Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 15/11/2019

J A KEMP SNC

75 Boulevard Haussmann,

F-75008 PARIS

FRANCIA

Application No:	018028324
Your reference:	TM406834EM_JAF/jcw
Trade mark:	ECO-PRODUCTS
Mark type:	Word mark
Applicant:	Eco-Products, PBC 4755 Walnut Street Boulder Colorado 80301 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/04/2019 pursuant to Article 7(1)(b), (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.

After an extension of two months, the applicant submitted its observations on 22/08/2019, which may be summarised as follows:

1. The meaning of the terms ECO and PRODUCTS is not disputed.

2. The Office’s approach appears to be inconsistent as numerous marks (the applicant has listed 24 examples) with the term ECO have been accepted by the EUIPO.

3. The meaning of the term is not relevant to the applicant’s goods and services and is a step removed from them.

4. The distinctiveness of the sign can be seen from the actual use and from the applicant’s website.

The Office notes that amendment of classification of goods and services have been confirmed on 10/09/2019.¹

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.

General remarks

Under Article 7(1)(c) EUTMR, ‘trademarks 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 trademarks 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 trademarks. (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).

Pursuant to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character may not be registered. According to established case-law, the signs referred to in that provision are signs which are 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 goods or services bearing the trade mark 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 (17/01/2013, T-582/11 & T-583/11, Premium XL / Premium L, EU:T:2013:24, § 13; 28/04/2015, T-216/14, EXTRA, EU:T:2015:230, § 14).

Pursuant to Article 7(2) EUTMR, the provisions of Article 7(1) EUTMR are to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The word elements of the sign applied for are common English words, meaning that account must be taken of the point of view of English-speaking consumers, or even consumers who are not English speakers but who have sufficient knowledge of English (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 76).

As regards the arguments of the applicant

As the Office pointed out in the objection letter of 18/04/2019: “the relevant English-speaking consumer would understand the sign as having the following meaning: ecological products (i.e. environmentally friendly products).

The words composing the trade mark are self-explanatory. The use of hyphen would not add any distinctiveness to the sign and would not change the assessment of descriptiveness of the sign in question.

In the present case, the relevant consumers would perceive the sign as providing information that the goods and services in question, such as cutlery, bags, napkins, dinnerware and retail and wholesale services of the related goods, in Classes 8, 16, 21 and 35, are all made of/intended to deliver ecological products, i.e. environmentally friendly/sustainable products, which are not harmful to the environment. Such interpretation is also supported by the established case-law (see judgement of 25/04/2013, T-415/12, ECO PRO, § 29–32).) Therefore, the sign describes the kind, nature, characteristic and intended purpose of the goods and services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.”

The Office notes that the applicant does not question the definitions ofthe words ‘ECO’ and ‘PRODUCTS’ which were given in the Notice of grounds for refusal.,

The Office points out that the actual use of the sign by the applicant cannot be decisive in the examination of the objective criteria laid down in the Article 7(1) EUTMR.

Both words of the sign applied for are ordinary words, which can be found in general dictionaries and their meanings have been confirmed by the case-law (see 25/04/2013, T-415/12, ECO PRO, § 29–32; 31/05/2018, R 1392/2017-1, ECO PARTS; 24/04/2012, T-328/11, EcoPerfect, EU:T:2012:197; 04/07/2019, R1441/2018-5, Ecotec).

The expression as a whole, in relation to the goods and services applied for, would be perceived by the relevant public as providing information that the goods and services in Classes 8, 16, 21 and 35, are all made of/intended to deliver ecological products, which are not harmful to the environment. It is a known fact that the consumers are eco-conscious and that they actively seek out products that are not harmful to the environment, e.g. they choose to buy products made from natural materials rather than plastics. When they see the term eco-products, they would therefore immediately understand that the goods are products made of eco-friendly materials and not e.g. plastics.

Such link between the mark and the objected goods and services is sufficiently direct and specific. The meaning of sign would not be seen as vague, but it directly and clearly refers to the goods and services in question.

There is nothing fanciful about the mark applied for. In fact, when viewed in relation to the goods and services applied for, the relevant public will easily and without further thought pick up on its meaning. No great amount of imagination is required to pick up on the meaning of the mark applied for in relation to the goods and services. Contrary to the applicant’s argument no mental step is needed for the relevant public to arrive to such meaning.

It can be safely assumed that the meaning of the verbal elements composing the sign will be obvious for the relevant public and that the expression ‘ECO-PRODUCTS’ will most certainly be recognised and understood in its common and ordinary meaning as described by the Office and not as the invented sign as claimed by the applicant.

The expression ‘ECO-PRODUCTS’ contains a meaningful, simple and straightforward short English expression, which is not surprising or unexpected, therefore it is not able to distinguish the goods and services in question from the same goods and services delivered by others.

There is nothing about the expression ‘ECO-PRODUCTS’ that might, beyond its obvious informational meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services applied for. The expression is not capable of distinguishing any business undertaking from another one in terms of the commercial origin of the claimed goods and services (30/11/2017, T– 50/17, TO CREATE REALITY, EU:T:2017:855, § 40), especially when it comes to the goods and services applied for.

The Office highlights that, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods and services is relevant to conclude that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article 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 such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Since the applicant claimed that the trade mark sought was distinctive, despite the Office’s analysis based on the abovementioned experience, it was for the applicant to provide specific and substantiated information to show that the trade mark sought had either an intrinsic distinctive character or a distinctive character acquired through use, since he is much better placed to do so, given his thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48). However, the applicant did not submit such information.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to the 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).

Furthermore, the marks cited by the applicant have different meanings from the present sign and are registered for the different goods and services. Also, the Office has refused many marks consisting of the word ECO together with a descriptive word, for instance it recently refused the following signs signs with the incorporated element ECO, which have been filed in the Classes 8, 16, 21 or 35:EUTM No 017945490 - GO!ECO, EUTM No 017932432 – ECOCAP, EUTM No 017904083 ECOPACK, EUTM No 017427832 naturally chic - eco friendly houseware.

The previous registrations have been found to be distinctive in their own right. The mere fact that they consist of the word ‘ECO’ cannot support registrability of the mark at hand.

Conclusion

For the reasons set out above, and in the previous notification, the sign does not possess the necessary distinctive character for the goods and services indicated, pursuant to Article 7(1)(b) and (c) EUTMR in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the market place, i.e. it fails to distinguish the goods and services in question from those of other undertakings.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, this application for European Union trade mark 18 028 324 is hereby rejected for all the goods and services 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.

Jiri JIRSA