Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/07/2019

A2 ESTUDIO LEGAL

C/ Alcalá 143, 3º Derecha.

E-28009 Madrid

ESPAÑA

Application No:	018024319
Your reference:	5234
Trade mark:	Bamboo
Mark type:	Word mark
Applicant:	History & Heraldry Ltd. 5 Denby Way, Hellaby Industrial Estate Rotherham S66 8HR REINO UNIDO

The Office raised an objection on 10/04/2019 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 22/05/2019, which may be summarised as follows:

1. The mark is not descriptive, but distinctive.

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.

Descriptiveness

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).

‘The 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).

The applicant argued that ‘BAMBOO’ is not descriptive for the goods, for which registration is sought, as ‘BAMBOO’ is not a synonym for candle nor is it a usual word to use in relation to candles. To be used as a modifier in the sense of ‘made of’, the word has to be followed by a noun, which it not the case. The link between the mark and the goods is weak and unspecific.

The Office disagrees. First, the Office has not stated that ‘Bamboo’ is a synonym for ‘candle’, but that it describes a material, the appearance or the fragrance of the candles.

With regard to the applicant’s argument that ‘Bamboo’ has to be followed by a noun in order to be used as a modifier and hence have a descriptive meaning, the goods, in this case candles, substitute the missing noun.

When encountering ‘Bamboo’ on candles it is evident that it refers to a characteristic of the candles, namely that the candles are made in pieces of bamboo sticks, look like bamboo or smell like bamboo. The relevant consumers would not perceive it as an indication of commercial origin.

Furthermore, the applicant argued, with reference to 16/09/2009, T‑180/07, Madridexporta, EU:T:2009:334, § 26, that ‘bamboo’ is not a common term used to refer to candles.

The 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. Furthermore, a mark composed of signs or indications satisfying that definition should not be refused registration unless it comprises no other signs or indications, and in addition, the purely descriptive signs or indications of which it is composed are not presented or configured in a manner that distinguishes the resultant whole from the usual way of designating the goods or services concerned or their essential characteristics.

(20/09/2001, C‑383/99 P, BABY-DRY, EU:C:2001:461, § 39, emphasis added).

The mark in question only consists of the word ‘Bamboo’, which as a whole describes a characteristic of the goods. There are no additional elements that add distinctiveness to the applicant’s mark, for example, an unusual word combination, which was the case in 20/09/2001, C‑383/99 P, BABY-DRY, EU:C:2001:461.

With regard to the applicant’s reference to 30/05/2005, R 173/2005‑2, POLYTECH, § 14 and 15, candles are average goods and are targeted at average consumers who are reasonably observant and circumspect. ‘Bamboo’ is a common word used in relation to many everyday goods. ‘Bamboo’ would not be perceived as a vague reference to the characteristics of the goods, on the contrary it would be immediately clear for the relevant consumer that the candles are made in pieces of bamboo sticks, look like bamboo or smell like bamboo. The relevant consumers would not perceive the mark as an indication of commercial origin.

Contrary to the applicant’s arguments, there is therefore a sufficiently direct and specific link between the mark and the goods, for which registration is sought, to maintain the objection.

Further proceedings

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 18 024 319 is hereby rejected.

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