Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/10/2019

MACLACHLAN & DONALDSON

Unit 10, 4075 Kingswood Road, Citywest Business Campus,

Dublin Dublin D24 C56E

IRELAND

Application No:	017980810
Your reference:	NM/PR/T28821.EU
Trade mark:
Mark type:	Three-dimensional
Applicant:	VIRGINIA HEALTH FOOD LIMITED Kilnagleary Road, Carrigaline Business Park, Carrigaline, Cork P43 FN82 IRELAND

The Office raised an objection on 21 December 2019 pursuant to Article 7(1)(b) 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.

After being granted an extension of the time limit, the applicant submitted its observations on 8 April 2019, which may be summarised as follows:

• The Applicant’s mark does not consist of a three dimensional shape. The trade mark is a two dimensional representation of a stack of cubes.

• The vast majority of granola bars are elongated bars narrow in cross section and in fact none of the references found disclose cubes.

• The sign is unusual in that it illustrates a stack of cubes, each cube being displaced relative to the other.

• The applicant requests that the Office withdraws the objections and allow the application to proceed.

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 a applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that 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, EU:T:2002:42, § 26).

First of all the applicant claims that the mark applied for does not consist of a three dimensional shape but that the trade mark is a two dimensional representation of a stack of cubes.

However the e-application submission of 5 November 2019 clearly states under the section ‘Trade mark’ after ‘Trade mark type’ the specification: ‘Shape mark’. (See to that effect the relevant selection of the submitted e-application form below¹)

Furthermore the applicant’s observations, submitted on 8 april 2019, identifies the subject application as being: ‘Trade Mark: stack device (three-dimensional)’.

Therefore the Office will continue to consider the application as being a three-dimensional shape mark and continue its examination as such.

The goods of the contested mark are of interest to the average public purchasing daily basic foodstuffs being reasonably well-informed and reasonably observant and circumspect.

As regards three-dimensional marks, the more closely the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of that shape being devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]. By contrast, a mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character. (24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 31).

The EUTM proprietor argues that the vast majority of granola bars are elongated bars narrow in cross section and in fact none of the references found disclose cubes, as shown in the previously-listed enclosures.

However the Office contends that this does not mean that the shape filed can work as a badge of origin as regards the relevant public. What is assessed is not the novelty or the individual character of the appearance of a product as in the design field, but whether the shape filed as a trade mark can work as a badge of origin. Considering the relevant sector of healthy foodstuffs where traditionally many shapes and decorations are used, and the level of attention of the relevant public, the shape of the compressed food cube in question is not likely to be inherently perceived as a badge of origin because it does not depart significantly from what was offered on the market prior to its filing.

It follows that the shape in question, even if it is a variant of traditional shapes, cannot be distinguished sufficiently from other shapes commonly used for foodstuffs and will not enable the relevant public immediately and with certainty to distinguish the EUTM proprietor’s goods from those of another commercial origin. The image examples given in the first objection of 20 December 2018 confirms this. So far as concerns nutraceutical preparations, the Office finds that the mark has no distinctive character because the consumer would perceive the mark as a variant of tablets or bar like shapes. For the consumer, the contested mark represents just a variation of the shape of all kinds of vitamin or nutraceutical preparations.

When a three-dimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a ‘variant’ of one of the usual forms of that type of product is not sufficient to show that that mark is not devoid of distinctive character within the meaning of article 7(1)(b) EUTMR. In this sense, the cube like form in the mark applied does not constitute a form capable of allowing the relevant public to distinguish the products in question. The Office considers that the consumer of those products does not pay much attention to their form but rather to the specific characteristics of the product, the label placed on it or its packaging and the name, image or graphic design contained therein.

Both the cubic shape of the product and the way that they are stacked are devoid of distinctive character and the overall impression given by the mark is that it is the mere representation of compressed food ingredients in a block. The shape of the products is a cube. The way the product is stacked is just a way to present the non-distinctive form of the cube-shaped product to the relevant consumer and will not be appreciated as being a very distinctive form which may distinguish the applicant’s goods from those of another commercial origin.

In view of the foregoing the Office finds that the shape mark applied for consists of a combination of elements that are typical of the goods in question. The shape in question is not markedly different from various basic shapes for the goods in question commonly used in trade, but is simply a variation thereof. Since the alleged differences are not readily perceptible, it follows that the shape in question cannot be sufficiently distinguished from other shapes commonly used for the applicant’s goods and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin.

Accordingly, the mark applied for does not enable the average consumer, who is reasonably well-informed and reasonably observant and circumspect, to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for those goods.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 017980810 is hereby rejected for all goods, namely:

Class 5 Nutraceuticals; lignans; vitamin and mineral preparations for human consumption; lecithin and beta glucan preparations for medical purposes; oat beta glucan; protein preparations; herbal extracts; nutraceutical preparations; vitamins and minerals; protein preparations (dietary supplements) for human consumption; protein supplements derived from seeds, fruits, plants and/or vegetables; by-products and extracts of plant material, seeds, grains, fruit and/or grasses being food supplements for human consumption; dietic food bars consisting of one or more of the foregoing.

Class 29 Seed preparations for food for human consumption; by-products of flaxseed and hemp seed; by-products and extracts of plant material, seeds, grains, fruit and/or grasses, all for food for human consumption; edible oils and fats; linseed and other seeds coated with honey, agave syrup, natural sweeteners, apple juice and other fruit juice concentrates and mixed with dried fruits and berries, nuts, carob or chocolate; milled seed mixes blended with berry powders, antioxidant preparations, dried fruits, nuts, cacao, carob, spices and herbs; algal and seaweed preparations; snack foods consisting of one or more of the foregoing; sweet and savoury preparations containing predominately seeds and nuts.

Class 30 Barley grass and wheat grass powders or granules; herbs and herbal preparations; herbal preparations for food for human consumption; extracts of cereal, cereal preparations for food for human consumption and cereal bars; oat bran; quinoa; amaranth; flavourings, spices, herbs and herbal preparations; linseed and other seeds coated with honey, agave syrup, natural sweeteners, apple juice and other fruit juice concentrates; snack foods consisting of one or more of the foregoing; cereal based snack foods containing predominately seeds and nuts sweetened and formed into cubes and clusters.

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.

Steven Charles STAM