Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/01/2020

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRLANDA

Application No:	018056316
Your reference:	TM106023EU00/NH
Trade mark:	WILDFLOWER
Mark type:	Word mark
Applicant:	Wildflower Brands Inc. 400 - 1505 West 2nd Avenue Vancouver, BC V6H 3Y4 CANADÁ

1. The Office raised an objection on 26/06/2019 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.

2. After a two-month extension of the time limit, the applicant submitted its observations on 18/10/2019,, which may be summarised as follows.

• The list of goods and services is amended to read:

Class 3 Skin soap; Bar soap; Scented soap; Skin and body lotion; Non-medicated topical creams; Non-medicated topical gels; none of the aforesaid goods containing wild flowers.

Class 5 Nutritional supplements, namely, hemp capsules; Medicated topical skin bars for pain relief; Topical creams for medical and therapeutic use; Topical gels for medical and therapeutic use; none of the aforesaid goods containing wild flowers.

Class 34 Flavourings and solutions for personal vaporizers and electric cigarettes; none of the aforesaid goods containing wild flowers; Vaporizers; Vaporizer pipes; all for smoking purposes; Personal vaporizers and electronic cigarettes.

Class 35 Retail services relating to skin soap, bar soap, scented soap, skin and body lotions, topical creams, topical gels, nutritional supplements, namely, hemp capsules, medicated topical bars for pain relief, flavourings and solutions for vaporizers or vaporizer pipes, none of the aforesaid goods containing wild flowers; Retail services relating to vaporizers, vaporizer pipes, and solutions for vaporizers or vaporizer pipes.

• The applicant requests to be given the opportunity to make further submissions if the objection is not waived.

3. 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 waive the objection for the following services:

Class 35 Retail services relating to skin soap, bar soap, scented soap, skin and body lotions, topical creams, topical gels, nutritional supplements, namely, hemp capsules, medicated topical bars for pain relief, and flavourings and solutions for vaporizers or vaporizer pipes.

In order to overcome the objection the applicant has limited the list of goods/services by adding the term “none of the aforesaid goods containing wild flowers” after the goods and services objected to.

The offered limitation cannot be accepted. See the judgment of 12/02/2001, C-363/99, ‘POSTKANTOOR’, EU:C:2004:86, § 114 and 115, where the ECJ stated that:

By contrast, where registration is applied for in respect of particular goods or services, it cannot be permitted that the competent authority registers the mark only in so far as the goods or services concerned do not possess a particular characteristic.

Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mark. Third parties - particularly competitors - would not, as a general rule, be aware that for given goods or services the protection conferred by the mark did not extend to those products or services having a particular characteristic, and they might thus be led to refrain from using the signs or indications of which the mark consists and which are descriptive of that characteristic for the purpose of describing their own goods.

Also, such a limitation would make the mark misleading as the relevant consumers would when seeing the mark in connection with the goods immediately assume that the goods are made of or contain wildflowers.

The applicant’s request to make further observations is denied as the applicant has had an opportunity to present all the comments and submissions it wishes to submit. Another round of submissions would unnecessarily lengthen the examination proceedings and no specific reason for the request has been given.

4. 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 18 056 136 is hereby rejected for the following goods:

Class 3 Skin soap; Bar soap; Scented soap; Skin and body lotion; Non-medicated topical creams; Non-medicated topical gels.

Class 5 Nutritional supplements, namely, hemp capsules; Medicated topical skin bars for pain relief; Topical creams for medical and therapeutic use; Topical gels for medical and therapeutic use.

Class 34 Flavourings and solutions for personal vaporizers and electric cigarettes.

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

Class 34 Vaporizers; Vaporizer pipes; all for smoking purposes; Personal vaporizers and electronic cigarettes.

Class 35 Retail services relating to skin soap, bar soap, scented soap, skin and body lotions, topical creams, topical gels, nutritional supplements, namely, hemp capsules, medicated topical bars for pain relief, vaporizers, vaporizer pipes, and flavourings and solutions for vaporizers or vaporizer pipes.

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.

Anne-Lee KRISTENSEN