Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 12/11/2019

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	018013317
Your reference:	T198928EM01AHOJMK
Trade mark:	THE SMALL BATCH WHISKY CO.
Mark type:	Word mark
Applicant:	Whyte and Mackay Limited 4th Floor St Vincent Plaza 319 St Vincent Street Glasgow, Scotland G2 5RG REINO UNIDO

The Office raised an objection on 22/03/2019 pursuant to 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.

On 22/05/2019 the applicant requested an extension of two months to respond to the notice of grounds for refusal.

The applicant submitted its observations on 26/07/2019, which may be summarised as follows.

• The applicant points out that it is accepted practice that a company name including the definite article, a descriptive term and the word “CO”/”COMPANY” functions as a registrable trade mark and submits several examples such as “THE MEDICINE COMPANY, THE MAPWARE COMPANY, THE CAKE COMPANY, THE SCARF COMPANY and THE WINE GLASS COMPANY” and therefore concludes that the mark at hand is also registrable given the combination of words

• The applicant notes that “whiskey” and “whisky” are different products, as “whiskey” relates to American spirits distilled from mainly corn and that the applicant’s goods are whisky goods which are Scotch whisky and Scotch whisky based liqueurs

• American whiskey is often produced by mixing the contents of a relatively small number of selected barrels, and such a whiskey is called a “small batch” whiskey. This process is restricted to production of American whiskey.

• The term “small batch” is distinctive for Scotch whisky and Scotch whisky based liqueurs

• The EU application has been filed in tandem with a UK national application and claims that if the UK application is accepted for registration, then the EU application should be allowed for registration too

• The applicant would like to limit the list of goods to read as follows : “Scotch whisky; vodka; gin; Scotch whisky based liqueurs” in order to overcome the examiner’s objection.

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)(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).

First, the applicant points out that it is accepted practice that a company name including the definite article, a descriptive term and the word “CO”/”COMPANY” functions as a registrable trade mark. The Office respectfully does not share this argument. As regards the examples given by the applicant in relation to this argument, such as “THE MEDICINE COMPANY, THE MAPWARE COMPANY, THE CAKE COMPANY, THE SCARF COMPANY and THE WINE COMPANY”, it must be borne in mind that 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; and 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 claim, on unlawful acts committed in favour of another’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

Nevertheless, the Office has proceeded to examine the marks cited by the applicant in its allegations and considers that they are not relevant in relation to the case at hand.

First, it must be noted that the great majority has been initially and/or partially refused such as The Cake Company, The Scarf Company and The Little Crisp Company.

Second, as regards the EUTM The Wine Glass Company, the Office recalls that this mark initially and provisionally refused for all goods in Class 21, has finally been accepted for registration pursuant to Article 7, paragraph 3 of the EUTMR.

The Office considers that the remaining cases possess all a minimum degree of distinctiveness to enable them to fulfil the essential function of a trade mark which is distinguishing the goods and services from one undertaking from those of another commercial origin.

Therefore in the Office’s view, it is maintained that these examples are not relevant for the case at issue.

The applicant’s second line of argument that “whiskey” and “whisky” are different products, as “whiskey” relates to American spirits distilled from mainly corn, and that the applicant’s whiskies are Scotch whiskies and Scotch whisky based liqueurs, it must be noted that the term “whiskey” does not only refer to American whisky. Indeed, it is well-known that in Ireland the term “whisky” is also used with an “e”, namely, whiskey. Furthermore, it must be borne in mind that the Internet and globalization have radically changed the business world. It allows a company based in the United States to have customers in Europe, or the other way round for example.

Therefore, in the Office’s view, the aforementioned applicant’s argument that “whiskey” and “whisky” are different products, is not relevant for the case at issue, and will not be taken into account.

As regards the applicant’s next line of argument that American whiskey is often produced by mixing the contents of a relatively small number of barrels, and that such a whiskey is called a “small batch” whiskey, the Office does not dispute this argument. It is agreed that the term “small batch” is most commonly used for American whiskey, however the Office highlights that it is also used for other whiskies as well. For example, the Bowmore distillery in Islay, Scotland, has produced a single malt Scotch whisky labelled as “small batch”.

As regards the applicant’s argument that the expression “small batch” is distinctive for Scotch whisky and Scotch whisky based liqueurs, the Office respectfully does not share this argument. The Office has thoroughly demonstrated in this communication and in the notification of 22/03/2019 that the sign has a clear descriptive meaning and lacks therefore of any distinctive character pursuant Article 7(1)(c) and (b) EUTMR. Therefore, the relevant public will not tend to perceive any particular indication of commercial origin beyond the information conveyed by the sign. Moreover, it must be recalled that 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).

As regards the applicant’s further argument that the EU application has been filed in tandem with a UK national application, the Office recalls that the national application Nr 00003368981 is still under examination. In addition, 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).

Finally, as regards the applicant’s proposal to limit the list of goods to read as follows: “Scotch whisky; vodka; gin; Scotch whisky based liqueurs” in order to overcome the examiner’s objection, the Office submits that the limitation is accepted but highlights that it does not waive the objection pursuant Article 7(1)(b) and (c) and Article 7 (2) EUTMR for “Scotch whisky; Scotch whisky based liqueurs” as notified in its communication of 12/11/2019.

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 018013317 is hereby rejected for the following goods:

Class 33 Scotch whisky; Scotch whisky based liqueurs.

The application may proceed for the remaining goods.

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.

Soledad PALACIO MONTILLA