Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 11/07/2019

NLO SHIELDMARK B.V.

Postbus 29720

NL-2502 LS Den Haag

PAÍSES BAJOS

Application No:	017950719
Your reference:	T3070735EM
Trade mark:	GOOD SUPPLY
Mark type:	Word mark
Applicant:	Aphria Inc. 265 Talbot Street West Leamington Ontario N8H 4H3 CANADÁ

The Office raised an objection on 20/11/2018 pursuant to Article 7(1)(b) and (c) 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.

The applicant submitted its observations on 20/03/2019, which may be summarised as follows.

1. The word GOOD cannot be interpreted without a following word to which GOOD refers. In this case that is the word SUPPLY. This also shows the double meaning of the sign, as the word GOOD can also refer to a goods listed in classes 1-34. This contributes to distinctiveness. The word SUPPLY means ‘stock, reserve’ OR ‘substitute, temporary’. This meanings show that the words refers to such a wide concept, that it alone is sufficiently distinctive in relation to the goods and services at issue. The sign GOOD SUPPLY cannot be descriptive in relation to the goods and services, because it would make no sense to refer to a stock of moral virtue.

2. If GOOD SUPPLY is considered as such, then it confirms the distinctiveness, because the good and services largely concern goods and services consisting of or relating to cannabis products which by its nature is by some considered as something of low moral virtue. The sign GOOD SUPPLY breaks with the habit considering cannabis products as immoral. This leads to a certain thinking process amongst the relevant public, making it distinctive as a whole.

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 stated in the notification of the objection sent to the applicant, in the present case, the relevant consumers would perceive the sign as providing information that the goods and services are, are for, or intend to provide, a good supply of products. Therefore, the relevant consumer would perceive the sign as providing information about the kind, quality, quantity and intended purpose of the goods and services in question.

The applicant’s argument that the sign refers to a stock or reserve (supply) of moral virtue makes no sense, as ‘good’ is an adjective for ‘supply’ and ‘supply’ is not a person or group of person and is incapable of possessing morals. The relevant consumer does not need to imagine what the sign means, but will instead look for the most obvious meaning in combination with the goods and services applied for. When one refers to a GOOD SUPPLY, one is referring to either the supply being good with reference to quantity of the goods, or of the quality of the goods which are in supply. Furthermore, this common meaning of the term GOOD SUPPLY should be left free for others to use in the marketplace.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Moreover, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. 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.)

When the relevant consumer is confronted with the sign GOOD SUPPLY in combination with the goods and services applied for, they will not see the sign as an indication of trade origin, but rather as a description of the kind, quantity, quality or intended purpose of the goods and services applied for.

Given that the mark has a clear descriptive meaning in relation to the goods and services 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. In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) of Regulation No 40/94 is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (judgment of 12/06/2007, T-190/05, TWIST & POUR, EU:T:2007:171, § 39).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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). In this case, the sign is not distinctive and will not be seen as an indication of trade origin as it merely promotes the fact the goods come from a “good supply”, or that there is a “good supply” which can be provided for through many of the services of the applicant.

The relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services in question, namely that they are, or intend to provide, a good supply of products.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 017950719 is hereby rejected for the following goods/services:

Class 3 Bath additives; bath herbs; bath oils; bath oils for cosmetic purposes; beauty care cosmetics; beauty creams for body care; beauty gels; beauty lotions; body and beauty care cosmetics; body creams; body oils; cosmetic creams; cosmetic oils; cosmetics and make-up; face and body lotions; face and body milk; face lotion; hair care preparations; hair styling preparations; hand cream; hand lotions; lip care preparations; lip conditioners; lip glosses; liquid soaps; massage creams; massage oils; non-medicated bubble bath preparations; non-medicated preparations for the care of hair; non-medicated preparations for the care of skin; non-medicated preparations for the care of the scalp; non-medicated skin care preparations; oils for toiletry purposes; skin care preparations; skin creams; skin emollients; skin lotions; skin soap; soaps for body care; soaps for personal use.

Class 5 Cannabis related product, namely, oils; oils derived from cannabis; cannabis and marijuana; cannabis related products, namely oils, salves, concentrated pastes, tinctures, tablets and capsules, each containing cannabis; oils, salves, concentrated pastes, tinctures, tablets and capsules each containing resins and oils derived from cannabis; nutraceuticals for medicinal purposes; nutraceuticals for medicinal purposes containing cannabis; nutraceuticals for medicinal purposes containing derivatives of cannabis, namely resins and oils; topical skin creams, bar and liquid soaps, bath additives, bath herbs, bath oils, body creams, body oils, face and body lotions, face and body milk, face lotion, and skin care preparations each containing derivatives of cannabis; each of the aforementioned products for the relief of pain, for relaxation, for reducing stress and fatigue, for mood enhancement, for maintaining general health and well-being, for relieving anxiety, for relieving depression, as a sleep aid; personal sexual lubricants; transdermal patches containing cannabis; oral sprays containing cannabis.

Class 21 Grinders for use with cannabis and marijuana; Jars.

Class 25 Athletic apparel; baseball caps; beachwear; caps; casual wear; coveralls; flip-flops; gloves; golf caps; golf shirts; hats; headbands; long-sleeved t-shirts; mittens; novelty hats; sandals; shirts; sweatshirts; toques; t-shirts.

Class 29 Oils and resins derived from cannabis, not for medicinal use; cannabis related product, namely, oils; oils derived from cannabis; food products containing cannabis, cannabis resins and cannabis oils, namely butter.

Class 30 Food products containing cannabis, cannabis resins and cannabis oils, namely chocolates, cookies, brownies, candy and food energy bars; tea; cannabis related products, namely teas containing cannabis, and teas containing derivatives of cannabis namely resins and oils.

Class 31 Live cannabis plants; live marijuana plants; cannabis seeds.

Class 32 Smoothies, fruit beverages and fruit juices, carbonated soft drinks, and energy drinks each containing derivatives of cannabis; smoothies, fruit beverages and fruit juices, carbonated soft drinks, and energy drinks each containing resins and oils derived from cannabis.

Class 34 Dried marijuana, dried cannabis; derivatives of cannabis, namely resins and oils; cannabis and marijuana for recreational use; smokers' articles, namely, smoking pipes, pouches for use with marijuana and cannabis, lighters for smokers, oral vaporizers for smokers.

Class 35 Providing the retailing, wholesaling and distribution of marijuana and cannabis, cannabis related products, derivatives of cannabis and natural health products containing cannabis; online retail sale of marijuana and cannabis; providing consumer information in the field of cannabis dispensary locations; providing a web site featuring the ratings, reviews and recommendations on products and services for commercial purposes posted by users in the field of marijuana and cannabis.

Class 39 Providing the packaging of marijuana and cannabis, cannabis related products, derivatives of cannabis and natural health products containing cannabis.

Class 44 Providing the breeding, growing, cultivation, harvesting and production of marijuana and cannabis.

The application may proceed for the remaining goods/services.

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.

Herbert JOHNSTON