Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/05/2020

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	018033500
Your reference:	TMU/GRR/6213231
Trade mark:	SENSITIVE MINERAL ACTIVE
Mark type:	Word mark
Applicant:	Unilever N.V. Weena 455 NL-3013 AL Rotterdam PAÍSES BAJOS

The Office raised an objection on 28/03/2019 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.

An extension of the deadline for reply of 2 months was granted on 23/05/2020 until 28/07/2019.

The applicant submitted its observations on 26/07/2020, which may be summarised as follows.

1. The relevant consumer has a high degree of attention.

2. The Office's notification focused its analysis of the sign on the first element, i.e. SENSITIVE, and did not consider the other two elements. The word SENSITIVE is not descriptive of the quality or intended purpose (or any other characteristics) of the goods in classes 3.

3. The mark as a whole goes beyond a mere assessment of its constituent parts:

• The mark as a whole, has no meaning, as it does not conform to English grammar rules and is a syntactically unusual juxtaposition of words, which makes the mark inherently registerable.

• It does not appear in dictionaries.

• It is not use on Internet in relation to tooth care products or dentistry.

The sign is thus unusual, visually striking and thereby immediately recognisable as an indication of origin of the goods applied for and offered by the applicant.

4. As the objection under Article 7(1)(b) is based exclusively on the basis that the mark is descriptive, if the objection under 7(1)(c) is deemed not properly established as a result of our submissions above, the mark should equally be deemed not to be properly established under 7(1)(b).

5. Several similar mark had already register by the Office.

On 15/01/2020 the applicant specified that it did not wish to invoke a claim under Article 7(3).

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 on Article 7(1)(c) EUTMR

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 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 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).

Remarks on the applicant’s argument

1. Concerning the relevant public, the Office maintains that the relevant public is composed of the average consumer, reasonably well-informed and reasonably observant and circumspect.

As regards the goods for which the protection is sought, it must be held that they are everyday consumer goods aimed at the general public, generally inexpensive. Therefore, the level of attention of the relevant public would be average. This position is confirmed by the judgment of the general court quoted by the Applicant (16/12/2015, T 356/14, Kerashot / K KERASOL, EU:T:2015:978, §23 -26).

Even if the attention of the consumer concerned would be high, this does not necessarily mean that a weaker distinctiveness of a sign is sufficient.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist.

(12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Since the mark ‘SENSITIVE MINERAL ACTIVE’ consists of English words, the relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking consumer in the European Union (22/06/1999,

C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T 348/02, ‘Quick’, EU:T:2003:318, § 30).

Accordingly, it must be considered whether, from the viewpoint of that public, there is a sufficiently direct and specific relationship between the sign ‘SENSITIVE MINERAL ACTIVE’ and the services in respect of which registration is sought.

2. The Office disagrees with the Applicant's assertion that in its notification it insisted only on the term 'sensitive' and did not take into account the other two elements. The Office justified the meaning of each of the terms used in the sign by a dictionary definition as follows:

‘SENSITIVE’ ‘Something that is sensitive to a physical force, substance, or treatment is easily affected by it and often harmed by it’ (information extracted from the online dictionary ‘Collins’ on 28/03/2019 at https://www.collinsdictionary.com/dictionary/english/sensitive).

‘MINERAL’ ‘of, relating to, containing, or resembling minerals’ (information extracted from the online dictionary ‘Collins’ on 28/03/2019 at https://www.collinsdictionary.com/dictionary/english/mineral).

‘ACTIVE’ ‘An active substance has a chemical or biological effect on things’ (information extracted from the online dictionary ‘Collins’ on 28/03/2019 at https://www.collinsdictionary.com/dictionary/english/active).

From these definitions, the terms mineral and active are descriptive, without the need to add other elements to support this fact.

The term ‘Mineral’ informs the relevant public that the products contain minerals. The term ‘active’ indicates that the goods are active, i.e. have a biological or chemical effect.

Furthermore, the notification adds evidence that the term 'sensitive' is commonly used, without respecting grammatical rules, to designate a characteristic of toothpastes, namely that they are intended for sensitive teeth. Therefore, this term is also descriptive of a characteristic of toothpastes, namely their intended purpose.

3. As indicated by the applicant,

the assessment of the distinctive character of a compound trade mark, cannot be limited to an evaluation of each of its words or components, considered in isolation, but must, on any view, be based on the overall perception of that mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character.

(08/05/2008, C 304/06 P, Eurohypo, EU:C:2008:261, §41)

Nevertheless, a mere combination of elements, each of which is descriptive of characteristics of the goods or services themselves, remains descriptive of those characteristics. Merely bringing those elements together without introducing unusual variations, in particular as to syntax or meaning, cannot result in anything other than a descriptive sign (16/09/2004, C–329/02 P, SAT.2, EU:C:2004:532, §34).

However, if due to the unusual nature of the combination in relation to the goods or services, a combination creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, that combination will be considered more than the sum of its parts (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39, 43).

In this respect, the sign as a whole does not confer on the sign a particular meaning that would exceed the individual meaning of each term. The sign is the simple juxtaposition of three independent characteristics.

The fact that these elements constituting the sign are simply juxtaposed without respecting English grammar is not sufficient to make this sign a lexical invention liable to give it a distinctive character (03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 32).

In the world of advertising, definite articles and pronouns (the, it, etc.), conjunctions (or, and, etc.) or prepositions (of, for, etc.) are frequently omitted. This means that a lack of these grammatical elements will not be sufficient to make the mark distinctive.

As shown by the examples of toothpastes cited in the notification, the consumer is familiar with the lists of characteristics indicated without articles:

• on the second packaging (Aquafresh), the terms 'maximum strength, sensitive', are associated without articles.

• The third example (Oral-B) presents also a list of characteristics without any link: ‘cavities, gum, plate, sensitivity, tartar, whitening...’.

The three terms composing the sign do not describe characteristics whose association would be intriguing or surprising. Therefore, there is no elements of conceptual intrigue or surprise, so that the sign may be perceived as imaginative, surprising or unexpected, triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

The sign appears as a simple list of 3 characteristics of the goods for which the protection is sought.

In this respect, as the trademark consists of three independent terms, it is therefore normal that this list does not appear in dictionaries.

Moreover, 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).

Likewise, the fact that the sign is not used on the Internet in connection with care products is irrelevant. ‘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 service 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).

For the abovementioned reasons, the Office maintains that the relevant consumers would perceive the sign as providing information that are intended for people with sensitive teeth, contain minerals and have active properties, for example, a toothpaste containing minerals having an active effect on the sensitivity of the teeth.

Therefore, the sign describes the intended purpose, (sensitive teeth), ingredients (mineral elements) and the quality (active) of the goods in question.

4. 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 (12/06/2007, T 190/05, Twist & Pour, EU: T: 2007: 171, § 39).

5. About the holder’s argument that a number of similar registrations have been accepted by the EUIPO, 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 also well established that the perception, knowledge and habits of consumers change over time. The notion of distinctiveness is therefore necessarily evolutionary and the Office’s practice develops over time, which is why the validity of a mark is assessed on the day of filing, concretely and for each individual case in light of the sign and the goods and services for which protection is sought.

It is therefore inevitable that trade marks which could today be considered to be devoid of distinctive character could have been registered at the date of their application on the basis of the knowledge of the public concerned and the practices in force in the relevant market at the time.

In this regard, the Office emphasises that the majority of the trade marks to which the holder refers are really old trademark.

Moreover, a large proportion of these marks have not been registered for dental care products, but for cosmetics, perfumes and soaps (for example, EUTM No.0077526049 MINERAL SENSITIVE, EUTM No. 03477767 ALL SENSITIVE…).

Some of them are composed of arbitrary, or only allusive terms (for examples, EUTM No 03075851Aqua sensitive).

Several of the combinations cited also form expressions which have a meaning of their own but which, unlike the case in point, have no connection with the products being designed (for example EUTM No 007435431 HERBAL SENSITIVE, EUTM No. 12309075 SENSITIVE BEAUTY, IR No. 1116667 YOUTH MINERALS).

Clearly, there is no identity or similarity of situation between the mark ‘SENSITIVE MINERAL ACTIVE’ and those registered marks.

Furthermore, the principle of legality of administration requires that the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

As a result, the Office does not find any of the registrations cited persuasive.

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 W 14 81 638 is hereby rejected for all the goods claimed.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 for 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.

Brice LAUGIER