Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/05/2019

BIRD & BIRD LLP

12 New Fetter Lane

London London, City of EC4A 1JP

REINO UNIDO

Application No:	018012323
Your reference:	HANBE.6030/ROAM/PRB
Trade mark:	SOUR TWIST
Mark type:	Word mark
Applicant:	Energy Beverages LLC 2390 Anselmo Drive Corona California 92879 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 01/02/2019 pursuant to Article 7(1)(b) and (c) EUTMR 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 submitted its observations on 01/04/2019, which may be summarised as follows:

1. The mark applied for has sufficient distinctiveness because it should be examined as a whole in relation to the goods for which registration is sought, such as non-alcoholic beverages, syrups, and concentrates, etc. The word ‘TWIST’ could be only connected with alcoholic beverages, especially those consisting of alcoholic spirit.

2. The mark applied for, ‘SOUR TWIST’, consists of two words, and as a whole does not have any meaning. In particular, the word ‘TWIST’ has an unclear meaning and many different definitions, which are included in the annexes sent by the applicant. Therefore, this combination of words is memorable combination of words.

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.

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).

In response to point 1)

The Office has examined the list of goods in relation to the mark applied for and its meaning. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). There is no element of fancifulness or any unusual combination of words in the mark applied for that might require some effort, such as linguistic analysis, on the part of consumers to enable them to understand its meaning in relation to the goods in question.

It is sufficient, as the wording of Article 7 (1) (c) EUTMR 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).

The Office maintains its opinion that the words comprising the sign are clearly understandable to English-speaking consumers in the European Union and in connection with beverages, would be understood as denoting a blended beverage with a sour taste. All cocktails can also be prepared as virgin (non-alcoholic) cocktails; therefore, the Office does not agree with the applicant that the consumer would see the word ‘TWIST’ as relating purely to alcoholic beverage.

In response to point 2)

All the definitions provided by the Office were extracted from the Oxford Online Dictionary, which is an acknowledged reference source. There is no element of fancifulness or any unusual combination of words in the mark applied for that might require some effort, such as linguistic analysis, on the part of consumers to enable them to understand its meaning in relation to the goods in question. For the Office to refuse to register a trade mark under Article 7(1)(b) EUTMR, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods in question. The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 88). The Board notes that the examiner and the applicant put emphasis on the use of the word ‘TWIST’ on the Internet. Although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) EUTMR, it is not a conditio sine qua non’ (28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods in respect of which registration is sought is itself descriptive of the characteristics of those goods 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, 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, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, § 32).

The mark applied for is comprised of English words that will be easily understood by the relevant English-speaking consumer in the English-spoking territories of the European Union, that is, as correctly pointed out by the applicant in Ireland, Malta, and the United Kingdom. The words will immediately provide consumer with direct information regarding the kind of goods in question. Therefore, the Office maintains its position that the trade mark applied for has a clear descriptive meaning, and is devoid of any distinctive character.

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 18 012 323 is hereby rejected for all the goods claimed:

Class 32 Non-alcoholic beverages, including carbonated drinks and energy drinks; syrups, concentrates, powders and preparations for making beverages, including carbonated drinks and energy drinks; beer.

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.

Petra CHARUZOVÁ

Enclosure: 3 pages