Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 31/07/2019

Nasula Oy

Jukka Niiranen

Junttolantie 293 as. 1

FI-54530 Luumäki

FINLANDIA

Application No:	018024104
Your reference:
Trade mark:	Grill Chef
Mark type:	Word mark
Applicant:	Nasula Oy Junttolantie 293 as. 1 FI-54530 Luumäki FINLANDIA

1. Summary of the facts

The Office raised an objection on 06/03/2019 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.

2. Observations of the applicant

The applicant submitted its observations on 10/05/2019, which may be summarised as follows.

The Office has already accepted a very similar trade mark, namely EUTM No 10 403 962, ‘GRILLCHEF’ for various goods. In order to respect the principle of equal treatment, the Office should also accept the mark applied for.

An identical trade mark ‘GRILL CHEF’, has been previously accepted by the Italian Trade Mark Registry for various goods. The owner of this trade mark is Fraschetti Spa. In order to ensure free and unrestricted competition within the European Union, the mark applied for should also be accepted.

3. Decision

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 his comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Article 7 EUTMR, entitled ‘absolute grounds for refusal’, provides that registration can not take place for, inter alia, trade marks that are devoid of any distinctive character, and trade marks that consist exclusively of signs or indications that 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. This applies notwithstanding that the grounds of non-registrability are obtained in only part of the Union.

The signs referred to in Article 7(1)(c) EUTMR are signs regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the product or service to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑219/00, Ellos, EU:T:2002:44, § 28).

According to settled case-law, the descriptiveness and distinctiveness of a trade mark must be appraised by looking at the mark as a whole and by having regard to the way that it is likely to be perceived by potential consumers of the goods or services at issue (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 27). However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

For a sign to fall under the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned to perceive immediately, without further thought, a description of the goods and services in question or one of their characteristics (03/12/2003, T‑16/02, TDI, EU:T:2003:327, § 29). As regards the requirement for a ‘sufficiently direct and specific link between the sign and the goods or services in question’, the Court has emphasised that in order to be descriptive, it is not necessary for the sign to directly describe the goods or services in question; a close link between the sign and the goods or services may be sufficient (25/09/2015, T‑591/14, PerfectRoast, EU:T:2015:700, § 25-26).

Despite the applicant’s observations, the Office still considers that the sign ‘Grill Chef’, taken as a whole, is descriptive of the services in Class 43 for which protection is sought, because the relevant consumers would perceive the sign as providing information that the services are rendered (and related food is prepared and served) by a principal cook who is specialised in and responsible for grilled food. From the point of view of the relevant public, there is a sufficiently direct and specific link between the mark ‘Grill Chef’ and the services for which protection is sought to enable the relevant public to perceive the mark immediately as a description of the services or as one of their characteristics. Therefore, in the absence of prior knowledge, the relevant public would not assume that the sign is an indicator of trade origin. Given that the mark has a clear descriptive meaning it is also devoid of any distinctive character.

Furthermore, despite the applicant’s observations, the Office also considers that the mark, taken as a whole, is devoid of any distinctive character for the goods for which protection in sought in Classes 29 and 30. The mark would simply be perceived by the relevant public as a promotional laudatory slogan, the function of which is to communicate a value statement and an inspirational or motivational statement persuading consumers to buy the goods sold under the mark. The relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that the goods, due to their excellence would be the choice of a principal cook specialised in and responsible for grilled food in a restaurant and/or that using the products concerned will guarantee a professional, grill-chef level meal/result at home.

The Office has taken into account the earlier EU trade mark registration and the Italian trade mark registration cited by the applicant. However, these do not change the outcome reached by the Office even though EUTM No 10 403 962 concerns an almost identical word mark ‘GRILLCHEF’ and the Italian trade mark registration concerns an identical trade mark ‘GRILL CHEF’. The Office would like to point out however that the goods covered by these registrations are not the same goods and services for which protection is sought in the present case, and therefore they are not fully comparable. In addition, the Office would like to point out that assessing distinctiveness is not an exact science. According to settled case-law, while the Office must strive for a coherent practice in assessing signs with respect to absolute grounds for refusal, 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 or a decision handed down in a Member State (09/10/2002, T-36/01, Glass Pattern, EU:T:2002:245, § 35). Furthermore, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. The mere fact that in other cases relating to other trade marks, a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by the EU judicature.

The Office is, as the applicant correctly implied, under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73). However, the Court also stated that:

In the light of those two principles, [the Office] must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not (see, by analogy, with regard to Article 3(1)(b) and (c) of Directive 89/104, order of 12 February 2009 in Joined Cases C‑39/08 and C-43/08 Bild digital and ZVS, summary published at ECR I‑20, paragraph 17).

That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality.

Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (see, to that effect, order in Bild digital and ZVS, paragraph 18).

Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (OHIM v Erpo Möbelwerk, paragraph 45, and OHIM v BORCO-Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which 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 (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

(10/03/2011, C- 51/10 P, 1000, EU:C:2011:139, § 74-77)

According to case-law, the considerations stated above apply even if the sign for which registration is sought as a European Union trade mark is composed in a manner identical to that of a mark for which the Office already approved registration as an EU trade mark and which refers to goods or services identical or similar to those for which registration of the sign in question is sought (12/12/2013, C-70/13 P, PHOTOS.COM, EU:C:2013:875, § 45).

It has been established that the absolute grounds for refusal stated in Article 7(1)(b) and (c) and Article 7(2) EUTMR are applicable to the mark applied for, ‘Grill Chef’, in relation to the services for which protection is sought and that the absolute grounds for refusal stated in Article 7(1)(b) EUTMR and Article 7(2) EUTMR are applicable in relation to the goods for which protection is sought. Therefore, the mark applied for in relation to the goods and services for which protection is sought is incompatible with the EUTMR and the applicant cannot reasonably rely on the Office’s earlier decision.

The applicant submits that registering the mark applied for would ensure free and unrestricted competition within the European Union. The Office does not share the applicant’s view. It is true that a registered EU trade mark confers on its proprietor an exclusive right - for an unlimited period - to use the sign in relation to the goods and services for which the mark is registered. However, as stated above Article 7 EUTMR, entitled ‘absolute grounds for refusal’, provides that registration cannot take place for, inter alia, trade marks that are devoid of any distinctive character, and trade marks that are descriptive. This applies notwithstanding that the grounds of non-registrability are obtained in only part of the Union.

According to settled case-law, 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).

The notion of general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which 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.

(15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60)

The public interest underlying Article 7(1)(c) EUTMR is to ensure that signs which are descriptive of one or more characteristics of the 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).

It is not necessary for the Office to show that there is, on the part of third parties, a present or future need to use, or concrete interest in using, the descriptive term applied for.

(04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 61)

Therefore, refusing a registration pursuant to Article 7(1) EUTMR cannot be regarded as constituting an obstacle to free competition. On the contrary, the role of the Office in examining and verifying that a trade mark applied for complies with the EUTMR and related case law, serves rather to guarantee undistorted and fair competition than to restrict competition.

For the abovementioned reasons, the application for European Union trade mark No 18 024 104 is hereby rejected, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR for all the services claimed in Class 43 and, pursuant to Article 7(1)(b) and Article 7(2) EUTM for all the goods claimed in Class 29 and Class 30.

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.

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a European Union trade mark (Article 7 and Article 42(2) EUTMR), 06/03/2019, 5 pages