Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/08/2019

PATRADE A/S

Ceresbyen 75

DK-8000 Aarhus C

DINAMARCA

Application No:	018036122
Your reference:	V15306EU00
Trade mark:	TEALOVERS <w>
Mark type:	Word mark
Applicant:	Lin Holding ApS Lindholmvej 8, 3. th. DK-8200 Aarhus N DINAMARCA

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 17/04/2019, which may be summarised as follows.

1. The mark is not descriptive, but distinctive.

2. The Office has previously accepted marks ending with ‘lovers’.

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.

Descriptiveness and distinctiveness

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 that 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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The applicant agreed with the lexical meaning of the individual words making up the mark, but disagreed that the mark defines the target consumers; ‘tea lovers’ are not a defined group of people.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The Office does not consider the combination of ‘tea’ and ‘lovers’ to be more than a sum of its parts. The combination is grammatically correct and

the juxtaposition of two common words by simply withdrawing the space or hyphen which would normally separate them in the written language, does not necessarily give rise to an invented word which is fanciful and arbitrary. The sign is indeed tantamount to ‘a clean feel’ juxtaposing ‘clean’ and ‘feel’, even in a grammatically correct construction does not render the sign distinctive, since each of the words combined maintains its own separate meaning and spelling and they do not unite to create a new word with a new and unexpected significance. On the contrary, each word remains the same and their meaning remains invariable in this case.

(18/07/2008, R 1198/2006-4, CLEANFEEL, § 12).

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.

The phrase ‘other characteristics of the goods or services’ indicates that the preceding list of items in Article 7(1)(c) is not exhaustive. In principle, any characteristic of the goods and services must lead to a refusal under Article 7(1)(c) EUTMR. This includes the identification of the targeted consumer, for example: ‘children’ for bread (18/03/2016, T‑33/15, BIMBO, EU:T:2016:159) or ‘ellos’ (27/02/2002, T‑219/00, Ellos, EU:T:2002:44) for clothing.

The Office maintains that ‘tealovers’ would merely be perceived as information that the goods and services are intended for people who love the beverage tea. Hence, a defined group of people, namely tea enthusiasts. Tea enthusiasts are interested in quality tea and ideal brewing methods. Therefore, the relevant consumers would perceive the goods to be quality tea and tea-related accessories for optimal storage and brewing, as well as an online magazine service appealing to ‘tealovers’. Contrary to the applicant’s arguments, the Office considers ‘tealovers’ to define the target consumers of the goods and services.

Previously registered marks

As regards the applicant’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 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).

The applicant highlighted a list of trade marks ending with the word ‘lovers’ that have previously been accepted by the Office. Although the applicant argued that these marks represent new case law and practice for marks containing the word ‘lovers’, the latest registered mark on the list, namely, EUTM No 14 988 182 ‘Led lovers’, was registered in 2016 and since then the Office has changed the practice with regard to marks ending with ‘lovers’.

This is confirmed by the following trade marks that have been refused registration:

• EUTM No 18 024 723 ‘Turkey lovers’ (fig) refused among others for meat, prerendered meals with meat and the sale hereof in Classes 29 and 35.

• EUTM No 17 912 334 ‘TV Lovers’ refused for services related to TV and entertainment in Class 41.

• EUTM No 17 146 093 ‘food lovers’ refused for food in Class 29.

• EUTM No 017 066 631 ‘veggielovers’ refused for restaurant services in Class 43.

• EUTM No 15 609 241 ‘for music lovers’ refused for a range of audio or other related electronic equipment, material and accessories particularly intended for audiophiles or melomaniacs in Class 41.

• EUTM No 15 609 274 ‘for & by Music Lovers’ refused for a range of audio or other related electronic equipment, material and accessories particularly intended for audiophiles or melomaniacs in Class 41.

Therefore, the Office considers the current objection to be in accordance with current practice.

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 18 036 122 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.

Anja Pernille LIGUNA