Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/05/2019

HERRERO & ASOCIADOS

Cedaceros, 1

E-28014 Madrid

SPAIN

Application No:	017976412
Your reference:	HA1913/2018
Trade mark:	MiracleCBD
Mark type:	Word mark
Applicant:	Ontel Products Corporation 21 Law Drive Fairfield, New Jersey 07004 UNITED STATES OF AMERICA

The Office raised an objection on 19/11/2018 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 14/01/2019, which may be summarised as follows:

1. The sign chosen as a trade mark does not directly, immediately and unequivocally designate the goods to which it is destined in class 5. The fact that the notification asserts that “in the present case, the relevant English-speaking consumer would understand the sign as having the following meaning: ‘Cannabidiol or CBD capable of doing the almost impossible’’ does not respond to the idea or concept that may be directly, immediately and unequivocally obtained, without further reflection, upon reading ‘MIRACLE CBD’.

2. The Office has considered registrable numerous trade marks with characteristics that are similar to those of the present case.

3. There are no reasons whatsoever why the sign chosen as a trade mark, ‘MIRACLE CBD’, because it is fully capable of graphic representation, in that it is formed by a combination of words that are not hard or difficult to remember, and moreover because it is not the name of the goods of class 5, cannot be considered to be endowed with the required distinctive character so as to be registered, in accordance with what is allowed under article 4 of the EUTMR.

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 based on the following reasons:

For a mark to possess distinctive character it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus enable the consumer or end user, without any possibility of confusion, to distinguish that product from products of other undertakings (18/06/2002, C-299/99, Philips, ECLI:EU:C:2002:377 and of 29/09/98, C-39/97, Canon, ECLI:EU:C:1998:442).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, ECLI:EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ ECLI:EU:C:2004:87).

The marks referred to in Article 7(1)(b) are, in particular, those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, ‘LITE’, ECLI:EU:T:2002:42).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, ECLI:EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The applicant submits that the mark should be accepted. It does not dispute the meaning of the word elements but argues that the mark is sufficiently distinctive as the word ‘MIRACLE’ has distinct and different meanings.

The applicant argues that due to the fact that the word ‘MIRACLE’ has various different meanings prevents it from finding that it will be directly, immediately and unequivocally associated, without further reflection, with “Body creams [medicated]”. The fact that the mark ‘MIRACLE CBD’, in class 5, solely consists of the word ‘MIRACLE’ and the letters ‘CBD’, will not lead the public to directly, immediately and unequivocally believe, without further reflection, that said trade mark designates “Body creams [medicated]”. Only after a profound reflection could it be possible to reach the idea that ‘MIRACLE CBD’ is solely the name that is used to refer to “Body creams [medicated]”. In view of the foregoing, the current application does not incur in the absolute grounds for refusal set forth in Article 7(1)(b) of the EUTMR.

In defence of the mark, the applicant relies largely on established trade mark principles, the registration of EU and international trade marks that contain the words ‘MIRACLE’ and ‘CBD' and on the case-law. In particular the Office’s attention is drawn to the decision of the Boards of Appeal in the case ‘JOIN THE MOVEMENT‘ (R 1102/2016-2) and the judgment in the case ‘ULTRAPLUS’ (T-360/00).

The Office does not consider the applicant’s submissions and arguments convincing and the applicant cannot successfully rely on decisions in other cases. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The examination of applications for registration must not be minimal but must be stringent and full in order to prevent trade marks from being improperly registered and to make sure that, for reasons of legal certainty and sound administration, trade marks whose use could be successfully challenged before the courts are not registered (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59).

It is clear that the sign is composed of two terms. One of them is ‘CBD’, the abbreviation of ‘cannabidiol’, that will be understood by consumers as, a cannabis compound of the ‘body creams [medicated]’ (goods applied for) and the other one is ‘Miracle’ which is an adjective that in combination with ‘CBD’ will be perceived by consumers as a promotional slogan which merely serve to highlight positive aspects of the ‘body creams [medicated]’, as stated in the attached letter, more than a particular indication of the commercial origin.

While it is true that the term ‘Miracle’ has different meanings, this does not mean that this one in combination with ‘CBD’ will not be perfectly and immediately understood by consumers insofar as ‘miracle’ is a common term and widely used in the current language without confusion. In this sense, the Office considers that the sign will be considered a promotional slogan without further reflection.

The sign for which protection is sought, “MiracleCBD”, would simply be perceived by the relevant public as a promotional slogan, the function of which is to communicate a laudatory statement. The use of the word “miracle” as an adjective in this context is standard in relation to medical products as is shown by the reference from Collins Dictionary provided. This usage will therefore not be seen as an exaggerated statement but rather as a commonplace notion used in marketing. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that they are creams for the body with miraculous effects or results thanks to their CBD/ cannabis content.

The applicant cannot successfully rely on other and registered EU trade marks. The trade mark registrations of similar trade marks for the same or comparable goods are incapable in this respect of substantiating any other conclusion. The circumstances which led to the acceptance of these marks cannot be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the 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.

Fundamentally, within the scope of European harmonised trade mark law and even more so within the Office’s examination practice, attempts should be made to ensure that the same results are reached in comparable cases (12/02/2009, C-39/08, ‘Volkshandy’, EU:C:2009:91).

The Office concurs with the applicant that some of the registrations cited bear a prima facie similarity to the sign applied for (i.e. ‘MIRACLE COAT’, ‘MIRACLE EYES’, ‘MIRACLE-GRO’). Whether the Office has already registered the terms ‘MIRACLE’ and/or ‘CBD’ in respect of goods in class 5 does not help the applicant. Neither identical registrations nor registrations by the EUIPO in respect of similar trademarks constitute grounds for nevertheless allowing applications that are devoid of distinctive character (13/02/2008, C-212/07, ‘Hairtransfer’, § 44, EU:C:2008:83). As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, ‘Streamserve’, § 67, EU:T:2002:43).

It must further be pointed out that these trade marks are not the subject of these proceedings and may at best be examined in invalidity proceedings, which may be initiated by anyone (24/05/2012, C-196/11 P, ‘F1-Live’, EU:C:2012:314). 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).

The other signs brought forward apply to different concepts. They have little or nothing in common with the application mark and have been found to be distinctive in their own right. It looks as if the quoted marks (among which ‘PROJECT MIRACLE’, ‘CBD MAX’) have no obvious and immediate meaning to the viewer when seen with the goods and/or services covered. The mere fact that they consist of the indication ‘MIRACLE’ or ‘CBD’ does not make them evidently similar with the sign at hand nor could it be concluded that the application mark would be distinctive and thus cannot support its registrability.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘MiracleCBD’ will be perceived by the consumers as pointing to the commercial origin of the goods at issue.

From the above considerations and for the reasons set out in the objection letter attached, the Office concludes that the mark sought does not have an inherent capacity to act as a trade mark for the goods unless the consumer has first been taught to appreciate it as a trade mark, through the use made of it.

Since the mark lacks an inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b) and 7(2) EUTMR.

The absolute ground for refusal under Article 7(1)(b) precludes the registration of the sign ‘MiracleCBD’ as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 be filed only when the appeal fee of EUR 720 has been paid.

Jack CIEZA PASTOR