Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 04/12/2019

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	018056611
Your reference:	TMU/RD/6227634
Trade mark:	GREEN MOJITO AND CEDARWOOD
Mark type:	Word mark
Applicant:	Unilever N.V. Weena 455 NL-3013 AL Rotterdam PAÍSES BAJOS

The Office raised an objection on 30/05/2019 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 30/09/2019, and these may be summarised as follows:

1- The average consumer of the applied for goods would pay a higher degree of attention to the goods and their branding when selecting a specific brand as their personal choice, as compared to most other fastmoving consumer products.

2- The mark alludes to a mojito type cocktail. The immediate association derived from the mark is to something which one drinks, not something which one smells or has a scent. It is unusual for the scent of skin and hair care goods to be referred to as an alcoholic cocktail. The relevant consumer would not be "immediately informed" about the scent of the goods in question.

3- The sign maintains a sufficient level of creativity and imaginativeness. to enable consumers to identify the origin of the goods in question, from those of competitors. The mark GREEN MOJITO AND CEDARWOOD calls to mind the name of an exciting cocktail however, it is a cocktail that is used as the name of completely unrelated goods. Hence it acts as a memorable identifier of the origin of the goods.

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 goods:

Class 3: Cotton sticks for cosmetic purposes.

The objection is maintained for the remaining goods.

General remarks on Article 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.

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).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

The goods at issue are mass consumption goods and are mainly aimed at average consumers. The awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

As the mark applied for consists of English words, the relevant public is the average English speaking consumer of the European Union.

Specific remarks on the applicant’s observations

1- The average consumer of the applied for goods would pay a higher degree of attention to the goods and their branding when selecting a specific brand as their personal choice, as compared to most other fastmoving consumer products.

Concerning the consumer´s level of attention, and assuming that part of the public would pay a higher degree of attention to the goods, the Office draws your attention to the following case-law:

“On the contrary, it is clear from the contested decision that the Board of Appeal arrived at the same findings as those made by the examiner, according to which the relevant public is the general public as well as the specialised public, which is very clear from the wording of paragraph 12 of the contested decision, namely ‘on the one hand, the general public …’ and ‘on the other hand, the specialised public

…’. In the context of that general public — including, in particular but not exclusively, students and those wishing to dedicate themselves to further education — the Board of Appeal correctly found that account had to be taken of how the mark is perceived by the average consumer who is reasonably well informed and reasonably observant, and not, as submitted by the applicant, a consumer who pays particular attention when making a purchase.

Moreover, even if it is assumed that the relevant public is specialised, it is important to recall that that fact cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is indeed true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient in the case where the relevant public is specialised (judgment of 12 July 2012, Smart Technologies v OHIM, C 311/11 P, EU:C:2012:460, paragraph 48).”

Moreover, even if it is assumed that the relevant public is specialised, it is important to recall that that fact cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is indeed true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient in the case where the relevant public is specialised. (judgment of 12 July 2012, Smart Technologies v OHIM, C 311/11 P, EU:C:2012:460, paragraph 48).”

2- The mark alludes to a mojito type cocktail. The immediate association derived from the mark is to something which one drinks, not something which one smells or has a scent. It is unusual for the scent of skin and hair care goods to be referred to as an alcoholic cocktail. The relevant consumer would not be "immediately informed" about the scent of the goods in question.

And

3- The sign maintains a sufficient level of creativity and imaginativeness. to enable consumers to identify the origin of the goods in question, from those of competitors. The mark GREEN MOJITO AND CEDARWOOD calls to mind the name of an exciting cocktail however, it is a cocktail that is used as the name of completely unrelated goods. Hence it acts as a memorable identifier of the origin of the goods.

Consumers, when confronted with the term GREEN MOJITO applied to the goods at issue, will associate this term with the scent of a green mojito cocktail, characterized by the scent of mint and lime, which are green coloured.

References to unrelated goods, especially botanicals and/or products containing plants – including cocktails-, is neither unusual nor fanciful in the field of skin and hair care products to describe their fragrance. On the contrary, it is quite common place.

Hereunder the Office submits a few of many examples of such products that can be found on internet to substantiate its claim:

Conclusion

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 018056611 is hereby rejected for the following goods:

EN-3

Body and hand soaps, body washes, shower gels; perfumery; essential oils; deodorants and antiperspirants; hair care preparations; shampoos and conditioners; hair colourants; hair styling products; non-medicated toilet preparations; bath and shower preparations; skin care preparations; oils, creams and lotions for the skin; shaving preparations; pre-shave and aftershave preparations; cologne; depilatory preparations; sun-tanning and sun protection preparations; cosmetics; make-up and make-up removing preparations; petroleum jelly; lip care preparations; talcum powder; cotton wool for cosmetic purposes; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; beauty masks, facial packs.

The application may proceed for the remaining goods.

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.

Jean Marc SCHULLER