Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/09/2019

Zimmermann & Partner

Patentanwälte mbB

Josephspitalstr. 15

80331 München

ALEMANIA

Application No:	017976216
Your reference:	24610M-EM
Trade mark:	Honest Wine
Mark type:	Word mark
Applicant:	Norpexal Holding SA Turmstrasse 28 6312 Steinhausen SUIZA

The Office raised an objection on 28/11/2018 pursuant to Article 7(1)(b) and (c) EUTMR 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.

With the above notice the applicant was given an opportunity to submit observations in reply.

The applicant submitted its observations on 28/01/2019, which may be summarised as follows:

1. The applicant submits an amended list of goods and services where parts of the originally submitted goods and services have been cancelled:

Class 9 Software; downloadable software in the nature of a mobile application for maintaining a wine database, making wine selections and providing information on wine for retailers and consumers; downloadable software in the nature of a mobile application for users to share information and resources in the field of wine.

Class 33 Alcoholic beverages (except beers), including wine.

Class 35 Compilation and systemization of information into computer databases in the field of wine consumer product information for retailers and consumers; market research services in the field of wine and wine selection for retailers and consumers; online retail services in the nature of wines, spirits and other alcoholic beverages; marketing of wines, spirits and other alcoholic beverages; promotion services including arranging exhibitions and tasting events in respect of wines, spirits and other alcoholic beverages for commercial or advertising purposes; advertising and promotional services in respect of wine clubs and wine societies; advertising and promotion of services and benefits to wine club members and wine society members including advertising and promotion of incentive schemes and loyalty programmes; direct mail advertising, dissemination of advertising material and provision of commercial information in relation to wine, spirits and other alcoholic beverages and to wine clubs and wine societies.

The deletions should not be construed as acknowledging the objections raised by the Office; rather, the revised list may serve to clarify the applicant’s requests for protection and to demonstrate to the Office the applicant’s legitimate interest in protection.

2. The term ‘Honest Wine’ is ambiguous when seen with the contested goods and services. The term ‘honest’ is not defined as ‘fine, delicious’ in the Oxford dictionary, Longman dictionary, Cambridge dictionary or in the Collins dictionary. The term is used in connection to ‘a person’ or a ‘situation’, but not to describe characteristics of things, in particular as ‘fine, delicious’. The specialised websites of the wine sector reveal that the term ‘honest’ is not a term used to describe the characteristics, quality or kind of wine. Regarding the ‘attributive’ meaning of the term ‘honest’, it refers to something unsophisticated or simple and not ‘genuine, fine or unadulterated’ (screenshots from the dictionaries included).

3. There is no direct and exclusive connection between the sign and goods and services related to software applications, databases, compilation of information and commercial advertising services, even if they are also used in the field of wine. The ambiguity of the verbal element ‘Honest’ prevents the sign from having a descriptive meaning. The term ‘Honest Wine’ could only be understood as having an ambiguous connection to some of the registered goods by using an analytical approach, but the consumer is not inclined to take several mental steps when encountering a sign. Similar arguments could be raised in relation to the examiner’s reference of the term ‘honest’ in connection to ‘ethical, organic wines’. The examiner has not given reasons why the relevant public should understand ‘honest’ in relation to the contested goods in the field of software, mobile application, online retail services or marketing activities with the meaning ‘ethical’, therefore, it would be perceived as ‘organic mobile application, software of organic wine’.

4. The examiner did not take into account that in the present case the target public not only comprises well-informed/average consumers, but also professionals in the fields of wine and beverages in general. The level of attention of the relevant public is likely to be medium to high, especially as the price of the products could be high.

The Office commented on the applicant’s abovementioned submission in the second notice of grounds for refusal on 28/05/2019, which forms an integral part of this decision and allowed the applicant an extension of 2 months to submit observations.

The applicant submitted its observations on 26/07/2019, which may be summarised as follows:

1. The goods in Class 33 of the originally submitted list of goods and services have been cancelled. The deletions should not be construed as acknowledging the objections raised by the Office in general; rather, the revised list may serve to clarify the applicant’s requests for protection and to demonstrate to the Office the applicant’s legitimate interest in protection.

2. It is questionable whether the quoted reference is related to ‘ethical wines’ as a product or should be understood as a reference to a wine producer called ‘ethical wine’ and therefore would be unsuitable in the given context.

3. The examiner’s interpretation does not provide any reasonable justification, why the relevant public would understand ‘HONEST WINE’ in relation to the contested electronic goods in Class 9, namely in the field of software and mobile applications, and to the services in Class 35, (e.g. compilation and systematisation of information into computer databases and direct mail advertising) as meaning ‘fine, delicious’ or ‘ethical’ computer services and/or mail advertising services for software products or computer services.

4. The term ‘honest’ can be found in several dictionaries as an adjective, predominantly describing the characteristics of a ‘person’ (e.g. somebody that tells the truth) or a ‘situation’ (e.g. he had made an honest mistake), which further contradicts the argument of the examiner, that the term is likely to be understood as describing the characteristics of the goods and services as ‘fine, delicious’.

5. There is no direct and exclusive connection between the sign ‘HONEST WINE’ and goods and services related to software applications, databases, compilation of information and commercial advertising services, even if they are also used in the field of wine. The term ‘HONEST WINE’ could only be understood as having an ambiguous connection to some of the registered goods by using an analytical approach, but the consumer is not inclined to take several mental steps when encountering a sign.

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.

The Office took note of the applicant’s request to amend the list of goods and services. It is hereby confirmed that the list of goods and services of the abovementioned application has been restricted. The list of goods and services has been amended to read as follows:

Class 9 Software; downloadable software in the nature of a mobile application for maintaining a wine database; downloadable software in the nature of a mobile application for users to share information and resources in the field of wine.

Class 35 Compilation and systemization of information into computer databases in the field of wine consumer product information for retailers and consumers; online retail services in the nature of wines, spirits and other alcoholic beverages; marketing of wines, spirits and other alcoholic beverages; promotion services including arranging exhibitions and tasting events in respect of wines, spirits and other alcoholic beverages for commercial or advertising purposes; advertising and promotional services in respect of wine clubs and wine societies; advertising and promotion of services and benefits to wine club members and wine society members including advertising and promotion of incentive schemes and loyalty programmes; direct mail advertising.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

It follows from the wording of the provision of Article 7(1)(c) EUTMR that the Article 7(1)(c) 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 intended 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).

Therefore, the Office cannot concur with the applicant that any reasonable justification has been provided in relation to the contested electronic goods in Classes 9 and 35. Moreover, the context of the goods and services provides a significant interpretative aid as to how consumers will perceive the contested mark. When seeing the sign ‘HONEST WINE’ in relation to software in the nature of a mobile application for maintaining a wine database, the consumer would immediately understood the intended purpose of the goods, namely, that they are intended for sharing, maintenance of a wine database or as a resource in the field of wine. The intended purpose of the goods is only reinforced by the specification of the goods itself.

The same applies to the services in Class 35. The relevant public would understood the services concerned as retail services encompassing fine/delicious wines and/or wines complying with the principle of fair trade standards and services closely related (e.g. marketing, advertising or promotion of honest wines).

The Office agrees with the applicant that the sign’s verbal elements may have several meanings. However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, a sign must 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).

Therefore, by informing the relevant public that the goods concerned are intended to be used for maintaining a wine database, to share information and resources in the field of wine, to offer retail services in the nature of wines, advertising and promotional services in respect of wine clubs and wine societies, the mark ‘HONEST WINE’ has a direct and specific link with goods and services in question which suffices for the sign to fall within the prohibition under Article 7(1)(c) EUTM. It follows that the sign for which protection is sought enables the relevant public to perceive immediately the intended purpose of those goods and services.

Consequently, the message conveyed by the sign ‘HONEST WINE’ does not allow the targeted public to immediately identify the commercial origin of the goods and services. This is the reason why the sign is not prima facie distinctive. It could originate from any entrepreneur, provided the consumer is unable to create a link to a specific supplier as a consequence of extensive use (Article 7(3) EUTMR).

It follows that the overall impression of the sign ‘HONEST WINE’ does not appear unusual and does not have any characteristic elements or eye-catching features that confer a minimum degree of distinctiveness on 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 an informational message about the intended purpose of the goods and services on offer, as described above and in the notices of grounds for refusal. Accordingly, the sign applied for is devoid of elements that could enable the relevant average consumer to easily and immediately 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).

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 17 976 216 is hereby rejected for all the goods and services claimed.

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