Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 19/06/2019

HOYNG ROKH MONEGIER SPAIN LLP

Calle Príncipe de Vergara 36, 5º Dcha

E-28001

ESPAÑA

Application No:	017954903
Your reference:	30649.2372.EMT0
Trade mark:	SIENNA SELECTION
Mark type:	Word mark
Applicant:	PHILIP MORRIS PRODUCTS S.A. Quai Jeanrenaud 3 CH-2000 Neuchâtel SUIZA

The Office raised an objection on 15/01/2019 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.

After an extension, the applicant submitted its observations on 13/05/2019, which may be summarised as follows.

1. SIENNA is not a colour that consumers of cigarettes or other tobacco products are likely to consider a characteristic of the goods.

The colour SIENNA does not bring to mind a characteristic of the products in question because it has no sufficiently direct and specific relationship with the relevant goods.

It is clear that SIENNA SELECTION is not such a banal expression. In the field of class 34 goods, a sign such as SIENNA SELECTION cannot be reported to be commonly used in trade or likely to be commonly used in trade.

2. The consideration that some of the goods applied for are ‘style items (the examiner cites vapes, heatsticks and lighters) particularly to the youth market’ is totally unfounded, erroneous and irrelevant. The applicant’s clients’ goods are not aimed at or marketed to ‘the youth market’. The relevant consumers of the applicant’s clients’ goods are legal-aged smokers.

3. There are no instances of use the sign SIENNA SELECTION as a reference to features such as intensity, flavour or nicotine level. Although the use of colour names per se is not uncommon in the industry, the applicant reminds the Office that i) SIENNA is not associated in the tobacco industry with a particular feature of tobacco products; and ii) we are not before a sign made up only by a single colour name, but the conjunction of the terms SIENNA SELECTION. The word SELECTION qualifies the term SIENNA and this combination evokes the idea of a selected range of products rather than flavour or intensity.

4. There is a long list of EUTM registrations for colour names, including some for SIENNA and one owned by the applicant.

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).

Arguments of the applicant

1.

The applicant’s argues that SIENNA is not a colour that consumers of cigarettes or other tobacco products are likely to consider a characteristic of the goods.

The Office disagrees with this affirmation.

The mark applied for consists of two word elements SIENNA and SELECTION. The Office refers to the dictionary meanings provided in the previous notification sent on 15/01/2019, which have not been contested. Those meanings are for SIENNA: ‘a yellowish- or deep-reddish brown colour’ and for SELECTION: ‘a range of things from which a choice may be made’ (source for both references: Oxford English Dictionary online).

The words SIENNA and SELECTION, viewed in their combination, will convey a clear meaning which will be perceived immediately by the relevant English-speaking public, i.e. ‘a range of products in a yellowish- or deep-reddish brown colour’.

The Office recalls that for a sign to be caught by the prohibition set out in Article 7(1)(c), there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods 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).

In the case at hand, if the term SIENNA will not be considered a characteristic for some of the goods as for example fresh tobacco or cigarettes, the Office shown in its previous notification that there is a wide range of tobacco products that are of SIENNA colour such as vapes, heatsticks, etc.

Therefor in connection with these contested goods, the expression SIENNA SELECTION is no more than the sum of its parts. The expression is a grammatically correct combination of two individual terms that does not diverge from English grammar rules, and there is nothing unusual or striking about it, as it merely combines the meanings lent by the elements of which it is composed. The expression SIENNA SELECTION immediately informs the relevant public without further reflection that this particular selection/range of goods comes in a SIENNA colour.

Therefore the applicant’s argument that the colour SIENNA does not bring to mind a characteristic of the products in question because it has no sufficiently direct and specific relationship with the relevant goods must fail.

Thereupon, the Office wants to recall that a sign must be refused registration under Article 7(1)(c) 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). This is the case, in the case at hand.

As regards the applicant’s argument that the combination is not commonly used, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Thus the Office must refuse to give legal protection to a descriptive term even if any actual use of the claimed mark has not been demonstrated or even if there is some other word that is used more frequently for describing the claimed goods.

2.

The applicant’s argues that the consideration that some of the goods applied for are ‘style items (the examiner cites vapes, heatsticks and lighters) particularly to the youth market’ is totally unfounded, erroneous and irrelevant. The applicant’s clients’ goods are not aimed at or marketed to ‘the youth market’. The relevant consumers of the applicant’s clients’ goods are legal-aged smokers.

It is in the Office’s opinion that among the relevant consumers there will always be new customers who have recently started smoking and have not yet decided their brands, and those smokers who are more likely to try new products to get new experiences. Offering them a range of products in a SIENNA colour is an attractive way to attract their attention but they will only perceive the colour as a descriptive indication, rather than an indication of trade origin.

Given the descriptive meaning of the sign, the Office maintains that it will not be given trademark significance by the relevant consumer in relation to the goods in question.

3.

The applicant argues that they are no instances of use the sign SIENNA SELECTION as a reference to features such as intensity, flavour or nicotine level. Although the use of colour names per se is not uncommon in the industry, the applicant reminds the Office that i) SIENNA is not associated in the tobacco industry with a particular feature of tobacco products; and ii) we are not before a sign made up by a single colour name, but the conjunction of the terms SIENNA SELECTION.

Since a couple of years ago some terms like ‘light’, ‘mild’ and ‘low’ are banned from the packaging of tobacco products as misleading descriptors (see the European Tobacco Products Directive EUTPD, 2014/40/EU9).

In many cases, cigarette manufacturers have responded by simply removing the banned words from their cigarette packages and letting the colours do the talking. For example, now, blue, gold and silver are typically reserved for the supposedly milder products, while red is used for traditional cigarettes and the colour green for menthol cigarette. And depending on the manufacturer, the colours may vary because it will depend on the flavour proposed, the intensity and/or the level of nicotine. The Office gave examples in its notification sent on 15/01/2019. In one of them SIENNA corresponds to a full and intense tobacco blend. These examples are not exhaustive either.

Therefore when the applicant argues that no evidence of the colour SIENNA being an indicator of features of tobacco products has been submitted, the Office wishes to respond by pointing out that this affirmation is not correct and by adding that 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. (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C 64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46). The formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12).

Finally and contrary to the applicant’s opinion, the term SIENNA will be associated with the feature of the product in the same way as gold or silver are and SELECTION will refer to the choice the relevant consumer will make. It is generally accepted that the average consumer of tobacco products is likely to pay close attention to the various tobacco products available on the market when selecting a specific brand of tobacco. The average consumer does not randomly select a brand. Often the selection of a brand of tobacco is a ‘lifestyle choice’ as smokers often remain loyal to a brand for years and this SELECTION in this case, could be the SIENNA one.

Thus, in view of the above, the relevant consumers will not perceive the expression SIENNA SELECTION as anything but a completely descriptive indication that indicates certain characteristics of the flavour, intensity and/or level of nicotine of tobacco products offered by the applicant. There is no element whatsoever in the mark that would lead the relevant public to perceive the mark as an indication of commercial origin.

4.

The applicant argues that there is a long list of EUTM registrations for colour names, including some for SIENNA and one owned by the applicant.

The existence of other registered trade marks including the verbal element SIENNA does not undermine this conclusion because it concerns different trade marks and different goods to the case at hand, and it is a well-established principle that previous registrations, whether or not comparable, cannot yield a right to have the present trade mark registered, as 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 person (27.02.2002, T-106/00, Streamserve, EU:T:2002:43, §67; order of 12.02.2009, C-39/08 & C-43/08, Volks.Handy, EU:C:2009:91, § 18).

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 017954903 is hereby rejected for all the goods claimed, namely:

Class 34 Wired vaporizer for electronic cigarettes and electronic smoking devices; tobacco, raw or manufactured; tobacco products, including cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); smokers' articles, including cigarette paper and tubes, cigarette filters, tobacco tins, cigarette cases and ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters; matches; tobacco sticks, tobacco products for the purpose of being heated, electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; liquid nicotine solutions for use in electronic cigarettes; electronic smoking devices; electronic cigarettes; electronic cigarettes as substitute for traditional cigarettes; electronic devices for the inhalation of nicotine containing aerosol; oral vaporising devices for smokers, tobacco products and tobacco substitutes; smoker's articles for electronic cigarettes; parts and fittings for the aforesaid products included in class 34; devices for extinguishing heated cigarettes and cigars as well as heated tobacco sticks; electronic rechargeable cigarette cases.

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 FORZY