Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/07/2019

PLOUGMANN VINGTOFT A/S

Strandvejen 70

DK-2900 Hellerup

DINAMARCA

Application No:	018024302
Your reference:	T67641EU01
Trade mark:	EASE
Mark type:	Word mark
Applicant:	TS BRANDCO INC. 70 Stafford St, 3rd Floor Toronto Ontario M6K 2S1 CANADÁ

The Office raised an objection on 20/03/2019 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 06/05/2019, which may be summarised as follows:

1. The mark ‘EASE’ is distinctive.

2. Both national offices and the Office have previously registered similar marks.

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.

Distinctiveness

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).

The applicant argued that the word ‘EASE’ has several meanings, and at most would be suggestive in relation to medical marijuana in Class 5 and dried marijuana; dried cannabis; recreational cannabis and marijuana in Class 34. ‘EASE’ does not directly describe the intended purpose or desired effect of the goods.

The Office did not argue that the mark is descriptive of the goods for which registration is sought, but that the mark would not be perceived as an indication of commercial origin.

The fact that the sign at issue can have several meanings, that it can be a play on words and can be perceived as ironic, surprising or 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 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).

It is sufficient for a sign to be refused registration if at least one of its possible meanings designates characteristics of the goods or services concerned. The Office considers that the sign in question has a clear meaning in the mind of the relevant English-speaking consumer. The expression ‘EASE’ would not be perceived by the relevant consumer as an indication of commercial origin, but rather as a reference to a desired effect of the goods; namely that they relieve pain and/or give a feeling of relaxation. The Office, therefore, does not find the mark unique, nor is it able to function as a badge of origin.

Previously registered similar marks

1. By national offices

As regards the national decisions referred to by the applicant, 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).

References to national registrations conferred by Member States that do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

Furthermore, the previous marks were registered for different goods and services to those of the applicant.

2. By the Office

As regards the applicant’s argument that a number of similar registrations have been accepted by the Office, 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; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

With regard to the applicant’s argument that the Office has had a somewhat mixed approach to marks consisting of the word ‘EASE’; the Office assesses marks on a case-by-case basis, in relation to the goods or services for which protection is sought and the perception of the relevant consumers of those goods or services. In the registrations highlighted by the applicant, the Office found that ‘EASE’ was sufficiently distinctive in relation to the goods and services, for which protection was sought.

In addition, 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).

In conclusion, having taken previous practice into consideration, the Office does not find the mark ‘EASE’ sufficiently distinctive to function as a trade mark, for the goods for which protection is sought.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 024 302 is hereby rejected for the following goods and services:

Class 5: Medical marijuana.

Class 34: Dried marijuana; dried cannabis; recreational cannabis and marijuana.

The application may proceed for the remaining goods and services, namely:

Class 41: Educational and entertainment events.

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.

Anja Pernille LIGUNA