Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/08/2019

LANE IP LIMITED

The Forum, St Paul’s

33 Gutter Lane

London EC2V 8AS

REINO UNIDO

Application No:	018011614
Your reference:	0321.1447
Trade mark:	FINISHING GLOW SERUM
Mark type:	Word mark
Applicant:	Islestarr Holdings Limited Unit 5, 50 Brook Green, Hammersmith London W6 7BJ REINO UNIDO

The Office raised an objection on 15/02/2019, pursuant Article 7(1)(b) and (c) and Article 7(2) EUTMR because it 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, following an extension of the time limit, submitted its observations on 19/06/2019, which may be summarised as follows.

1. The applicant’s goods are only available from boutique shops and high-end department stores such as Selfridges. The relevant consumers are therefore more circumspect that the average consumer.

2. The mark has not been considered as a whole. ‘FINAL GLOW SERUM’ is an oxymoron meaning that an interpretative effort is required on the consumer and that it cannot convey an immediate and obvious meaning to the consumer According to the examples provided a serum is not used as a finishing product. Moreover, contrary to what the examiner indicates, ‘shining’ is not a quality possessed by any of the goods applied for. The mark cannot describe many of the goods applied for.

3. ‘The word ‘glow’ adds an imaginative tone and creative flair to the Subject Mark in order to attract the consumer. It is therefore necessary to refer to Vorsprung durch Technik’s criteria which states that a slogan should have ‘elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected’. The applicant uses in its different marks a running theme of ‘magic’ and ‘dazzle’ which the consumer would see as an imaginative and light –hearted promotional strategy.

4. The mark applied for is not used in every day parlance, as confirmed by a search performed by the applicant for the words ‘finishing glow serum’ which only generated eleven results and not one of these feature use of the mark applied for. Likewise, none of the seven articles provided by the examiner feature use of the mark applied for. ‘FINISHING GLOW SERUM’ is a unique phrase coined by the applicant.

5. The mark has a minimum degree of distinctive character.

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 waive the objection for the following goods:

Class 3:

Astringents for cosmetic purposes; bath salts, not for medical purposes; colour-brightening chemicals for household purposes [laundry]; cosmetic preparations for slimming purposes; douching preparations for personal sanitary or deodorant purposes [toiletries]; dry shampoos; emery; extracts of flowers [perfumes]; eyebrow pencils; false hair (adhesives for affixing -); javelle water; jelly (petroleum -) for cosmetic purposes; joss sticks; mint for perfumery; musk [perfumery]; petroleum jelly for cosmetic purposes; polishes (denture -); slimming purposes (cosmetic preparations for -); sprays (breath freshening -); strips (breath freshening -).

The objection is maintained for the remaining goods and services.

General considerations under Article 7(1)(c) EUTMR

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).

Next, it is reminded that the descriptiveness of a sign must be assessed first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services.

1. In this respect, as regards the argument according to which the applicant’s brand is upmarket and is only available from boutique shops and high-end department stores such as Selfridges and that the relevant public are therefore more circumspect than the average consumer, is not decisive. It is to be observed that, when assessing the registrability of a sign, the Office may take account only of the list of goods and services as it appears in the trade mark application (15/06/2010, T-547/08, Strumpf, EU:T:2010:235, § 42; 11/07/2013, T-208/12, Rote Schnürsenkelenden, EU:T:2013:376, § 44).

In the present case, it is not apparent from the description of the goods and services in the application that they are luxury goods and services or goods and services sold or provided in exclusive stores or so sophisticated or expensive that the relevant public would be particularly attentive with regard to them. The distinctiveness of the mark at issue must therefore be assessed in respect of all the goods and services for which protection of that mark has been claimed, taking into account the presumed expectations of an average consumer who does not display a particularly high level of attention (29/09/2009, T-139/08, Smiley, EU:T:2009:364, § 20).

Furthermore, even admitting that the average consumer might pay a higher degree of attention or that part of the relevant public might be composed of professional consumers paying a higher degree of attentiveness, this fact cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C-311/11P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

2. With respect to the applicant’s second argument, it must be pointed out that, contrary to what the applicant seems to believe, the trade mark ‘FINISHING GLOW SERUM’ has been considered as a whole for the purposes of evaluating its distinctive character and descriptiveness, with a focus on the overall impression conveyed by all its constituent elements put together. Notwithstanding this broad approach, an analysis of the components of the trade mark may also be made when evaluating that overall impression (09/07/2003, T 234/01, Orange und Grau, EU:T:2003:202, § 32).

Furthermore, it is noted that :

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The mark applied for is exclusively composed of three readily identifiable and ordinary English terms, ‘FINISHING’, ‘GLOW’ and ‘SERUM’.

The Office considers that the combination of these three words is not unclear or meaningless, but merely a combination of three common words each of which maintains its own separate meaning and written form.

The expression resulting from the combination of the abovementioned components does not create an impression which is sufficiently far removed from that produced by its individual elements. Bearing in mind the definitions and analysis already provided on 15/02/2019, the sign as a whole is immediately intelligible to English speakers as a meaningful expression: serum used for the finishing touches and creating a glow or shiny effect.

The mere combination of three descriptive terms remains descriptive in principle unless because of the unusual nature of the combination the relevant term creates an overall impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed with the result that the complete expression is more than the sum of its parts.

In the present case, the expression ‘FINISHING GLOW SERUM’ is not able to create in the mind of consumers who buy or hire the goods and services at issue, an overall impression which is sufficiently far removed from that produced by the mere combination of descriptive meanings lent by the elements ‘FINISHING’, ‘GLOW’ and ‘SERUM’ of which it is composed.

Furthermore even if, as claimed by the applicant, ‘shining’ is not a quality possessed by any of the goods applied for, it must be reminded that a mark’s conceptual content is not necessarily identical to the dictionary definitions of its constituent elements since, during the short space of time in which consumers are faced with a mark, they perceive the meaning of the terms intuitively rather than in a linguistically scientific way, mainly if the consumer is more attentive as the applicant stated in its reply.

Moreover, in commerce, consumers of all levels of sophistication are quite accustomed to signs and brand names which, from a formal point of view, lack grammatical precision and merely bringing two word elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned, regardless whether the word combination as such is also referenced in dictionaries (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39 and 43).

Contrary to what is stated by the applicant, and even admitting that serums are normally used in the first stages of a beauty routine, it cannot be denied that these may also be used at a later stage as illustrated in most of the examples provided in the notice of grounds for refusal. Likewise, the word ‘glow’ cannot be said to merely describe the quality of physically shining. This word is rather common in the field of cosmetics to refer, for example, to products having light-reflecting qualities which mimic the natural, youthful glow of young skin or giving a luminescent effect.

From the above it is clear that the relevant consumer would not perceive the mark as an oxymoron but rather as a meaningful combination with a clear descriptive message.

In addition to the examples already submitted on 15/02/2019, and for purely illustrative purposes, the applicant is invited to read the following excerpts obtained from the internet on 06/08/2019 (at the indicated addresses) clearly illustrating that the constituent elements of the mark are meaningful in the relevant field and that goods of the kind applied for (in relation to which the objection is maintained) may have the properties explained above:

https://www.amazon.ca/LOreal-Paris-Infallible-Pro-Glow-Foundation/dp/B06XF14PLG

https://www.bondisands.eu/gloss-finishing-glow

DESCRIPTION

I carefully developed the perfect assortment of creme and powder formulas to perfect, sculpt and highlight the face with precision. I curated the perfect shade mix in each palette for the most dynamic HIGHLIGHT & CONTOUR PALETTE around.

Inspired by specialized makeup artist techniques, this unique HIGHLIGHT & CONTOUR PALETTE helps you glow like a pro using carefully crafted formulas. Each custom formula and shade mimics real light reflections and shadow contours for perfectly balanced dimension.

This complete palette also includes a light-weight setting powder and finishing powder (featuring a micro-shimmer strobing effect). Everything you need and then some to become an even more perfect you!

Each palette contains:

Highlighting Creme

Contouring Creme

Toning Creme

Setting Powder

Contouring Powder

Finishing (“Glow”) Powder

https://www.eddiefunkhouser.com/products/highlight-contour-palette

https://www.amazon.co.uk/Shimmer-benefit-Hollywood-Finishing-Facial/dp/B002N5J75O

https://www.ebay.co.uk/itm/ST-TROPEZ-INSTANT-TAN-GLOSS-FINISHING-GLOW-30ml/312673723551?hash=item48ccce649f:g:kbYAAOSwfgNc~Pts&entryapp=dlp

https://www.glitzcosmetique.com/product/tanzy-glow

https://prorituals.com/collections/finishing/products/glow-shine-spray

https://jamilglow.com/products/glow-in-the-dark-body-butter

https://www.cultbeauty.co.uk/blog/2016/12/mabel-and-meg-the-best-primer-for-liquid-lipstick

https://www.thetimes.co.uk/article/five-of-the-best-lip-serums-wh00dmcs5

https://www.dentaltix.com/en/prevdent/serum-prevdent-sponges-remineralizers-nhap

https://seasalthair.blogspot.com/2014/04/review-cathy-doll-make-up-remover-foam.html

https://www.aluminumfreedeodorants.com/best-deodorant-antiperspirant-excessive-sweating/

https://www.amazon.com/Physicians-Formula-EyeLiner-Booster-044386066304/dp/B07C8H2Y3T

https://www.ebay.co.uk/itm/LOREAL-Nail-Polish-Serum-7in1-SAVIOUR-Strenghtening-For-Damaged-Nails-5ml-LR050-/123261111411

Bearing in mind the above, and the fact that cosmetics nowadays are multipurpose products claiming to have multiple simultaneous effects, it is evident that when being confronted with the expression ‘FINISHING GLOW SERUM’, the relevant public will not require any analytical effort or mental step to grasp its descriptiveness and will perceive the sign ‘FINISHING GLOW SERUM’ as merely providing information describing the goods and services on offer namely, that the goods are substances used for the finishing touches and for creating a glow or shiny effect or are used in combination with such substances and that the objected services in Class 43, including the make up artist services, use substances for the finishing touches and for creating a glow or shiny effect.

Thus, contrary to the applicant’s contention, the expression ‘FINISHING GLOW SERUM’ is particularly suitable to describe desirable characteristics of the goods and services objected to, such as the kind or intended purpose of the goods in question and other characteristics of the services objected to in Class 43, such as the means or products used in their provision. Consequently, there is a sufficiently direct and specific relationship between the word mark applied for and the goods and services concerned.

3. As to the claim that the word ‘GLOW’ adds an imaginative tone to the mark in order to attract consumers because consumers would understand that makeup cannot really glow and would thus interpret the mark to be a playful marketing tool, the applicant is reminded that

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to 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).

Next, even if the Office could accept the argument that the applicant uses a running theme of ‘magic’ and ‘dazzle’ which the consumer would see as an imaginative and light–hearted promotional strategy, it is noted that the message conveyed by the verbal element of the mark is clear and indisputable. Therefore, the applicant’s claim does not take away from the issue of mere descriptiveness since it is the meaning that purchasers or users of the goods and services are likely to see that counts and the intention of the applicant in itself cannot be deemed to change the perception of the public of the mark applied for.

In this respect it should be noted that the examination of a trade mark should be based on objective criteria and that the alleged intentions of the applicant can have no bearing on the assessment of a mark in respect of absolute grounds for refusal pursuant to Article 7 EUTMR.

From the above it is clear that the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it as only an informative statement. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

4. In addition, regarding the applicant’s claim that ‘FINISHING GLOW SERUM’ is not commonly used, it is noted that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore 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, emphases added).

1. Moreover, even if use of the sign by others, for example on the Internet, can be a valid indication when considering the applicability of Article 7(1)(b) EUTMR, it is not a conditio sine qua non’. (of 28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

5. Finally, as regards the applicant’s argument that the sign applied for is perfectly well adapted to performing a trade mark function due to the manner in which the words are combined and that , it is noted that given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Furthermore, according to the case-law of the European Courts, a word mark that is descriptive of characteristics of 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 for the purposes of Article 7(1)(b) EUTMR (12/06/2007, T 190/05, Twist & Pour, EU:T:2007:171, § 39). In the present case, moreover, the applicant’s mere claim that the sign is not descriptive and therefore has distinctive character can only be disregarded as unconvincing.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR.

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 18 011 614 is hereby rejected for the following goods and services:

Class 3 :

Cosmetics, make up; skin care preparations, powder compacts; lipsticks; lip gloss; make-up powder and foundation; moisturisers; beauty care preparations, body care preparations, essential oils for personal use; preparations and products for removing make-up; lotions, creams and conditioners for the face, hands and body; beauty masks; almond milk for cosmetic purposes; almond oil; almond soap; aloe vera preparations for cosmetic purposes; antiperspirant soap; antiperspirants [toiletries]; aromatics [essential oils]; balms other than for medical purposes; baths (cosmetic preparations for -); beard dyes; bergamot oil; bleaching preparations [decolorants] for cosmetic purposescakes of toilet soap; cedarwood (essential oils of -); citron (essential oils of -); cleansing milk for toilet purposes; colorants for toilet purposes; color-removing preparations; cosmetic kits; cosmetics for animals; cotton sticks for cosmetic purposes; cotton wool for cosmetic purposes; creams (cosmetic -); creams (skin whitening -); dental bleaching gels; deodorant soap; deodorants for human beings or for animals; depilatories; depilatory preparations; dyes (cosmetic -); essences (ethereal -); essential oils; ethereal essences; ethereal oils; eyebrow cosmetics; eyelashes (cosmetic preparations for -); eyelashes (false -); false eyelashes; false nails; foot perspiration (soap for -); gels (dental bleaching -); greases for cosmetic purposes; hair colorants; hair dyes; hair lotions; hair spray; hair waving preparations; hydrogen peroxide for cosmetic purposes; jasmine oil; kits (cosmetic -); lavender oil; lemon (essential oils of -); lotions for cosmetic purposes; lotions (tissues impregnated with cosmetic -); make-up preparations; make-up removing preparations; mascara; massage gels other than for medical purposes; milk (cleansing -) for toilet purposes; mint essence [essential oil]; moustache wax; nail care preparations; nail polish; nail varnish; nails (false -); neutralizers for permanent waving; oils for cosmetic purposes; oils for perfumes and scents; oils for toilet purposes; pencils (cosmetic -); pencils (eyebrow -); permanent waving (neutralizers for -); pomades for cosmetic purposes; powder (make-up -); rose oil; shampoos; shaving preparations; shaving soap; skin care (cosmetic preparations for -); skin whitening creams; soap; soap (antiperspirant -); soap (cakes of -); soap (deodorant -); soap for foot perspiration; sunscreen preparations; sun-tanning preparations [cosmetics]; terpenes [essential oils]; tissues impregnated with cosmetic lotions; toiletries; varnish (nail -); varnish-removing preparations; waving preparations for the hair; wax (depilatory).

Class 44 : Make up artist services; make-up services; cosmetic make-up services; beauty care services; beauty salon and beauty treatment services; beauty therapy services and treatments; beauty treatment; cosmetic treatment for the hair; hair care, hair colouring, hair styling and hair cutting services; hairdressing salon services; advice and consultancy services relating to the above services.

The application may proceed for the remaining goods and services.

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.

Isabel DE ALFONSETI HARTMANN