Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/06/2019

CARPMAELS & RANSFORD LLP

One Southampton Row

London London, City of WC1B 5HA

UNITED KINGDOM

Application No:	017957902
Your reference:	T041509EM
Trade mark:	GLASS GLOW
Mark type:	Word mark
Applicant:	Trade Holdings, Inc. 460 West 24th Street Suite 1F New York NY 10011 UNITED STATES OD AMERICA

The Office raised an objection on 13/11/2018 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 13 March 2019, within the time limit of the first extension, which may be summarised as follows.

1. The distinctiveness of the term ‘GLASS GLOW’ should be assessed in its entirety and not by breaking the word mark into parts.

2. The sign does not have a simple and easily articulated meaning. The term is grammatically unusual and, given the analytical effort required to describe it, it suggests that the sign is original and resonant when applied to those goods.

3. The sign is an unusual combination of words. Moreover, the meaning of the word glow is allusive. No-one’s skin glows. Similarly, no-one’s skin looks like glass. Both words allude to, rather than describe.

4. The applicant could not find any usage at all online of the combined term ‘GLASS GLOW’. No-one could have both a glass-like and a glowing complexion.

5. The applicant refers to various EU trade marks accepted by the Office. See below:

• ROSY GLOW (EUTM No 1 092 946)

• WONDERGLOW (EUTM No 1 221 708)

• HAPPY GLOW (EUTM No 1 313 081)

• ULTRA GLOW (EUTM No 1 517 382)

• ENERGY GLOW (EUTM No 4 082 343)

• SILK GLOW (EUTM No 4 269 791)

• DIAMOND GLOW (EUTM No 8 461 196)

• Glow Lotion (EUTM No 9 194 952)

• DREAM GLOW (EUTM No 9 742 917)

• GOOD TO GLOW (EUTM No 13 396 098)

• GLOW WITH OR WITHOUT MAKE-UP (EUTM No 16 484 362)

• GLOW CRÈME (EUTM No 16 861 247).

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.

General remarks on Article 7(1)(c) EUTMR

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 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 to the applicant’s arguments

The Office agrees with the applicant that the distinctive character of the trade mark made up of several components, must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The mark applied for, ‘GLASS GLOW’, is composed of English words. Therefore, the examination of the absolute grounds for refusal will be based on the English‑speaking public in the European Union. The applicant does not challenge the meaning of the two word elements, but merely puts forward that the juxtaposition is unusual in English.

The sign is made up of two words. They are juxtaposed in accordance with the rules of English grammar and form a single expression. The definition of the word ‘GLOW’ was extracted from Collins Dictionary on 13/11/2018 and constitutes clear evidence for the meaning of word: brightness or ruddiness of complexion; brilliance or vividness of colour.

In respect of the word ‘GLASS’, the Office provided the applicant with an internet search that revealed the descriptive connotation of the word ‘GLASS’ in the relevant market. The structure of the sign is grammatically correct and does not trigger any mental process in order to arrive at its meaning.

In assessing the mark in question, the Office has taken the following into account:

1. the mark as a whole;

2. its distinctive character, assessed in relation to the goods and services in question;

3. the overall impression produced by the mark, taking into consideration the commercial field in which the relevant goods and services are generally marketed.

Regarding point a)

As mentioned above, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

Taking into account the abovementioned principle, the Office provided definitions of both words composing the sign ‘GLASS GLOW’ in the notice of grounds for refusal of 13 November 2018. Accordingly, it was established that the relevant consumer will understand the sign as having the meaning that the goods applied for in Class 3 are cosmetic preparations which, when used during a skin-care routine, would help to achieve a smooth, glossy, glass-like finish on the skin so that the complexion looks bright, healthy and natural. The other preparations applied for would be perceived as preparations that would help to achieve a polished, smooth and shiny finish for hair/nails/teeth etc., resembling the reflective qualities of glass. Taken as a whole, the expression ‘GLASS GLOW’ describes the intended purpose of the goods in question.

Furthermore, a mark consisting of a neologism remains descriptive if each of the word elements of which it consists is descriptive on its own and if the combination of those elements is not more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41). Merely bringing two descriptive word elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned, regardless of whether the word combination as such is also referenced in dictionaries (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 39 and 43).

It also follows from the wording of the provision, that Article 7(1)(c) EUTMR is not limited to indications that inform about the type or kind of the goods or services. Article 7(1)(c) EUTMR also covers the purpose in the sense of what the goods are meant to be used for, or any other characteristics. Article 7(1)(c) EUTMR does not require that these characteristics be commercially essential for the product. In light of the public interest underlying the provision, any undertaking must be able to freely use such signs and indications to describe any characteristic 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).

The descriptiveness must be assessed on the basis of the perception of the mark as a whole, by the relevant public. Therefore, it is not relevant that the sign does not have a simple and easily articulated meaning. It suffices that the relevant public perceives the semantic content of the mark as an informational message, which does not need scientific proof (04/12/2014, T‑494/13, Watt, EU:T:2014:1022, § 33). Article 7(1)(c) EUTMR comprises indications that may constitute subjective statements or perceptions of consumers, as long as the semantic message still informs the consumer about an intended purpose of the goods, including positive and desirable features.

Regarding point (b)

The distinctive character of a trade mark must be assessed, first, in relation to the goods and services for which registration of the sign is sought, and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods and services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

Contrary to the applicant’s view, the meaning of the mark is easy to grasp in connection with the goods applied for and does not require any additional mental steps. When seeing the meaningful phrase ‘GLASS GLOW’ used in the context of toilet preparations, the relevant public will immediately understand that the goods will somehow help consumers to reach their goal: a smooth, glossy, glass-like finish on the skin and/or a polished, smooth and shiny finish for hair/nails/teeth etc., thus resembling the reflective qualities of glass.

Regarding point (c)

Finally, the Office has taken into consideration the overall impression produced by the mark and the commercial field in which the relevant goods are generally marketed. As the objection applies to cosmetic preparations, the Office took into consideration the commercial fields of the beauty sector. The Office refers to the internet search dated 13/11/2018 that clearly proves that the term ‘GLASS’ as well as ‘GLOW’ are connected with the goods applied for, used in a descriptive manner.

It follows that the overall impression of the sign at issue does not appear unusual and does not have any characteristic element or eye-catching features likely to confer a minimum degree of distinctive character to the sign, therefore the consumer cannot perceive it as an indication of commercial origin. Overall, the sign for which protection is sought would merely be perceived as a laudatory message about the goods on offer, as described above and in the notice of grounds for refusal. Accordingly, the sign applied for is devoid of elements that could, apart from its promotional function, enable the relevant average consumer easily and immediately to memorise it as a trade mark for the goods for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44-45, § 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no function to indicate commercial origin in relation to those goods (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

With regards to the argument, that the sign does not have a simple and easily articulated meaning, as mentioned above, the descriptiveness must be assessed on the basis of the perception of the mark by the relevant public, as a whole. It is not relevant that the sign does not have a simple meaning. It suffices that the relevant public perceives the semantic content of the mark as an informational message, which does not need scientific proof (04/12/2014, T‑494/13, Watt, EU:T:2014:1022, § 33).

The same applies to the argument that the term is grammatically unusual. What matters is the ordinary and plain meaning. In addition, 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).

The Office cannot concur with the argument that the meaning of the word ‘GLOW’ is allusive. The Office refers to the notice of grounds for refusal where the word ‘GLOW’ was defined as ‘brightness or ruddiness of complexion’. Additionally, the Office provided the applicant with the extracts from websites that prove the fact that, with proper skincare and cosmetic preparations, it is possible to achieve a glass-like finish to the skin. The definition of the word ‘GLOW’ itself shows that it refers to the characteristics of complexion.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, the mere fact that the cited trade marks contain the word ‘GLOW’ does not necessarily make them similar to the sign applied for. Every trade mark is assessed on its own merit, and the final assessment is based on specific grounds in each particular case. Furthermore, trade marks referred to by the applicant contain different verbal elements in addition to the word ‘GLOW’. Therefore, the overall impression created by each of these marks is not similar to that created by the sign ‘GLASS GLOW’.

Moreover, 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).

Therefore the applicant has not succeeded in convincing the Office that the sign ‘GLASS GLOW’ will be perceived by consumers as pointing to the commercial origin of the goods in question. The Office maintains that the relevant public cannot perceive the mark other than in its descriptive sense, in that the consumer will be aware that the term ‘GLASS GLOW’ refers either to a smooth, glossy, glass-like finish on the skin so that the complexion looks bright, or to a polished, smooth and shiny finish for hair/nails/teeth, resembling the reflective qualities of glass.

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 17 957 902 is hereby rejected for the following goods:

Class 3: Non-medicated toilet preparations; preparations and substances for the conditioning, care and appearance of the skin, body, face, eyes, hair, scalp, teeth and nails; soaps, personal cleansing preparations, shower gels, bath gels and bath preparations; preparations for moisturising the skin; cosmetics, colour cosmetics, eye cosmetics, nail cosmetics, lip cosmetics, make up removers, cosmetic impregnated tissues; shampoos, hair conditioners, preparations for the hair, hair lotions; dentifrices; sun tanning preparations, sun-screening preparations; shaving preparations, after shave and pre shave lotions and oils, depilatory preparations; essential oils, oils for toilet purposes.

The application may proceed for the remaining goods, namely:

Class 3: Perfumery, eau de parfum, colognes and toilet waters; deodorant preparations for personal use, anti-perspirants; pomanders, potpourris, fragranced sachets for drawers, room fragrance, room perfume sprays, room scenting sprays, incense, aromatic plant extracts.

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.

Michaela POLJOVKOVA