croatian-, Danish-, Dutch-, English- and French-speaking consumer would understand the sign as expression composed from two words which has the following meaning: coffee house or small restaurant serving coffee and other refreshments, where one can practise yoga exercise or get to know more about yoga teaching.

The abovementioned meaning of the words ‘yoga’ and ‘café’ can be, inter alia, supported by the following dictionary references:

YOGA ‘A Hindu spiritual and ascetic discipline, a part of which, including breath control, simple meditation, and the adoption of specific bodily postures, is widely practised for health and relaxation’.

CAFE (also CAFÉ) ‘a small restaurant selling light meals and drinks’. Origin: early 19th century: from French café 'coffee or coffee house'.

(information extracted from the Oxford Dictionaries online on 06/09/2018 at

https://en.oxforddictionaries.com/definition/english/yoga

https://en.oxforddictionaries.com/definition/english/cafe?q=caf%C3%A9).

The same meaning of the sign and the words composing the sign as it is stated above in English would be also understood by the relevant consumers speaking Croatian, Danish, Dutch or French.

It is evident from that the words ‘Yoga Café’ (or equivalent synonyms and spellings;) are used in relation to physical, mental and spiritual practices of yoga which are performed, exercised, practised, organized, lectured, trained, learnt and/or taught in the café-styled restaurant premises together with an offer of food, drinks and refreshments.

In the present case, the relevant consumers would perceive the sign as providing information that the services in question such as restaurant services, self-services restaurants and fast food restaurants are provided by yoga practitioners, especially for yoga followers. Consequently the consumers would understand that the services are of added value or implying a professional level in the field of yoga. The sign conveys a banal and purely informational meaning in connection with the services in question. Therefore, the sign describes the kind, nature, purpose of the services in question, as well as the place where they are provided.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the services of one undertaking from those of other undertakings.

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the services which comes from informative meaning that the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the respective services. There is nothing about the expression ‘YOGA CAFÉ’ that might, beyond its descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question.

The sign ‘YOGA CAFÉ’ conveys a simple informative meaning to the prospective consumers: that the services provided by a particular undertaking are offering the added value services provided, as apart from standard restaurant services, they offer the possibility of practicing yoga or getting to know about yoga philosophy.

The applicant submitted his observations on 07/01/2019 to the first objection letter, which may be summarised as follows.

1. With a reference to the case-law he claims that the sign is distinctive as it does not convey a simple, clear and precise message which will be easily understood in relation to the services in question and it will be perceived as imaginative, surprising, contradictory and unexpected, especially when no further context is provided, because the two words constituting this sign have little in common. Therefore the sign has only a suggestive, rather than a clear, evident meaning, and that too many mental steps have to be made by the relevant public to make a specific link.

2. With a reference to the case-law he claims that the services in question were not fully taken into account as yoga would be understood by the relevant public as a form of exercise, which can be hardly imagine in places such as restaurants, self-services restaurants or fast food restaurants. He continues that a restaurant is not a place where someone can get to know more about yoga teaching.

3. He points out that the Office registered the trade marks with the same verbal element (EUTM No. 000831594 – YOGA FIT, EUTM No. 002362697 – AIR YOGA, EUTM No. 003133196 – YOGA-MAD, EUTM No. 004271748 – YOGAMATTERS, EUTM No. 008139701 – BEYOND YOGA, EUTM No. 008862088 – YOGA JEANS).

The Office replied in detail in its second objection letter on 29/04/2019.

Under Article 7(1)(c) EUTMR, a sign must be refused registration if at least one of its possible meanings designates a characteristic of the services concerned.

The Office contends that, in the context of the relevant services, the mark ‘YOGA CAFÉ’ immediately informs consumers, without further reflection, that the services for which protection is sought in Class 43 and to which an objection has been raised:

• consist of restaurant services, self-services restaurants or fast food restaurants which are provided in the coffee house or small restaurant serving coffee and other refreshments, where one can practise yoga exercise or get to know more about yoga teaching, as well as which are provided by yoga practitioners, especially for yoga followers..

This is the direct descriptive link that will be established in the minds of consumers.

The descriptive meaning of the sign is ‘immediately perceived’ by the relevant public and this meaning, in connection with the services in question, is ‘concrete, direct and understood without further reflection’. The words used in the sign were used in their ‘ordinary and plain meaning’.

Therefore, taken as a whole, the mark ‘YOGA CAFÉ’ immediately informs consumers without further reflection that the abovementioned services for which protection is sought in Class 43 consist of the coffee house or small restaurant serving coffee and other refreshments, where one can practise yoga exercise or get to know more about yoga teaching. Consequently, taken as a whole, the mark will be perceived as a meaningful expression that makes a clear reference to a characteristic of the services in question in Class 43.

The findings have been supported by the internet hyperlinks.

The relevant public is the Croatian-, Danish-, Dutch-, English- and French-speaking consumer in the EU and, therefore, the relevant territories are, inter alia, Belgium, Croatia, Denmark, France, Ireland, Luxembourg, the Netherlands, Malta and the United Kingdom, where the expression ‘YOGA CAFÉ’ will be understood instantly according to its obvious meaning as a whole.

Considered as a whole, the sign consists of a purely informational expression, which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services at issue.

Consequently, the mark ‘YOGA CAFÉ’, taken as a whole, is a mark that consists exclusively of a sign that may serve, in trade, to designate a characteristic of the services in question (Article 7(1)(c) EUTMR).

As such, the sign applied for would not allow the relevant public to distinguish the commercial origin of these services from those of other undertakings providing identical or similar services and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

With the notice the applicant was given opportunity to submit observations in reply. 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.

The applicant did not submit any reply to the Office letter of 29/04/2019.

The applicant failed to submit observations within the time limit. Consequently further argumentation is superfluous. For the reasons set out in the letters of objection, and pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR, the application for the European Union trade mark in question is hereby rejected for all the services claimed.

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.

Jiri JIRSA