Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/11/2019

Herbapol Lublin S.A.

ul. Diamentowa 25

PL-20-954 Lublin

POLONIA

Application No:	018012602
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Herbapol Lublin S.A. ul. Diamentowa 25 PL-20-954 Lublin POLONIA

The Office raised an objection on 04/03/2019 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.

The applicant submitted its observations on 27/04/2019, which may be summarised as follows:

1. The examiner freely and mistakenly interpreted the mark as an image of a lemon with leaves. The mark is a fanciful depiction of three leaves of which one is of a yellow colour. They may be leaves of different plants or may symbolise a fruit.

2. The applicant has been using the mark since 2012.

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.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin ((5/09/2005, C-37/03 P, "BioID", EU: C: 2005: 547, § 60).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

In the present case, the Office indicated in its letter of 04/03/2019 that the mark would be perceived by the relevant public in the context of a particular market reality as a non-distinctive depiction of a lemon and leaves:

The sign for which protection is sought, as a whole, is a depiction of a lemon and leaves. It merely serves to indicate that plant and herb extracts for medicinal use, medicinal, herbal teas, herbal supplements, tisanes [medicated beverages], herbal teas for medicinal purposes, extracts of medicinal herbs, medicinal infusions, herbal compounds for medical use, extracts of medicinal plants, medicinal herbs, among others in Class 5, herbal preparations for making beverages, tea, herbal infusions, herb teas, other than for medicinal use, coffee, teas and cocoa and substitutes therefor in Class 30 and syrups for beverages, concentrates for making fruit drinks, concentrated fruit juice, squashes [non-alcoholic beverages], among others, in Class 32 have lemon as their main ingredient, are derived, based on it or that they contain it.

In the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign but merely a simple depiction of a lemon and leaves. Lemons can vary in shape but this mark contains the essential characteristics in terms of overall shape (oval), colour and type of leaf and therefore it does not depart significantly from other depictions of lemons and their leaves. Therefore, the mark as a whole does not possess any feature that allows it to fulfil its essential function in relation to the goods for which protection is sought.

The interpretation of the sign put forward by the Office is based on acquired experience; it is on that basis that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. The Office took as the basis for its objection the relevant public’s perception of the sign in question in the context of the relevant market. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

With regard to the argument that the mark has been used since 2012, this information is not relevant for the assessment of inherent distinctiveness of a sign and therefore cannot be taken into account.

In addition to the abovementioned arguments, in the reply to the Office’s objection letter of 04/03/2019, the applicant included evidence of use of the mark. As it was unclear whether this request involved a claim under Article 7(3) EUTMR, the Office issued on 20/05/2019 a communication regarding Article 7(3) EUTMR and Article 2(2) EUTMIR, requesting a clarification regarding the claim.

The applicant replied on 06/06/2019 indicating a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. The applicant also indicated that this claim was meant as a principal claim but no further evidence would be provided.

In the claim, the applicant indicates that the trade mark applied for has acquired distinctiveness through use in relation to the goods for which protection is sought.

In support of the claim, the applicant submitted evidence of use on 27/04/2019.

The evidence to be taken into account is the following:

• Screenshots from Polish online stores showing the applicant’s products, their packaging.

• Sales figures: a table provided by the applicant as part of the reply to the objection letter showing the sales figures for ‘fruit teas’ and ‘herbs in bag’ products for 2013-2019.

• Investment in advertising: a table provided by the applicant as part of the reply to the objection letter showing the figures for expenditure on promotion of ‘fruit teas’ and ‘herbs in bag’ products for 2016-2018. The trade mark is not displayed, only a mere reference is made to the items containing figurative mark ‘Three leaves’. Two examples of television advertisements (TV) on YouTube were referenced.

• Information that “the applicant uses packaging with a trademark. These packages are registered in the Polish Patent Office as … Designs”.

Assessment of the evidence

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

With regard to the provided evidence, the screenshots from different online shops in Poland show the trade mark in different colour combinations (yellow and green; red, yellow and green and white and green) and with letters on the central part of it on different products, none of them being cocoa or its substitutes. The dates provided are posterior to the application for a EUTM.

Concerning the sales figures provided, they are provided by the applicant as part of their reply to the objection letter, with no clear reference to the exact geographical territory to which they apply, only indicating Poland and the EU market in general. They make reference to a part of the goods, namely fruit tea and herbs in a bag.

With regard to the investment in promotion, the data presented by the applicant cannot be clearly related to the mark for which protection is sought, as the information provided does not clearly indicate the sign. In this case, the territory of the advertising actions is unknown. Therefore, the evidence provided by the applicant is not sufficient to prove a link between the market share and advertising, on the one hand, and consumer perceptions on the other. Furthermore, examples of advertisements in YouTube are not sufficient.

None of the evidence above is segregated on a market-by-market basis or comes from an independent third party.

It must be noted that, as stated in the Office’s communication of 04/03/2019, the sign is addressed to the public in general:

The sign in question is addressed to the public in general. In the present case, as the sign is a figurative one, language plays no role. The relevant public throughout the European Union will, in principle, have the same view with regard to the inherent distinctiveness of the figurative mark.

Following Guidelines for Examination in the Office, Part B, Examination, Absolute Grounds for Refusal — Acquired Distinctiveness Through Use, 6 Territorial Aspects:

Pursuant to Article 1 EUTMR, a European Union trade mark has a unitary character and has equal effect throughout the European Union. Accordingly, a mark must be refused registration even if it is devoid of distinctive character only in part of the European Union. That part of the European Union may be comprised of a single Member State (see, to that effect, judgments of 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 81-83; 29/09/2010, T-378/07, Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413 § 45 and the case-law cited).

As a logical consequence, acquired distinctiveness must be established throughout the territory in which the trade mark did not ab initio have distinctive character (judgments of 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 83, 86; 29/09/2010, T-378/07, Représentation d’un tracteur en rouge, noir et gris, EU:T:2010:413, § 30).

…

In this context the question arises whether the Office can extrapolate from selective evidence to draw broader conclusions. This concerns the extent to which evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence…

…

As indicated above, the acquisition of distinctive character through use must be proven for the part of the European Union in which the trade mark concerned did not initially have such character.

This may prove difficult and burdensome for the applicant, particularly when the objection exists throughout the European Union. This is normally the case for 3D marks, colours per se and figurative trade marks consisting exclusively of the depiction of the goods in question, as it may be assumed that the assessment of their distinctiveness will be the same throughout the European Union, unless there is concrete evidence to the contrary (judgment of 24/02/2016, T-411/14, Shape of a bottle (3D), EU:T:2016:94, § 68).

However, the Court has held that, despite the fact that acquired distinctiveness must be shown throughout the European Union, it would be unreasonable to require proof of acquired distinctiveness for each individual Member State (judgment of 24/05/2012, C-98/11 P, Hase, EU:C:2012:307, § 62). This principle implies that, if one considers the European territory as a puzzle, failure to prove acquired distinctiveness for one or more specific national markets may not be decisive, provided that the ‘missing piece’ of the puzzle does not affect the general picture that a significant proportion of the relevant European public perceives the sign as a trade mark in the various parts or regions of the European Union.

In light of the above, the Office considers that, in certain cases, it is possible to extrapolate from selective evidence to draw broader conclusions. As a result, evidence showing distinctiveness acquired through use in certain Member States can be used to make inferences with regard to the market situation in other Member States not covered by the evidence.

In view of the above and bearing in mind that the objection covers the territory of the whole European Union, the provided evidence is not enough to extrapolate the data to all the EU countries.

Furthermore, following Guidelines for Examination in the Office, Part B, Examination, Absolute Grounds for Refusal — Acquired Distinctiveness Through Use, 8 Assessment of the Evidence:

Goods and services are often marketed under several trade marks, which makes it difficult to see the relevant customer’s perception of the EUTM applied for on its own, that is to say, without such perception being affected by the other marks present. Turnover and advertising figures can often include sales or promotion of other trade marks, or of significantly different forms of the trade mark at issue (for example, figurative trade marks rather than word marks, or differing word elements in a figurative mark), or are too general to allow identification of the specific markets under consideration. As a consequence, broadly consolidated turnover or advertising figures may not be sufficient to prove whether the relevant public perceives the trade mark at issue as a badge of origin or not.

In the present case, the relation of the trade mark as applied for with the goods for which protection is sought cannot be clearly established from the provided evidence, as the majority of it does not clearly indicate the mark as applied for; the screenshots from the Polish online stores show the mark in conjunction with other elements, including verbal elements.

With regard to the registrations in the Polish Patent Office, it must be noted that:

The applicant may also refer to prior national registrations where no acquired distinctiveness is claimed. Nevertheless, it is established case-law that such registrations do not bind the Office. Moreover, the Office is not bound by its previous decisions and such cases must be assessed on their own merits (judgment of 21/05/2014, T-553/12, BATEAUX MOUCHES, EU:T:2014:264, § 72-73).

In addition, in the present case, the applicant makes reference to registered designs and not trade marks.

The EUTM applicant must submit evidence that enables the Office to find that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (judgment of 15/12/2015, T-262/04, Briquet à Pierre, EU:T:2005:463, § 61 and the case-law cited therein).

In view of the above, the length, frequency and intensity of use of the sign all over the European Union cannot be established based on the evidence provided.

Finally, the applicant failed to provide such evidence as that could be relevant for establishing the acquired distinctiveness through use:

• opinion polls/surveys

• sales brochures

• catalogues

• price lists

• invoices

• annual reports

• affidavits

• press clippings.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b) EUTMR, the application for EUTM No 18 012 602:

is hereby rejected for all the goods 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.

Monika TOMCZYNSKA