Refusal of application for a European Union trade mark

OPERATIONS DEPARTMENT

L123

Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2019

GPI MARQUES

39, rue Fessart

F-92100 Boulogne-Billancourt

FRANCIA

Application No:	18 052 305
Your reference:	269P/06/A/UE/19
Trade mark:	Water Infusion System
Mark type:	Word mark
Applicant:	Aisin Seiki Kabushiki Kaisha (also trading as Aisin Seiki Co., Ltd.) 2-1 Asahi-machi, Kariya-shi Aichi-ken JAPÓN

The Office raised a partial objection on 16/05/2019 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 15/07/2019, which may be summarised as follows:

Descriptiveness/meanings of the sign/distinctive character

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/ meanings of the sign/distinctive character

General remarks on art. 7(1)(c) EUTMR

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).

General remarks on art. 7(1)(b) EUTMR

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). 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).

Applicant´s remarks

The sign at issue is distinctive because during an infusion process, the water itself is not infused. With reference to a definition of the verb ‘infuse’, taken from Cambridge Advanced Dictionary, it is not the water which is infused but a substance such as tea. Water is used for obtaining the infusion but in no way the subject of the infusion as it is a mean for obtaining the infusion. A system by which water is infused gives no meaning as the water cannot be infused by water itself. The relevant public/the average consumer will understand that the sign is not to be understood as a reality but [rather] as a metaphor or as an image of water particles being so fine that they are the result of water by itself. The combination of the term ‘Water Infusion System’ is quite unusual and will take the relevant public by surprise by its’ antagonism.

The sign does not describe the kind, quality and intended purpose for the goods in question and the distinctive character of the sign is above the average. Therefore, it is requested that the sign be accepted for all the goods in class 11 applied for.

Office´s comments

According to settled case-law, the distinctiveness of a trade mark can be assessed only be reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public´s perception of that sign (29/04/2001, joined cases C-486/01 P – C-472/01 P, Tabs, EU:C:2004:259, §33; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, §67; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, §34) (14/06/2012; T-293/10, Colour per se, EU:T:2012:302; 12/07/2012, C-311/11 P, Wir Machen das Besondere einfach, EU:C:2012:460, §23).

In the present case, the goods at issue consist of general consumer goods, aimed both at a professional public (commercial/industrial use) and average consumers (household purposes). In view of the nature or the goods and services, the awareness of the relevant public will be between average to high.

The goods at issue in class 11 are for the sake of good order the following:

Class 11 Facial treatment machines and/or devices having fine water particle

generating and infiltrating functions for household purposes; facial

moisturizing spray machines having fine water particle generating and

infiltrating functions for home treatment; nano water facial spray

machines having fine water particle generating and infiltrating functions for home treatment; electronic facial steamers for home treatment; facial sauna apparatus for home treatment; portable facial treatment machines and/or devices for household purposes; portable facial moisturizing spray machines for home treatment; nano water facial spray machines for home treatment; portable electronic facial steamers; portable facial sauna apparatus; facial treatment machines and/or devices having fine water particle generating and infiltrating functions for industrial purposes; facial moisturizing spray machines having fine water particle generating and infiltrating functions for commercial use; nano water facial spray machines having fine water particle generating and infiltrating functions for commercial use; electronic facial steamers for commercial use; facial sauna apparatus for commercial use; fine water particle infiltrating device used in facial treatment machines for household purposes; fine water particle infiltrating device used in facial treatment machines for industrial purposes; air purifiers, electric; household electrothermic appliances

namely, electric humidifiers for household purposes, electric air

purifiers for household purposes; electric facial treatment machines

and/or devices for household purposes; electric facial treatment

machines and/or devices for industrial purposes; towel steamers for

hair dressing purposes; hair steamers for beauty salon use;

apparatus for steam generating; fine water particle infiltrating

device.

A common factor for these goods is that they are facial treatment machines and apparatus, air purifiers, etc., using fine water particle systems having the functions of generating, infiltrating, spraying, moisturizing, fusing/infusing, purifying, etc., in order to treat the skin of faces apart from treating/purifying the air.

The following links can confirm that skin facial systems, i.a., avail of water particles and/or oxygen to treat/clean/infuse your skin:

https://aestheticskinsystems.com/equipment/aquaskinfacial/

http://m.shrbeautylaser.com/sale-9037987-portable-water-oxygen-infusion-facial-beauty-system-with-ce-certificate.html

https://cgem168.en.alibaba.com/product/731628976-210197756/hyperbaric_oxygen_facial_machine_Oxigen_infusion_system_Beauty_Equipment.html

The Office has taken note of the applicant´s reference to a definition of the verb ‘infuse’ according to Cambridge Advanced Dictionary, being ‘if you infuse a drink or it infuses, you leave substances such as tea leaves or herbs in hot water so that their flavour goes in to the liquid’. The Office acknowledges the applicant´s allegation that the sign/its’ individual elements may have more than one meaning/different meanings or interpretations. However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

Therefore, the Office is of the position that the trade mark ‘Water Infusion Systems’ - seen as a whole and in the context of the goods at issue - will be understood by the relevant consumer as describing a quality of these goods, namely that these are characterized by being solutions or systems using water/water-oxygen (incl. water & oxygen) infusions for cleansing the skin or for giving facial treatments and for purifying the air.

Therefore, the Office maintains its position that the relevant consumers would perceive the sign as providing information about a characteristic, a quality and an intended purpose of the goods in question.

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 18 052 305

is hereby rejected in part for the following goods, namely: