Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/02/2019

RECKITT BENCKISER CORPORATE SERVICES LIMITED

Dansom Lane

Hull HU8 7DS

REINO UNIDO

Application No:	017964002
Your reference:	FB/BotanicalOrigin/EM
Trade mark:	BOTANICAL ORIGIN
Mark type:	Word mark
Applicant:	Reckitt & Colman (Overseas) Hygiene Home Limited 103-105 Bath Road Slough SL1 3UH REINO UNIDO

The Office raised a total objection on 27/10/2018 pursuant to Article 7(1)(b), (c) and Article 7(2) (EUTMR) because if 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 21/12/2018, which may be summarised as follows:

1. The Office has not demonstrated why the mark is descriptive for each of the goods at issue.

2. The Office has accepted earlier registrations, for analogous marks, as being inherently distinctive.

3. The objections raised by the Office on the grounds of Article 7(1)(b) EUTMR are reliant on the objection under Article 7(1)(c) EUTMR as no further reasoning was given in relation to Article 7(1)(b) EUTMR. therefore, if the objection under Article 7(1)(b) is removed, then the objection under 7(1)(b) should also fall away.

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).

1. The Office has not demonstrated why the mark is descriptive for each of the goods at issue.

The applicant argues that the appraisal by the Office of the trade mark applied for was erroneous, for the reasons set out above. Even if consumers can derive from the mark that the goods might have some involvement with the ‘BOTANICAL ORIGIN’, there is no sufficiently direct association for the grounds of refusal under Article 7(1)(c) and 7(1)(b) to apply. The contested decision gives no specific reasoning as to the individual goods. The applicant does not dispute the meaning of the words forming the sign.

The Office does not consider the applicant’s arguments persuasive. Firstly, insofar as the applicant argues that the mark applied for does not describe the goods, it should be pointed out that as a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the term creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the complete term is more than the sum of its parts (judgment of 12/02/2004, C-265/00, ‘Biomild’).

The applicant does not deny that the words ‘BOTANICAL ORIGIN’ have the meaning attributed to them but disputes that the mark as a whole gives rise to the grounds for refusal under Article 7(1) CTMR. It is alleged that the Office fails to provide credible reasoning and evidence for its view that the mark is descriptive and devoid of distinctive character.

The Office does not consider the applicant’s submissions and arguments persuasive. Contrary to the applicant‘s assertation the connection between the indication given in the expression ‘BOTANICAL ORIGIN’ and the goods concerned is sufficiently direct for the relevant consumer to perceive the message contained in the sign and for that message to override the sign’s ability to indicate the commercial origin of the goods/services. The components in themselves have no distinctive character with regards to the goods in respect of which the application is made. The interpretation of the mark by the applicant does not affect its recognisable descriptive meaning. Whether the trade mark can be regarded as having an evocative or suggestive meaning depends on the specific circumstances, i.e. the perception of the consumer and the goods claimed, but not on the sole interpretation of a component word.

In light of the foregoing, the underlying trade mark principles must be interpreted as meaning that, when refusing registration of a trade mark, the Office is required to state in its decision its conclusion for each of the individual goods and services specified in the application for registration, regardless of the manner in which that application was formulated. Where the same ground of refusal is given for a category or group of goods or services, it may use general reasoning for all of the goods or services concerned (judgment of 15/02/2007, C-239/05, ‘The Kitchen Company’).

Bearing in mind the relevant public, there is a sufficiently direct and specific relationship between the words ‘BOTANICAL ORIGIN’ and products like ‘all purpose cleaning preparations for household, commercial, industrial and institutional use’ that leads the Office to conclude that, as a whole, the mark is descriptive and/or non-distinctive within the meaning of Article 7(1)(c) and (b) EUTMR for any of the goods applied for in class 3 which are of a cleansing, freshening nature. The mark in question merely indicates to the consumers that the goods applied for are of a plant(BOTANICAL) based source(Origin).

In class 3 the application seeks protection for “all purpose cleaning preparations for household, commercial, industrial and institutional use; cleaning preparations for toilets, bath tubs, sinks and floors; cleaning preparations for kitchen and bathroom surfaces; disposable wipes impregnated with cleaning compounds for use in bathrooms and kitchens; polishing preparations for kitchen and glassware; oven cleaning preparations; stove-top cleaning preparations; cleaning preparations for vitroceramic and kitchen surfaces; glass and metal cleaning preparations; window cleaning preparations; bleaching preparations and other substances for laundry use, whether in solid, fluid or gel form; laundry preparations; carpet cleaning preparations; decalcifying and descaling preparations for household purposes; fabric softeners; laundry detergents and additives; stain removing preparations; scent boosters; prewash and stain loosening preparations; starch; laundry blue; bleaching preparations and other substances for use in dishwashing; cleaning, polishing, scouring and abrasive preparations; dishwasher cleaners, fresheners and deodorizers; rinsing agents; preparations for cleaning and de-clogging dishwashers; decalcifying and descaling agents for household purposes; dish detergents; all the above-mentioned products with or without disinfecting components; soaps; detergents; rust removers and grease removers; drain and sink unblocking preparations; preparations for prevention of limescale, rust or grease”. All these goods can be of botanical origin, that is to say they can be produced using plant-derived ingredients and, as a result, may offer eco-friendly advantages. Therefore the mark may serve to indicate the nature of the goods.

In sum, all the contested goods have a sufficient direct relationship to the notion conveyed by the expression ‘BOTANICAL ORIGINS’, which implies that the relevant public will perceive the mark as a mere indication of the source of the main components making up the goods. This makes that the contested mark is caught by Article 7(1)(c) CTMR for all the contested goods and services.

The Applicant cites EUIPO guidelines Part C, section 2, Chapter 2. These guidelines are related to Opposition proceedings and have no bearing on Absolute grounds. Therefore, the cited guidelines are not relevant to these proceedings.

2. The Office has accepted earlier registrations, for analogous marks, as being inherently distinctive.

The applicant cannot successfully rely on other and registered EU trade marks. The circumstances which led to the acceptance of these marks can not be the object of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of descriptive character and lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The signs brought forward - ‘BOTANIC (EUTM No. 011237906), ‘BOTANICS’ (EUTM No. 016264012) and ‘BOTANIC GARDEN’ (EUTM No. 017868149) - apply to different concepts, irrespective of the applicant’s statements made thereof. They have little or nothing in common with the mark at issue and have been found to be distinctive in their own right. The mere fact that they consist of the word ‘BOTANIC(AL) does not make them evidently similar to the sign at hand nor does this lead to an automatic conclusion regarding the present mark’s registrability.

Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The principle of equal treatment must be reconciled with the principle of legality (e.g. ‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210).

3. The objections raised by the Office on the grounds of Article 7(1)(b) EUTMR are reliant on the objection under Article 7(1)(c) EUTMR as no further reasoning was given in relation to Article 7(1)(b) EUTMR. therefore, if the objection under Article 7(1)(b) is removed, then the objection under 7(1)(b) should also fall away.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that ‘BOTANICAL ORIGINS’ will be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the term ‘BOTANICAL ORIGINS’ does not possess any actual distinctive character for the goods applied for, pursuant to Article 7(1)(c) and 7(1)(b) and in combination with Article 7(2) and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. This descriptive meaning will eclipse any trade mark understanding, thus the mark also fails to distinguish under Article 7(1)b EUTMR.

The absolute ground for refusal under Article 7(1)(b) and (c) precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR).

Consequently, the application is hereby rejected pursuant to Article 7(1)(b), (c) and 7(2) EUTMR.

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. 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.

Simon Andrew DAYNES