Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/09/2019

WILSON GUNN

5^th Floor

Blackfriars House

The Parsonage

Manchester M3 2JA

REINO UNIDO

Application No:	018021721
Your reference:	T/71065.EM
Trade mark:	LINEN CLOSET
Mark type:	Word mark
Applicant:	Indo Count Industries Limited 301, ARCADIA, 3rd Floor Nariman Point, Mumbai Maharashtra 400 021 LA INDIA

The Office raised an objection on 26/02/2019 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.

Following an extension of the time limit until 03/07/2019, the applicant submitted its observations on 03/07/2019, which may be summarised as follows.

• The sign applied for, ‘LINEN CLOSET’, is fanciful and unusual in regard to the goods for which protection is sought. The expression ‘LINEN CLOSET’ does not describe the kind of goods at issue. The fact that the goods may be stored in a linen closet is irrelevant to the assessment of the distinctiveness of the mark.

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).

Furthermore, ‘[t]he 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).

As regards word marks, 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 mark as a whole (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, it creates an overall impression that is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word combination is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87). Furthermore, according to Article 7(1)(c) EUTMR, to reject a trade mark application it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient if they are capable of being used descriptively.

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 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, which alone renders them capable of fulfilling their essential function (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditional on a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

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

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).

Registration of a ‘trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), EU:C:2004:258, § 38).

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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Article 7(2) EUTMR states that paragraph 7(1) will apply notwithstanding that the grounds for preventing registration were obtained in only part of the European Union.

The Office responds to the applicant’s observations as follows.

In its submissions, the applicant argues that the sign applied for, ‘LINEN CLOSET’, is fanciful and unusual in regard to the goods for which protection is sought. The expression ‘LINEN CLOSET’ does not describe the kind of goods at issue. The fact that the goods may be stored in a linen closet is irrelevant to the assessment of the distinctiveness of the mark.

The Office has noted the applicant’s submissions. However, when assessing a mark, the Office must consider it not in strict grammatical terms, but in terms of how it would be perceived by the public at large in relation to the goods and/or services for which protection is sought, and form an opinion of what it conveys.

The sign applied for consists of a combination of a readily identifiable, ordinary and established English expression, namely the term ‘LINEN CLOSET’ with the meaning of ‘another name for linen cupboard; a cupboard for storing sheets, towels, table linen and related items’ (information extracted from Collins English Dictionary on 26/02/2019 at https://www.collinsdictionary.com/dictionary/english/linen-closet and https://www.collinsdictionary.com/dictionary/english/linen-cupboard ). The expression is easily recognisable, and there is no doubt that the relevant English-speaking public will perceive it not as unusual, but rather as a meaningful expression, identifying a catch-all storage space or location for tablecloths, sheets, towels, and other household linen and textiles.

The applicant does not question the meaning of the expression, but argues that it is fanciful and unusual, and that it does not describe the goods for which protection is sought.

However, the applicant’s arguments must be dismissed. The Office stresses that

[i]t is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102)

Therefore, the Office reiterates its opinion, stated in its initial notification of 26/02/2019, that, taken as a whole, and in the context of the goods for which protection is sought, the sign ‘LINEN CLOSET’ immediately informs consumers, without need for further reflection, that the goods at issue all are textile items usually stored in a linen closet, such as sheets, towels, table linen. Therefore, the Office believes the expression ‘LINEN CLOSET’ conveys obvious and direct information regarding the intended location and, given its meaning, also about the kind of the goods in question.

The result is that there is a direct connection between the information conveyed by the sign applied for and the sector to which the goods for which protection is sought relate. That link prevents the sign applied for from functioning as a trade mark, since, based on its inherent meaning, the relevant public will perceive it first and foremost as providing information, rather than as an indication of the commercial origin of the goods.

Therefore, the overall impression created by the mark applied for is not sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed. It cannot be considered that the mark applied for is more than the sum of its parts. Consequently, it is purely descriptive, and the mark must be refused registration pursuant to Article 7(1)(c) EUTMR.

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

It is, therefore, the Office’s view that the sign ‘LINEN CLOSET’ is readily intelligible to the relevant consumer in the context of the goods for which protection is sought. Given that the mark has a clear descriptive meaning in relation to the goods in question, the impact of the mark on the relevant public will be primarily descriptive in nature, therefore removing the possibility that the mark could indicate a trade origin.

In addition, the Office emphasises that the absolute grounds for refusal for lack of distinctive character, and the characteristics of descriptive and usual indications, each have their own scope of application, and they are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is sufficient, they can also be examined cumulatively. It is clear from case-law that a sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

A word mark which 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. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86).

The relevant consumer will readily associate the sign ‘LINEN CLOSET’ with the place or location for storing sheets, towels, table linen and related items. Since the words are relevant to household linen, particularly bed linen and associated bedding, but also bathroom and kitchen linen, this association has a direct connection with the goods specified in the application.

Given the above, and as also stated by the applicant itself, the mark applied for, ‘LINEN CLOSET’, is devoid of any distinctive character and incapable of distinguishing the goods for which protection is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. These goods are textiles and textile goods; bed covers, bed sheets, fitted sheets, flat sheets, valances, pillowcases, cushion covers, duvet covers, bed throws, throws, quilts, mattress covers, pillow covers, pillow protectors, curtains and bedroom curtains, towels. The refusal of the application pursuant to Article 7(1)(b) EUTMR is justified for independent considerations, and not on account of considerations relating to the sign’s descriptive nature.

Therefore, the Office concludes that the sign applied for, as a whole, does not have the capacity to communicate to the relevant consumers that the goods for which it is to be used are those of the applicant, and it cannot serve the basic function of a trade mark.

It follows that the applicant has not succeeded in convincing the Office that the sign applied for, ‘LINEN CLOSET’, will be perceived by consumers as indicating the commercial origin of the goods for which protection is sought. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, the sign ‘LINEN CLOSET’ is not distinctive in relation to the contested goods for which protection is sought, and is therefore unable to function as a trade mark in the marketplace. That is to say, it fails to distinguish the contested goods of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. The applicant has not claimed that the mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

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 18 021 721 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.

Robert KLECUN