Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/06/2019

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	018013308
Your reference:	81906818/IG
Trade mark:	ELECTRIC BLUE
Mark type:	Word mark
Applicant:	BRITISH AMERICAN TOBACCO (BRANDS) LIMITED Globe House 4 Temple Place London WC2R 2PG REINO UNIDO

The Office raised an objection on 15/02/2019 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 29/03/2019, which may be summarised as follows:

1. The mark is registrable as the provisional refusal did not define the level of attention by the relevant public. The consumers would be particularly attentive and well informed because of their loyalty to the brand; this statement is supported by the decision in ‘Cohiba la Habanos’ (18/05/2011, T‑207/08, Kiowa, EU:T:2011:224). The same attention applies to other non-traditional tobacco products, such as electronic cigarettes and flavourings (05/04/2018, R 2613/2017-5 MOST). These consumers are particularly careful and selective as to the brand they smoke; therefore, the relevant consumer will display a higher than average level of attention.

2. The Office did not provide sufficient reasoning for the provisional refusal for each good for which protection is sought and failed to categorise and identify the homogeneity between the goods to which an objection has been raised. The Office has failed to prove this reasoning with any supporting evidence.

3. The word combination ‘ELECTRIC BLUE’ is unusual and breaks grammatical rules. Furthermore, the examiner has supported the objection with irrelevant extract from Wikipedia. The word ‘ELECTRIC’ is very unusual to describe the shade of colours, it is rather a play on words to describe the electric products. Therefore, the examiner has judged the mark without analysing its overall impression.

4. Many national patent offices have registered very similar marks with the same wording ‘ELECTRIC BLUE’ for similar goods and services, some of the registrations are no longer active, nonetheless it remains clear that they were all accepted, such as Canadian registration No. 731410 or UK No. 3328640 and UK No. 3342773 or US No. 4594004 and US 79243238 and others (supported by enclosed Annexes).

5. Several EUTMs with similar wording have been registered, such as EUTM No 1132558, EUTM No 14329395, EUTM No 17981500 and EUTM No 17981509, and many more (supported be the Annexes). Therefore, the applicant refers to equal treatment and legal certainty.

6. The applicant requests an opportunity to forward further observations and additional allegations and evidence.

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)

It must be held that the fact that the relevant public is particularly attentive 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 attentive and loyal relevant 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.

The Office is of the opinion that the relevant public is not specialised public but is composed of average English-speaking consumers and the goods to which an objection has been raised and for which registration is sought are goods for mass consumption that target average consumers. Furthermore, the Office maintains its opinion that the word combination is clearly understandable by English-speaking consumers in the European Union. If non-smoking consumers see the words ‘ELECTRIC BLUE’ in relations to the goods they will immediately perceive them as referring to articles of officially recognized blue colour. The sign describes a characteristic such as the colour of the goods in question.

In response to point 2)

It is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services that have a sufficiently direct and specific link to each other (02/04/2009, T-118/06, Ultimate fighting championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is/are given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (judgment of 15/02/2007, C-239/05, The Kitchen Company, EU:C:2007:99, § 38).’

The Office has been especially careful when defining the provisional refusal of the mark in question. The goods in Class 34 were analysed carefully and only those goods in the precise homogenous category of smoking articles that could be blue were found to be non-distinctive and objected to. For these goods the mark could not distinguish them from those of another undertaking. After a new analysis, the Office still maintains the same opinion as regards the provisional refusal.

As regards the argument that it is up to the Office to show that other similar signs are used in the market the Court has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience 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. 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).

In response to point 3)

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The Office has examined the list of goods in relation to the mark applied for and its meaning. The applicant argued that the sign applied for was a neologism breaking the grammatical rules consisting of the conjoined words ‘ELECTRIC BLUE’. A trade mark consisting of a neologism or a word composed of elements each of which characteristics of the goods in respect of which registration is sought is itself not distinctive of the characteristics of those goods for the purposes, 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, T-367/02- T-369/02, ‘SnTEM’, SnPUR& SnMIX, EU:T:2005:3, § 32).

The definitions were extracted from the online Oxford Dictionary, which is an acknowledged reference source, and only were supported by the extract from Wikipedia, where the shade of blue is described. The Office points out that ‘ELECTRIC BLUE’ is a light blue colour as per Oxford Dictionary; and therefore, does not break grammatical rules and cannot be viewed as neologism. This colour has also official codes HEX code - #7DF9FF, and RGB #0892d0, which are internationally recognized colour codes.

The Office maintains its opinion that the definitions are clear and understandable in connection with the goods for which registration is sought. 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).

There is no fanciful element 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 not uncommon and grammatically incorrect to use the expression ‘ELECTRIC BLUE’ because it is part of the official English Oxford Dictionary. It is understandable as a blue colour with a blue lightning, an electric spark, and the colour of ionized argon gas; therefore, its meaning is clearly defined and can be readily understood.

The Office maintains its opinion that the words of which the sign consists are clearly understandable by English-speaking consumers in the European Union and the relevant public would fail to memorise the sign easily and instantly as a distinctive trade mark for the goods in question.

In response to point 4)

As regards the national decisions referred to by the applicant, according to case-law: the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

In response to point 5)

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his or her claim, on unlawful acts committed in favour of another (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

In any event, the fact that the Office might, in error, have registered similar or identical trade marks in the past does not oblige it to continue to register trade marks similar or identical to them if those trade marks are descriptive. Decisions relating to descriptiveness and distinctiveness depend to an extent on the evaluation in an individual case. Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria that are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (21/11/2012, T-338/11, ‘PHOTOS.COM’, EU:T:2012:614, § 69).

In response to point 6)

The Office has already presented all its arguments in the previous communication and the applicant had an opportunity to submit its observations. The Office is not presenting any new arguments in this communication and, therefore, the Office does not see any reason for granting additional time to the applicant to submit further observations.

For the aforementioned reasons, and pursuant to Article 7(1) (b) and Article 7(2) EUTMR, the application for European Union trade mark No. 18 013 308 is hereby rejected in part:

Class 34 Lighters; matches; smokers' articles; pocket apparatus for rolling cigarettes; hand held machines for injecting tobacco into paper tubes; electronic cigarettes.

The application is accepted for these goods:

Class 34 Cigarettes; tobacco, raw or manufactured; roll your own tobacco; pipe

tobacco; tobacco products; tobacco substitutes (not for medical purposes); tobacco free oral nicotine pouches (not for medical use); cigars; cigarillos; cigarette paper, cigarette tubes, cigarette filters; liquids for electronic cigarettes; tobacco products for the purpose of being heated.

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

Annexes: 3 pages