Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/09/2019

Athanasios Rozou

Politechniou 39

GR-54626 Thessaloniki

GRECIA

Application No:	018052000
Your reference:
Trade mark:	THE VIRGIN PELLET
Mark type:	Figurative mark
Applicant:	MIK EUROPE - ΣΥΣΤΗΜΑΤΑ ΘΕΡΜΑΝΣΗΣ - ΚΛΙΜΑΤΙΣΜΟΥ ΙΔΙΩΤΙΚΗ ΚΕΦΑΛΑΙΟΥΧΙΚΗ ΕΤΑΙΡΕΙΑ Sindos Industrial Area, Building Block: 40, 12A Street GR-57022 Sindos, Thessaloniki GRECIA

The Office raised an objection on 14/05/2019 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 claims that pellet is not wood as incorrectly stated by the Office and that the trademark ‘ is internationally connected with biofuel of wood – lumber and less with other products, such as industrial waste and byproducts, food waste, agricultural residues or energy crops. The applicant claims that pellet is not wood as incorrectly stated by the Office.

2. The applicant admits that the words contained in the mark individually are descriptive but claims that their combination renders the mark distinctive. The ‘special linguistic arrangement’ of ‘THE VIRGIN PELLET’ creates a ‘peculiarity’ and appears to be unusual for the general category of woods.

3. The applicant claims that it has been selling pellet products bearing the trade mark at issue since 2016 and provides snapshots of its website www.mytherm.gr where it is illustrated that it markets a product bearing the name ‘Virgin wood pellets Abate’

4. The applicant claims that the mark has become distinctive thought extensive use under article 7(3) EUTMR. The applicant submits that its company is a Greek one based in Thessaloniki, specializing in the manufacturing of steel boilers, pellet burners, D.W.H. plastic tanks and flat solar collectors, for domestic and industrial use, offering to the market a complete, modern and affordable pellet burning system. Its sell the “virgin pellet” for more than 4 years all over Greece.

5. The Office has accepted in the past the EUTM No 2 116 499 ‘VIRGIN WARE” and EUTM No 578781 “Virgin” for goods in different classes.

The Office took note of the applicant’s claim that under Article 7(3). However, as the applicant did not clearly and precisely identify whether it is intended to be a principal or a subsidiary one, as required by Article 2(2) EUTMIR, it was asked to clarify this claim.

On 11/09/2019, the applicant replied that its claim was a principal one and all relevant evidence has already been submitted with its observations of 12/07/2019.

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).

Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark consisting 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 words 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). This clearly applies to the present case, the expression ‘THE VIRGIN PELLET’ ’is a straightforward, and grammatically correct, combination of three descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. As explained in the objection letter, the relevant consumers would perceive the sign as providing information that the goods are pellet biofuels coming from pure un-combined wood without any chemical treatment. Therefore, the sign, notwithstanding certain figurative elements consisting of three black and one green tree which highlight that the goods biofuels made of virgin lumber, describes the kind and quality of the goods in question contrary to the applicant ‘s assertions.

In terms of the applicant’s claim that the Office erroneously assessed that pellet is wood, it is noted that in the objection letter 14/05/2019 it was clearly analysed, with relevant dictionary definitions and internet references, that pellet is a biofuel made from compressed organic matter or biomass. Pellets can be made from any one of five general categories of biomass, one of which is virgin lumber. Moreover, it is noted that in the applicant’s website it markets its products as ‘pellet wood’. Therefore, the applicant’s claim is not valid.

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 examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions.

The Office strives to be consistent and always has regard for previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. Moreover, the fact that different marks contain elements of the present mark which were registered does not suffice to overcome the present objection as they contain different verbal (for the ‘VIRGIN MARE’ trade mark) or figurative (for the ‘VIRGIN’ trade mark) elements and seek protection for different goods than the ones at hand.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect .

It follows from Article 7(2) EUTMR in conjunction with Article 7(3) EUTMR that the applicant must prove acquired distinctiveness for all parts of the European Union in which there is an absolute ground for refusal (07/09/2006, C-108/05, Europolis, EU:C:2006:530, § 28; 30/03/2000, T-91/99, Options, EU:T:2000:95, § 27).Given the above, the Office points out that at the very least, evidence of acquired distinctiveness through use must be shown for the United Kingdom, Ireland and Malta, where English is one of the official languages. Consequently, the relevant public for the assessment required by Article 7(3) EUTMR includes, at the very least, the consumers of those Member States (see 09/12/2010, T 307/09, Naturally active, EU:T:2010:509, § 26 and the case-law cited therein). Therefore, the applicant’s claim that the mark was been used extensively for four years in the Greek market cannot overcome the present objection.

The applicant has submitted the following evidence:

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania, issued on 28/11/2016 for the amount of 2466.75 EUR;

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania ,issued on 05/12/2016 for the amount of 2466.75 EUR;

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania, issued on 11/10/2017 for the amount of 2547.00 EUR;

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania , issued on 11/10/2017 for the amount of 2547.00 EUR;

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania , issued on 12/12/2017 for the amount of 2788.50 EUR;

• One tax invoice issued in the name of the company Valley Stork in Bratislava, Slovania , issued on 09/06/2018 for the amount of 2681.25 EUR.

The Office has carefully examined all the evidence presented. It is considered that the presented evidence is not sufficient to prove, that the mark applied for has become distinctive in consequence of the use which has been made of it in the relevant territory under the circumstances referred to in Article 7(3) EUTMR.

The burden of proof lies with the applicant who has claimed that the sign applied for has acquired distinctiveness.

The Office highlights that, according to the General Court, a distinction must be made between ‘direct proof’ of acquisition of distinctive character (surveys, evidence on the market shares held by the mark, statements from other professional associations) and ‘secondary evidence’ (advertising material, duration of use) that are merely indicative of the mark’s recognition on the market. Though secondary evidence may serve to corroborate direct proof, it cannot substitute it. The Office has taken note of the fact that no such direct proof of acquisition of distinctive character has been submitted.

Consequently, there is no evidence showing how intensive, geographically widespread and long-standing use of the mark has been, which is the amount invested by the undertaking in promoting the mark, and/ or which is the proportion of the relevant class of persons who, because of the mark, identify goods and services as originating from a particular undertaking. There is no independent evidence regarding the indications of economic efforts made by the trade mark applicant. The claims regarding the recognition of the mark are not backed up by any evidence, such as invoices, audited financial data or third party evidence.

The Office concludes that points out that the objective evidence brought by the applicant is so scant that, in the absence of more information or further solid evidence, the documentation produced cannot be considered sufficient for establishing acquired distinctiveness through use as they are very scarce and relate only to Slovenian market.

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 18 052 000 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.

Aliki SPANDAGOU