Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/06/2019

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	018024218
Your reference:	T50210EU/AS/sc
Trade mark:	RETRO-CLASSIC
Mark type:	Word mark
Applicant:	CantoUSA, LLC 1092 West Atlanta Street, Suite 600 Marietta Georgia 30060 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 19/03/2019 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 16/05/2019, which may be summarised as follows.

1. The mark must be considered as a whole and not separated into its individual elements when the assessment for distinctiveness is made. No definition has been provided for the word “RETRO CLASSIC” as one simply does not exist.

2. The sign “RETRO-CLASSIC” is capable of performing its function as an indicator of origin in the perception of the average consumer because it has no direct meaning in relation to the goods. Moreover, it has an element of distinctive character resulting from its nonsensical meaning in relation to the goods. The mark does not consist of a term which is in use by third parties in the relevant sector and is not a term that should be left free for competitors to legitimately adopt in the promotion of their services. There is no need for a competitor or other undertaking to adopt this term as there is plenty of vocabulary available for an alternative mark. A number of registrations exist as precedents on the EUTM Register for similar type of marks. Therefore, granting registration will not bestow upon the applicant an unjust monopoly.

3. The target public are also consumers of lighting products, used to seeing playful and expressive terms applied to their packaging. There is no doubt that consumers of these products will take the mark “RETRO CLASSIC” as a trade mark.

4. The Applicant, CantoUSA, LLC is also the proprietor of US Application No. 88146709. The mark has been accepted by the USPTO and has been published for opposition purposes.

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)(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).

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

1. The mark must be considered as a whole and not separated into its individual elements when the assessment for distinctiveness is made. No definition has been provided for the word “RETRO CLASSIC” as one simply does not exist.

The sign applied for is made up of a combination of two standard words, which are connected in a grammatically correct way and which contain no unusual variations as regards everyday English. It contains neither specialist terminology, which, in any case would be understood by the relevant specialised public, nor particularly sought-after terms. It does not confer a particular original or striking character that would trigger a cognitive process or an interpretative effort. The relevant English-speaking public will read and understand these words in a straightforward way, namely as associated with or revived from the past and having enduring “classic” appeal. There is nothing fanciful in the perception of the sign in relation to the goods applied for and it does not require further mental steps to come to such a conclusion.

The fact that the sign for which protection is sought consists of two words does not confer distinctiveness on the mark, because the mark will be dissected by the relevant consumers. The use of a hyphen between the words does not alter the meaning of the sign. According to the case law, although consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning of which resemble words known to them. (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Moreover, it is not necessary for the Office to prove that such expression is the subject of a dictionary entry in order to refuse a sign. Joining together the two terms to make a word combination does not result in a new context and also does not amount to more than the sum of its parts.

It should be noted, 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).

2. The sign “RETRO-CLASSIC” is capable of performing its function as an indicator of origin in the perception of the average consumer because it has no direct meaning in relation to the goods. Moreover, it has an element of distinctive character resulting from its nonsensical meaning in relation to the goods. The mark does not consist of a term which is in use by third parties in the relevant sector and is not a term that should be left free for competitors to legitimately adopt in the promotion of their services. There is no need for a competitor or other undertaking to adopt this term as there is plenty of vocabulary available for an alternative mark. A number of registrations exist as precedents on the EUTM Register for similar type of marks. Therefore, granting registration will not bestow upon the applicant an unjust monopoly.

Contrary to the applicant’s assertions, the Office considers that the message expressed by the expression ‘RETRO-CLASSIC’ is plain and it does not constitute a play on words, and contains no imaginative, surprising or unexpected element capable of rendering it distinctive in the mind of the relevant public. On seeing the mark applied for, in relation to the goods for which registration is sought, the relevant consumer will perceive it merely as a promotional laudatory message, the function of which is to communicate that the goods exemplify retro, old-fashioned designs which, through their timeless appeal, are recognised as having become classics.

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

Furthermore, for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark applied for indicates to the consumer characteristics of the services relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services; a word mark of this kind does not become distinctive simply as a result of the fact that it contains no information on the kind of services designated (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198 § 31; and by analogy 07/07/2011, R 238/2011-4, Designed To Do More, § 26). In this respect, it is also irrelevant in the context of distinctive character that the consumer can infer nothing specifically from the sign about whether the relevant services are simply better as regards, for example, quality, performance or value (15/12/2009,T-476/08,Best Buy II, EU:T:2009:508§19; and31/05//2007,R 1628/2006-1, Simply better, § 22).

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

Moreover, ‘the 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 applicant argues that a number of registrations exist as precedents on the EUTM Register for similar type marks. The applicant didn’t provide any example of such similar trade marks. Nevertheless, it should be noted 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).

3. The target public are also consumers of lighting products, used to seeing playful and expressive terms applied to their packaging. There is no doubt that consumers of these products will take the mark “RETRO CLASSIC” as a trade mark.

The Office considers that the degree of attention in relation to the goods will be normal because the goods for which registration is sought are for mass consumption and target the average consumer, who is deemed to be reasonably well informed, observant and circumspect. As already explained the sign ‘RETRO-CLASSIC’ contains no imaginative, surprising or unexpected element capable of rendering it distinctive in the mind of the relevant public. In addition, 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.

Consumers do not tend to carry out complex analyses of indications on goods or in relation to services they are confronted with. Therefore, they will perceive the expression ‘RETRO-CLASSIC’ only as a meaningful term conveying obvious and direct promotional information conveyed, which merely serves to highlight positive aspects of the goods in question, namely that they are designed with a view to imitating and capturing the essence and appeal of a bygone traditional style.

4. The Applicant, CantoUSA, LLC is also the proprietor of US Application No. 88146709. The mark has been accepted by the USPTO and has been published for opposition purposes.

In this respect it must be clarified that each country applies different criteria for the registration of trade marks. The mark for which protection is sought has been assessed on its own merits and according to the European Union Trade Mark Regulations and EUIPO practice and the fact that is registered or enjoys protection in the United States of America does not affect an independent examination. Registrations made in third countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(b) in combination with Article 7(2) EUTMR were met in those countries.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 024 218 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.

Marina TOMIĆ