Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 08/05/2019

BRYERS LLP

7 Gay Street

Bath BA1 2PH

REINO UNIDO

Application No:	017972803
Your reference:	T6952EU00
Trade mark:	PRINCESS BRIDE
Mark type:	Word mark
Applicant:	H.K. Designs Inc. 535 5th Avenue, 18th Floor NEW YORK, NEW YORK New York 10017 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 20/11/2018 pursuant to Article 7(1)(b) 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 21/01/2019, which may be summarised as follows:

1. The exact nature of average consumer in respect of the goods in question was not clearly determined.

2. The sign is unusual and its meaning is opaque, unclear as it does not provide objective, scientific and unambiguous information. The Office did not provide concrete examples of the mark used as a whole in a laudatory manner.

3. The sign has been registered by the EUIPO (EUTM IR No 1084103 PRINCESS BRIDE).

The applicant also provided two pieces of evidence, but as the subsidiary claim under the Article 7(3) EUTMR was made, the Office will reflect them at the later stage.

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.

With regards to the applicant’s arguments:

Ad 1)

As regards the applicant’s argument that the exact nature of average consumer in respect of the goods in question was not clearly determined. It was clearly mentioned in the letter of 20/11/2018 that the relevant public is the relevant English-speaking consumer. Therefore it has to be underlined that the public by reference to whom the absolute ground of refusal must be assessed consists of at least the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom.

This average English-speaking consumer can be defined as a reasonably well-informed, observant and circumvent (22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, § 26).

The applicant’s argument that the average consumer’s attention to detail would be extremely high in respect to the luxury goods in question is valid only partially as the jewellery could be bought at the different price levels, from various reasons, frequently or repetitively as the gifts, as decorative parts to match clothing, etc. and therefore it could not be said that they in general attract the same level of attention of the average consumer as it is in the case of engagement of wedding rings.

Following the above mentioned argument it can be concluded that the Office clearly determined the relevant public and that its examination of the sign from the point of view of the average consumer has been correct.

Ad 2)

Regarding the applicant’s argument that the sign is unusual and has no immediately obvious meaning, it must be mentioned that it does not matter whether the sign at issue can have several meanings or its meaning is less obvious, as this would not suffice to make it distinctive. A sign is distinctive only when it can be perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

As regards the applicant’s argument that the Office did not provide concrete examples of the mark used as a whole in a laudatory manner (i.e. concrete examples of the sign commonly used in advertising or in a business context by third parties) or objective and scientific information, it must be observed that the examination does not depend on there being a real, current or serious need to leave a sign or indication free for the business community (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

The mark applied for ‘PRINCESS BRIDE’ is composed of English words. Therefore, the examination of the absolute grounds for refusal in the case at hand will be based on the English-speaking public in the European Union.

Therefore it can be safely assumed that the meaning of the verbal elements composing the sign will be obvious for the relevant public and that the expression ‘PRINCESS BRIDE’ will most certainly be recognised and understood in its common and ordinary meaning as described by the Office in the letter of 20/11/2018.

The meaning of the trade mark ‘PRINCESS BRIDE’ can be described as a woman on her wedding day dressed up so well, that she looks like a princess and it would be understood in this meaning even by the preschool- and school-aged children. It is clear that the relevant consumer would not have any difficulty to understand the sign in this respect as well.

The relevant public will perceive the meaning of these words – and their combination – intuitively rather than from a linguistic or scientific point of view as reflected in dictionaries (09/03/2015, T-377/13, ultra.air ultrafilter, EU:T:2015:149, § 36).

The expression ‘PRINCESS BRIDE’ contains a meaningful, simple and straightforward short English expression, which is not surprising or unexpected; therefore it is not able to distinguish the goods in question of one undertaking from those of other undertakings.

The message is clear, namely that the applicant states that, through its goods, it is able to create the impression that a woman on her wedding day is seen as a princess. Therefore, the simple word mark merely conveys to the relevant public a commercial laudatory statement and not, as required, a direct indication of the commercial origin of the goods in question.

The message conveyed by the mark applied for as a whole is so clearly expressed, in everyday language and without a hint of fantasy, that it is hard to see what could cause the public to remember the expression (12/2/2014, T-570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 34).

There is nothing about the expression ‘PRINCESS BRIDE’ that might, beyond its obvious laudatory meaning promoting the goods in question, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods applied for. The expression is not capable of distinguishing any business undertaking from another one in terms of the commercial origin of the claimed goods and services (30/11/2017, T– 50/17, TO CREATE REALITY, EU:T:2017:855, § 40), especially when it comes to the goods applied for.

Ad 3)

As far as the acceptance of the sign ‘PRINCESS BRIDE’ (EUIPO IR No 1084103) by the Office is concerned, 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).

As far as the sign ‘PRINCESS BRIDE’ (EUIPO IR No 1084103) is concerned, it covers different goods, such as soaps, perfumery; essential oils; cosmetics andcosmetic hair lotions in Class 3.

The abovementioned conclusions are not altered by the argument of the applicant according to which the EUIPO has registered trade mark that, in the applicant’s opinion, is the same to the one in question. The fact that the Office has previously applied the EUTMR contra legem, either once or a number of times, in a different way from that in which the Union judicature has interpreted it, cannot be used by the applicant to claim a violation of the principle of equality of treatment (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67 - 68).

The mere fact that, in other cases relating to other marks, a less restrictive approach
may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be
reasonable and to conform to the EUTMR, as interpreted by EU judicature. The Office must of course attempt to be consistent in its examination of trade marks. That is required by the principle of non-discrimination. It is also clear from the case-law that observance of the principle of equal treatment must be reconciled with observance of the principle of legality (e.g. judgment of 08/07/2004, T-289/02, ‘Telepharmacy Solutions’).

The Office, over the years, has equally and consistently refused EU trade
mark protection for applications such as ‘CANADIAN PRINCESS DIAMOND’ (EUTM No. 003725801) in Class 14, ‘BRIDE’ (EUTM No. 001430149) in Class 25; ‘THE BRIDE’ (EUTM No. 005161757) in Class 31. Accordingly, if in the previous case the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.
From the above considerations, the Office finds that the mark sought ‘PRINCESS BRIDE’, despite the interpretations put on it by the applicant, does not
allow the relevant public to immediately (prima facie) perceive that sign as an
indication of a trade origin in the sense that the goods offered by the applicant may
be distinguished from the same goods with a different commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, this application for the European Union trade mark in question is declared to be non-distinctive pursuant to Article 7(1)(b) in the Republic of Ireland, Malta and the United Kingdom for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Jiri JIRSA