Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/11/2019

CMS CAMERON MCKENNA NABARRO OLSWANG POSNIAK I BEJM SP.K.

Emilii Plater 53

00-113 Warsaw

POLONIA

Application No:	018033618
Your reference:	163819.00003
Trade mark:	I VISCOSE
Mark type:	Figurative mark
Applicant:	Asia Fibre Trading Pte. Ltd. 80 Raffles Place, #50-01 UOB Plaza 1 Singapore 048624 SINGAPUR

The Office raised an objection on 04/04/2019 pursuant to Article 7(1)(b) and (g) 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 requested an extension of time to reply to the Office, which was granted. The time limit was extended to 04/08/2019.

On 22/05/2019, the applicant requested an amendment to the list of goods and services. The following goods and services in Classes 22, 23 and 35 to which an objection had been raised have been deleted:

Class 22 Plastic fibers for textile use; vitreous silica fibers for textile use; cotton tow; kapok; flock (silk).

Class 23 Woollen, cotton linen, hemp, silk threads and yarns.

Class 35 Wholesale services in relation to the following plastic fibers for textile use, vitreous silica fibers for textile use, cotton tow, kapok, flock (silk), woollen, cotton linen, hemp, silk threads and yarns.

This amendment overcomes the objection raised under Article 7(1)(g) EUTMR.

On the same day, the applicant submitted its observations on the objection raised under Article 7(1)(b) and Article 7(2) EUTMR, which may be summarised as follows:

1. The graphical depiction of a heart is stylised. It requires some interpretative effort from the consumer. Therefore, the sign has a high degree of distinctiveness.

2. The sign is rather surprising and intriguing. It is unusual to express love towards a type of textile.

3. The Office has already registered similar trade marks composed of the expression ‘I love’ with or without the graphical depiction of a heart.

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) and Article 7(2) EUTMR.

General remarks on Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

In the present case, the mark applied for is composed of the personal pronoun ‘I’ followed by the figurative element and the word ‘viscose’.

1. The applicant first argues that this figurative element is enough to confer distinctive character to the sign.

In this regard, refusals based on Article 7(1)(b) EUTMR may not apply to signs consisting of a non-distinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.

Therefore, the question that the Office must answer is whether the mark is figurative enough to reach the minimum degree of distinctiveness that is required for registration.

It is not disputed that the sequence invokes the concept of love. However, it is disputed that the figurative element at issue would be understood as the verb ‘to love’, in particular because the heart is stylised.

First, concerning the stylisation, the general shape of this element is the symbol generally used to represent a heart. This is a well-known fact, but for illustrative purposes only, some examples are:

(https://en.wikipedia.org/wiki/Heart_(symbol), extracted on 22/11/2019)

(https://sanjaydeol.wordpress.com/2014/12/30/how-heart-became-the-symbol-of-love/, extracted on 22/11/2019).

The applicant does not explain how the figurative element at issue is unusually stylised. The only original element would be the two white lines drawn in the centre and on the right side of the heart. In view of their importance within the figurative element, which is dominant, these lines are of a negligible nature. The figurative element is not very different from the various other depictions of a heart commonly used in commerce, but will simply appear as a variant. Therefore, these lines will not change the public’s perception that the figurative element is essentially a symbol that means ‘to love’.

Second, the depiction of a heart to convey the message of love or passion for someone or something is very common in the market. For illustrative purposes only, some examples are:

(https://www.google.es/search?q=I+love&safe=active&biw=1250&bih=856&source=lnms&tbm=isch&sa=X&ved=0ahUKEwjCi6jbkY_SAhXGxxQKHXkwCgEQ_AUIBigB%20).

Finally, the sign is composed of a sentence that would be grammatically correct if the shape of the heart had not replaced the verb. The only logical meaning that the consumer can give to this heart is the verb ‘to love’. Consequently, the consumer will translate this figurative element directly and effortlessly into the verb ‘to love’.

This position is supported by the Board of Appeal of the Office. The Board considers that the figurative element in the sign will be seen by the majority of the target public as the classic reference to the concept of ‘love’. The sign as a whole means ‘I love Italian coffee’ (15/07/2015, R 2429/2014‑5, ITALIAN COFFEE (FIGURATIVE MARK)).

The Board also considers that the sign will be understood merely as an emotional appeal in the form of a slogan, ‘I like/love Organic’. The use of a heart symbol and of the colours red and light green does not make any contribution to the distinctive character and instead only serves to emphasise this semantic message in the overall impression of the sign (07/05/2014, R 2/2014‑4, BIO).

In the present case, the sign would be understood as having the following meaning: ‘I love viscose’, that is to say, a declaration of love to viscose, a textile material.

2. Contrary to the applicant’s second argument, the sign contains no element of surprise or intrigue. It is grammatically correct and composed of words and a figurative element known to all English-speaking consumers. Even though this type of declaration may be uncommon, its meaning is very clear and requires no effort to be understood. It is a simple declaration of love for a type of textile material. Someone may quite prefer to wear viscose rather than cotton, for example.

The sign is a statement from the producers or the buyers that they love viscose. A supplier that ‘loves viscose’ makes the production of viscose products of high quality the focus of their production method. The slogan therefore only conveys a reference to the product as being of high quality. If the purchaser of the product were to ‘love viscose’, then this would be in connection with the goods in relation to which the slogan is used; a person who ‘loves or likes viscose’ will have a preference for such products when making their purchasing decision. In connection with the marketing of goods made of viscose and services that can sell this kind of goods, the sign applied for merely functions, overall, as a reference to the preferability of goods of viscose. In each case, the slogan is purely laudatory (07/05/2014, R 2/2014‑4, BIO).

Therefore, used in relation to the goods and services for which protection is sought, the sign would simply be perceived as a promotional, laudatory slogan that merely serves to highlight positive aspects of the goods and services in question, namely that it allows showing attachment to viscose, on the understanding that these products are composed of viscose, and that the services are related to viscose (the goods sold are of viscose).

3. Lastly, the applicant points out that the Office has already registered similar marks and refers specifically to the following trade marks: ‘JUICE’ (EUTM No 4 423 786, 28/04/2005) and ‘Fruit Smoothie’ (EUTM No 8 222 085, 25/03/2009).

In reply to this argument, first, 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).

Second, it is also well established that the descriptiveness and distinctiveness of a mark, as required by Article 7(1)(c) and (b) EUTMR, must be assessed in the light of the circumstances of each case. It is also necessary to take into account the perception, knowledge and habits of consumers, which change over time. The notion of distinctiveness is, therefore, necessarily evolving and the practice relating to the registration of trade marks develops over time, which is why the validity of a trade mark is assessed on the day of its filing, specifically for each case, in the light of the sign as filed and the goods and services for which protection is sought.

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

In this regard, many of the figurative trade marks referred to by the applicant (IR No 1 110 261, EUTMs No 4 584 294 and No 9 208 463) were applied for before the publication of the Common Communication on the Common Practice of Distinctiveness – Figurative Marks containing descriptive/non-distinctive words, (https://www.tmdn.org/network/documents/10181/278891cf6e4a-41ad-b8d8-1e0795c47cb1), which has modified the practice of the Office regarding this type of mark.

Many of the other cases are also old marks (EUTMs No 08 190 431, No 9 076 118 and No 9 426 181). In particular, while the sign ‘I love sushi’ was registered for services related to food in 2004 (EUTM No 4 150 025), it was refused for food itself in 2016 (EUTM No 16 076 051). The sign ‘I love bio’ was accepted in 2010 for foods in Classes 29, 30 and 32 (EUTM No 8 404 618), but the sign was refused for foods in Class 31 and related services in Classes 35 and 44 in 2013 (EUTM No 11 830 205). This decision was confirmed by the Board of Appeal of the Office (07/05/2014, R 2/2014‑4, BIO).

Furthermore, even if the marks referred to by the applicant were identical to the mark applied for, 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 7(2) EUTMR, the application for European Union trade mark No 18 033 618 is hereby rejected for the following goods and services:

Class 22 Raw fibrous textile; fibers (textile); carbon fibers for textile use.

Class 23 Textile yarn; threads; yarn; rayon thread and yarns; twisted threads and yarns; threads and yarns; artificial linen and yarn; textile filaments [threads]; filaments threads and yarns; sewing thread and yarn.

Class 24 Fabrics; woven fabric; knitted elastic fabric for underwear towelling material; towels of textiles; non-woven fabric; cloths; sheets (textile); bed sheets and pillowcases; textile fabrics for home interiors; fabrics used in home decorative items; quilt covers; bed covers; sleeping bags; bed linen; fleece made of polypropylene, copolymers or polyester.

Class 25 Children’s clothing; smocks; bodices (lingerie); suspenders; braces (suspenders); shirts; clothing; suits; ready-made clothing; pants; trousers; outer clothing; knitwear; underpants; uniforms; women’s underwear; baby pants (clothing); babies’ clothing; socks; scarves; camisoles; pyjamas; lingerie; nightwear.

Class 35 Wholesale services in relation to the following raw fibrous textile, fibers (textile), carbon fibers for textile use, textile yarn, threads, yarn, Rayon thread and yarns, twisted threads and yarns, threads and yarns, artificial linen and yarn, textile filaments [threads], filaments threads and yarns, sewing thread and yarn; wholesale services in relation to the following fabrics, woven fabric, knitted elastic fabric for underwear towelling material, towels of textiles, non-woven fabric, cloths, sheets (textile), bed sheets and pillowcases, textile fabrics for home interiors, fabrics used in home decorative items, quilt covers, bed covers, sleeping bags, bed linen, fleece made of polypropylene, copolymers or polyester; wholesale services in relation to the following children’s clothing, smocks, bodices (lingerie), suspenders, braces (suspenders), shirts, clothing, suits, ready-made clothing, pants, trousers, outer clothing, knitwear, underpants, uniforms, women’s underwear, baby pants (clothing), babies’ clothing, socks, scarves, camisoles, pyjamas, lingerie and nightwear.

The application may proceed for the remaining services.

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.

Brice LAUGIER