Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/06/2019

PAGE, WHITE & FARRER LIMITED

Bedford House, John Street

London London, City of WC1N 2BF

REINO UNIDO

Application No:	018017602
Your reference:	413948/JPC/MD/FORALLCURLKIND
Trade mark:	FOR ALL CURL KIND
Mark type:	Word mark
Applicant:	DEVA CONCEPTS LLC. 75 Spring Street, 8th Floor, New York, NY 10012 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 14/02/2019 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.

The applicant submitted its observations on 13/03/2019, which may be summarised as follows.

1. The mark applied for, ‘FOR ALL CURL KIND’ is imaginative, playful and unique because there is no such thing as ‘curl kind’. The Office concluded that consumers would perceive the sign as providing haircare goods and services for ‘all kinds of curls’. However, the applicant does not seek to register ‘FOR ALL CURL KINDS’, the mark for which registration is sought is ‘FOR ALL CURL KIND’ The mark is short, snappy, easy to remember and it will be recalled with certainty, given the play on ‘for all mankind’ and, therefore, it is distinctive for the goods and services at issue.

2. There is no public interest consideration for refusing the registration of the mark applied for. The sign ‘FOR ALL CURL KIND’ is not commonly used in the trade for the presentation of the goods or services at issue.

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 limitation and the applicant’s other arguments, the Office has decided to maintain the objection.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the product or service from others that have another origin (18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 30).

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and/or services for which registration is sought (20/03/2002, T‑356/00, Carcard, EU:T:2002:80, § 28). For assessing descriptiveness under Article 7(1)(c) EUTMR, it is sufficient to establish that the mark consists exclusively of a sign or an indication that may serve, in trade, to designate the nature, intended purpose and/or other characteristics of the goods (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 16).

For the absolute ground for refusal under Article 7(1)(c) EUTMR, it is sufficient that there is, from the perspective of the intended public, a direct and specific association between the sign and the categories of goods and services for which registration is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43; 05/02/2004, C‑150/02 P, Streamserve, EU:C:2004:75).

The refusal of a trade mark as being descriptive is justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services for which protection is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43). Furthermore, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary for the word to be used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

Although the evaluation of the descriptiveness and/or distinctiveness of a trade mark may comprise an assessment of the individual elements separately, it must depend on an appraisal of the mark as a whole. In order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532).

As regards trade marks composed of words, such as the sign at issue, descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole they form (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the words creates an overall impression that is sufficiently far removed from that produced by the combination of the meaning of the elements of which it is composed, with the result that the complete expression is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that is descriptive of characteristics of the 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 within the meaning of Article 7(1)(b) EUTMR.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks that are devoid of distinctive character that alone renders them capable of fulfilling that essential function (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, § 23). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union’.

As regards the applicant’s observations in 1 above, the Office replies as follows.

In its submissions, the applicant argues that the mark applied for, ‘FOR ALL CURL KIND’ is imaginative, playful and unique because there is no such thing as ‘curl kind’. The Office concluded that consumers would perceive the sign as providing hair care goods and services concerning ‘all kinds of curls’. However, the applicant does not seek to register ‘FOR ALL CURL KINDS’, but the mark for which registration is sought is ‘FOR ALL CURL KIND’ The mark is short, snappy, easy to remember and it will be recalled with certainty, given the play on ‘for all mankind’ and, therefore, distinctive for the goods and services at issue.

The Office has noted the applicant’s arguments. However, when assessing a mark, the Office must consider it not in its strictest grammatical sense but as it would be perceived by the public at large, who will interpret it in relation to the goods and services for which registration is sought and will form an opinion concerning its meaning.

With regard to the applicant’s argument that the mark, as a whole, is original, a play on words, imaginative and unique, it should be recalled 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, emphasis added).

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).

The applicant does not dispute the meaning of the sign’s individual words, but argues that their combination in one expression is imaginative, playful and snappy, and it will be easily remembered and recalled by the relevant consumer.

As in the Office’s initial notification of 14/02/2019, the sign applied for is a combination of four readily identifiable and ordinary English words, namely ‘FOR’, with, inter alia, the meaning ‘suitable to; appropriate to; designed to meet the needs of; concerning’, ‘ALL’, which stands for ‘every one of (a class); totality of’, ‘CURL’ denotating ‘a curve or coil of hair’, and ‘KIND’ which means ‘sort; type’. The words are easily recognisable and presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant English-speaking public will perceive the mark not as unusual, but rather as a relevant expression with the meaning of ‘for all curl types’ or more precisely ‘for all types (kind) of curly hair’.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Furthermore, the fact that the sign at issue can have several meanings, be a play on words or be perceived as surprising and unexpected does not suffice to make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

In addition, an objection under Article 7(1)(b) and (c) EUTMR is also applicable where the lexical structure of the sign in question is not entirely correct from a grammatical point of view.

In the present case, the mere fact that this expression is not entirely grammatically correct has, in the Office’s opinion, a rather limited impact on the perception of the relevant public, who, especially in relation to the goods and services applied for, will not see it as a fanciful, imaginative and unique expression. On the contrary, given that the possible meaning of the expression under examination should not be examined in the abstract, but in relation to the goods and services for which the protection is sought and to the consumers for whom they are intended (12.03.2014, T‑102/11, T‑369/12 - T‑371/12, IP Zone et al., EU:T:2014:118, § 30).

Therefore, the Office does not consider the applicant’s arguments convincing. The Office maintains its view expressed in its initial notification of 14/02/2019 that, taken as a whole, the expression ‘FOR ALL CURL KIND’ immediately informs consumers without further reflection that the goods and services at issue are specifically designed, intended for or directly concern all types of curly hair, all kinds of curls.

Furthermore, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, the sign will not be seen as a badge of origin and does not fulfil the role of a trade mark.

The Office asserts its opinion that the term ‘FOR ALL CURL KIND’ consists exclusively of a meaningful expression easily understood by the relevant public. They will not perceive it as a trade mark but primarily as descriptive in nature, conveying obvious and direct information regarding the kind, intended purpose and subject matter of the contested goods and services for which registration is sought, eclipsing any impression that the mark could indicate a trade origin.

As regards the applicant’s argument that there is no public interest consideration for refusing the registration of the mark, and that the sign ‘FOR ALL CURL KIND’ is not commonly used in the trade for the presentation of the goods or services at issue, the Office has noted the applicant’s comments.

However, this argument must be dismissed. ‘[T]he 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 or services 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 meaning of the whole expression ‘FOR ALL CURL KIND’ is clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the services for which protection is sought. Therefore, the Office considers that the expression ‘FOR ALL CURL KIND’ is readily intelligible when encountered by the relevant consumer in conjunction with the services for which protection is sought.

It follows from all the foregoing that the applicant has not succeeded in convincing the Office that the sign applied for, ‘FOR ALL CURL KIND’, will be perceived by consumers as indicating the commercial origin of the goods and services for which registration is sought. For the reasons given above, the sign ‘FOR ALL CURL KIND’ does not possess any distinctive character for the goods and services in question, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace; that is, it fails to distinguish the applicant’s goods and services from those of other undertakings. The relevant public cannot perceive it other than in its descriptive sense in the absence of prior knowledge.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 017 602 is hereby rejected for all the goods and services for which protection is sought.

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.

Robert KLECUN