Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/10/2019

LIDERMARK PATENTES Y MARCAS

Isidro Jose Garcia Egea

Calle Obispo Frutos, 1B 2°A

E-30003 Murcia

ESPAÑA

Application No:	018042906
Your reference:	TMS/TM/9981/WALNUT
Trade mark:	WALNUT
Mark type:	Figurative mark
Applicant:	Shenzhen Yujunwang Technology Co., Ltd. 4F, No. 5, Hangkong Road, Sanwei Community, Xixiang Street, Bao'an District, Shenzhen, Guangdong REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 23/04/2019 that was broadened in another objection on 21/06/2019 pursuant to Article 7(1) (b) and (c) and Article 7(2) EUTMR because the Office found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letters, which form an integral part of this decision.

The Office stated in the letter of objection of 23/04/2019 that the sign would provide information that the objected jewelry boxes; watch cases [parts of watches], are made of wood from a walnut tree.

The applicant submitted its observations on 07/06/2019, which may be summarized

as follows.

1. A minimum degree of distinctive character is sufficient for a mark to be registrable.

2. The mark must be assessed as a whole by focusing on the overall impression it creates. When the mark is considered as a whole, it constitutes an abstract term which is not directly descriptive for the goods and does not have an unequivocal meaning.

3. The design of the figurative mark carries an inspiration from the designer and the connotation meaning of the goodwill from the producer, indicating that the

products sold by the applicant possess the quality like walnut, dignified, noble and distinguished.

4. The applicant is willing to delete Jewelry boxes; watch cases [parts of watches] from the list of goods and services so that the mark is registrable.

5. Although the term ‘WALNUT’ indicates a material to make jewelry boxes and watch cases, the Office has not provided any evidence in support that the consumers would perceive the sign as such. The goods in question can be made of many different materials.

6. The applicant reserves the right to submit further observations and evidence in support of the application in the circumstances the objection is maintained.

On 21/06/2019 the Office replied to the observations of the applicant and broadened the scope of the objection as the relevant consumers would perceive the mark as providing information that also Jewelry; wristwatches; watch bands; watch hands; clocks and watches, electric in the list of goods and services of the application are made of walnut tree wood or otherwise contain parts made of such wood.

As regards the applicant’s argument that a minimum level of distinctiveness is sufficient for a mark to be registered, the Office stated that while it is true that signs with low degree of distinctive character are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because the distinctive character means that the trade mark guarantees the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (15/09/2005, C-37/03, ‘BioID’, ECLI:EU:C:2005:547).

Furthermore, the Office noted that in the present case, the Office had objected the mark on the basis of Article 7(1) (b), (c) and 7(2) EUTMR as the mark describes certain characteristics of the goods applied for, and the mark applied for is thus also devoid of any distinctive character.

The Office agreed with the applicant that the assessment of descriptiveness needs to be based on how the relevant consumer perceives the sign as a whole in relation to the goods and/or services for which the protection is sought. Contrary to the applicant’s claim, the Office had assessed the mark, consisting of the single term ‘WALNUT’ written in a simple black typeface, as a whole. The Office noted that the stylisation of the black typeface is of such a simple nature that it does not affect the aforementioned assessment of the single word element (12/05/2016, T-32/15, MARK1 (fig.), EU:T:2016:287, § 43; 11/07/2012, T-559/10, Natural beauty, EU:T:2012:362, § 25 to 27). Indeed, the Office stated that the nature of the figurative elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the goods for which protection is sought.

In so far as the proposed limitation of the application was concerned, the Office noted that the applicant may restrict the list of goods and services of its EUTM application at any time in reply to an objection regarding absolute grounds (Article 49 EUTMR). However, the limitation must be unconditional and cannot be made on condition that the Office accepts the application for the remaining goods and/or services.

In the present case, the Office noted that the applicant stated that he was willing to delete the terms so that the trademark could be registered. As the Office had decided to broaden the objection to cover also the above-mentioned additional goods in class 14, the limitation would not help the applicant to overcome the raised objection for other objected goods. The Office noted that in the circumstances the applicant would like to limit the goods from the list of goods and services nevertheless of the Office’s broader objection, the applicant could send an unconditional and clear request to do so.

The Office pointed out that while it is true that the objected goods can also be made of other materials than of walnut wood, it is sufficient that the goods at hand could be made of such material. A sign must therefore be refused registration under the provision if the mark could be used to designate a characteristic of the goods concerned.

Furthermore, the Office stated that it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claimed that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T-194/01, Soap device, EU:T:2003:53, § 48).

Furthermore, the Office took note of the applicant’s request to reserve the right to submit further observations and evidence in support of the application in the circumstances the objection is maintained. However, it was unclear whether the request involved a claim under Article 7(3) EUTMR, and if so, it failed to clearly and precisely identify whether the claim was intended to be a principal or a subsidiary one. The Office noted that if the applicant did not reply to the notice to clarify the nature of the claim, the Office would consider that no claim of acquired distinctiveness through use pursuant to Article 7(3) EUTMR had been made.

The applicant did not submit any further observations within the time limit. For the reasons set out in the letter of objection, and pursuant to Article 7(1) (b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 042 906 is hereby rejected for the following goods:

Class 14 Jewelry boxes; jewelry; wristwatches; watch bands; watch hands; clocks and watches, electric; watch cases [parts of watches].

The application may proceed for the remaining goods, namely for:

Class 14 Alloys of precious metal; barrels [clock- and watchmaking];

movements for clocks and watches.

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