Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/11/2019

EUROCHINA INTELLECTUAL PROPERTY

Calle San Mateo, 65 - Local 1 "Llopis & Asociados".

E-03012 Alicante

ESPAÑA

Application No:	018041803
Your reference:	1952/2019
Trade mark:	Comfy4U
Mark type:	Figurative mark
Applicant:	XILINMEN FURNITURE CO., LTD. NO.1 Erhuan North Road, Lingzhi Town, Yuecheng District Shaoxing, Zhejiang 312001 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 20/05/2019 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 12/07/2019, which may be summarised as follows.

1. The applicant limits its application to the following goods "Furniture, except that intended to provide seating espace; Cribs for babies; Bedsteads of wood; Divans; Bed bases; Footstools; Bedding, except linen; Head-rests [furniture]".

2. Limited goods are not intended for providing comfort but safety, harmony, firmness, simplicity and practicality.

As regards the limitation of the list of goods and services

On 06/08/2019, the Office partially accepted the limitation of the list of goods and services. Due to the limitation, the following goods were removed from the list of goods and services:

Class 20 Sofas; Beds; Mattresses; Pillows; Benches [furniture]; Stools; Cushions.

As regards the following restriction in Class 20 “Furniture, except that intended to provide seating espace”, the Office did not accept the limitation. The Office noted that the limitation proposed by the applicant was not sufficiently clear and precise. A list of goods and services should still be clear and precise after a restriction in order to comply with the requirements of Article 33 EUTMR, and must not go against legal certainty. By means of an example, the Office noted that multifunctional furniture exists and they could be used also for sitting purposes and that the Office finds the limitation overall unclear.

Following the above, the list of goods and services now reads as follows:

Class 20 Furniture; Cribs for babies; Bedsteads of wood; Divans; Bed bases; Footstools; Bedding, except linen; Head-rests [furniture].

Furthermore, the Office pointed out that neither the accepted part of the limitation nor the rejected part of the limitation would help the applicant to overcome the raised objection pursuant to Article 7(1)(b), (c) and 7(2) EUTMR, as all of the goods of the application have been objected to because they provide personalised conformity or are tailored to the specific needs of the consumers in order to be comfortable or are otherwise designed to be comfortable for the consumers, thus not only because they provide a seating option.

The applicant was given an extension of the time limit of two months to reply as requested by the applicant in the letter of 12/07/2019. However, no further observations were sent by the applicant within the new time limit.

As regards absolute grounds for refusal

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)(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).

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

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).

It should also be recalled that pursuant to Article 7(2) EUTMR a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an obstacle pertaining to one of the territories of the European Union is deemed to be sufficient in order to reject a trade mark application.

As regards the applicant’s argument that the limited goods are not intended for providing comfort but safety, harmony, firmness, simplicity and practicality, the Office notes that in the letter of objection, the Office stated that the term ‘COMFY’ refers to comfortable as demonstrated in the below Oxford Dictionary extract provided by the Office.

As regards the term ‘4U’, the Office noted that the term ‘4U’ is commonly used abbreviation standing for the phrase ‘for you’, widely used in the marketing of goods and services in order to indicate that the goods and services were personalised for the consumers or tailored to their specific needs. This has been confirmed in the practice of the Office. For the sake of demonstration, please see the following decisions of the Boards of Appeal: 19/12/2017, R 1610/2017-4, 4U and 09/10/2017, R 157/2017-2, TruckMobility4U.

In the present case, the Office is of the opinion that the relevant consumers would perceive the sign as providing information that the goods in question e.g. provide personalised conformity or are tailored to the specific needs of the consumers in order to be comfortable or are otherwise designed to be comfortable for the consumers. Therefore, the relevant consumer, notwithstanding certain stylised elements consisting of stylised black typeface, would perceive the sign as providing information about the quality of the goods in question.

The goods objected to, namely Furniture; Cribs for babies; Bedsteads of wood; Divans; Bed bases; Footstools; Bedding, except linen; Head-rests [furniture] can all be personalised for conformity or are tailored to the specific needs of the consumers in order to be comfortable or are otherwise designed to be comfortable for the consumers.

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 18 041 803 is hereby rejected for all the goods 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.

Päivi Emilia LEINO