Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/08/2019

Tunde Oyedele

4-6 Westbury Avenue

London N22 6BN

REINO UNIDO

Application No:	018056700
Your reference:
Trade mark:	MARRYJUANA "I Just Wanna Marryjuana"
Mark type:	Word mark
Applicant:	Deborah Imole - Ayo Diana Emmanuel 17 Edison Road Welling Kent DA16 3NF REINO UNIDO

The Office raised an objection on 22/05/2019 pursuant to Article 7(1)(b), (c) and (f) 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 22/07/2019, which may be summarised as follows.

1. The mark ought not to be considered contrary to public policy in these much changed times when products containing cannabidiol (or CBD Oil) and interchangeably referred to as cannabis, marijuana and hemp, are being manufactured, promoted and distributed around the EU. Furthermore, the well-informed, observant and circumspect consumer of the category of goods and services provided under the mark, would not deem the Mark as contrary to public policy or accepted principles of morality.

2. The mark is not intended to be used in such a way that will cause consumers, without further reflection, to consider that the products in class 34 are intended to be used for smoking marijuana cigarettes (if such a term exists). The words ‘MARRYJUANA "I Just Wanna Marryjuana"’ create a clear association with the Applicant.

3. A number of marks which have similar manner with the applicant have been granted registration, or have been published by the Office.

4. Should the objections remain, without prejudice to the Applicant’s position, the applicant is prepared to omit the statement “I Just Wanna Marryjuana”, should this permit the application to proceed.

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

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).

Article 7(1)(f) EUTMR prohibits the registration of ‘trade marks which are contrary to public policy or to accepted principles of morality’. By virtue of Article 7(2) EUTMR, the grounds of non-registrability set out in Article 7(1) EUTMR do not have to exist throughout the EU; it is sufficient if they ‘obtain in only part of the Community’.

Signs likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality are not the same in all Member States, inter alia for linguistic, historic, social and cultural reasons (20/09/2011, case T-232/10, ‘soviet coat of arms’, § 32).

In deciding whether a trade mark should be barred from registration on grounds of public policy or morality, the Office must apply the standards of a reasonable person with normal levels of sensitivity and tolerance (20/09/2011, T-232/10, ‘Coat of arms of the Soviet Union’, § 51).

The purpose of Article 7(1)(f) EUTMR is not to identify and filter out signs whose use in commerce must at all costs be prevented; rather the rationale of the provision is that the privileges of the trade mark registration should not be granted in favour of signs that are contrary to public policy or the accepted principles of morality. In other words, the organs of government and public administration should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society (06/07/2006, R495/2005 G, ‘Screw you’).

Nevertheless, although the Court has held that the goods and services for which protection is sought are important for identifying the relevant public whose perception needs to be examined, it has also made it clear that the relevant public is not necessarily only that which buys the goods and services covered by the mark, since a broader public than just the consumers targeted may encounter the mark (05/10/2011, T-526/09, PAKI, EU:T:2011:564, § 17-18). Accordingly, the commercial context of a mark, in the sense of the public targeted by the goods and services, is not always the determining factor in whether that mark would breach accepted principles of morality (09/03/2012, T-417/10, ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 24; 26/09/2014, T-266/13, Curve, EU:T:2014:836, § 18-19).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The trade mark you have applied for is partially ineligible for registration under Article 7(1)(f) EUTMR and Article 7(2) EUTMR. These grounds for refusal apply to fallowing goods:

Class 25 Headgear; footwear; clothing.

Class 34 Articles for use with tobacco; tobacco and tobacco products (including substitutes); smokers' articles of precious metal; smokers' articles, not of precious metal; lighters for smokers; devices for heating tobacco substitutes for the purpose of inhalation.

Class 41 Organisation of conferences, exhibitions and competitions; festivals (organisation of -) for entertainment purposes; organising of festivals; arranging of festivals for cultural purposes; festivals (organisation of -) for recreational purposes.

The sign for which protection is sought consists of the element ‘MARRYJUANA "I Just Wanna Marryjuana"’. Since the sign consists of English verbal elements ‘I Just Wanna’ and the verbal element ‘MARRYJUANA’ which is phonetically very close, or even phonetically identical, to the English word ‘MARIJUANA’. The relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The meanings of the words ‘JUST’ and ‘WANNA’ contained in the trade mark can be supported by the following dictionary references:

JUST 1-‘No more than; merely; only’ (information extracted from Collins English Dictionary on 16/05/2019 at https://www.collinsdictionary.com/dictionary/english/just ).

WANNA ‘A spelling of want to intended to reflect a dialectal or informal pronunciation’ (information extracted from Collins English Dictionary on 16/05/2019 at https://www.collinsdictionary.com/dictionary/english/wanna ).

As the element ‘MARRYJUANA’ is phonetically very close to the word ‘MARIJUANA’ which is a drug which is made from the dried leaves and flowers of the hemp plant, the element ‘MARRYJUANA’ is still referencing the drug despite the play on words. Furthermore, the statement ‘I Just Wanna Marryjuana’ would be understood as ‘I only want marijuana’, despite not being correct grammatically. For many English speakers it will not be evident that Juana is a Spanish female forename, indeed the misspelling involved in the mark may not be noted at all.

It is a well-known fact that the purchase and consumption of marijuana, or products containing marijuana, is prohibited by law in many member states of the EU. Therefore, as the expression ‘MARRYJUANA "I Just Wanna Marryjuana" refers to marijuana, the sign would instantly be perceived by the relevant consumers as a message which encourages an activity forbidden in many member states of the EU, namely the sale and/or consumption of drugs. The fact that a play on words may be noted within the mark does not assist in this regard; the light tone trivializes what is in fact an illegal activity with known health risks. Therefore, the mark falls under the prohibition of Article 7(1)(f) EUTMR since many EU Member States where English is spoken and understood prohibit drug trade, except under license, of many types of drugs through drug prohibition laws.

Consequently, taken as a whole, the sign for which protection is sought is against public policy for the goods and services in question in the sense of Article 7(1)(f) EUTMR.

Descriptiveness and lack of distinctive character

Under Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the trade mark you have applied for is also partially ineligible for registration. These grounds for refusal apply to fallowing goods:

Class 5 Dietary supplements and dietetic preparations; herbs for medicinal purposes; herbs (medicinal -).

Class 34 Articles for use with tobacco; tobacco and tobacco products (including substitutes); smokers' articles of precious metal; smokers' articles, not of precious metal; lighters for smokers; devices for heating tobacco substitutes for the purpose of inhalation.

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30).

Taken as a whole, the element ‘MARRYJUANA "I Just Wanna Marryjuana" immediately informs consumers without further reflection that the goods in Class 34, being various smokers articles, are intended to be used for smoking marijuana cigarettes. Furthermore, marijuana is also used for dietary and medical purposes. So, the sign immediately informs consumers without further reflection that the goods in Class 5 include marijuana or marijuana components. See fallowing examples about the usage of marijuana:

…

(Information extracted on 17/05/2019 at https://en.wikipedia.org/wiki/Cannabis_(drug) )

(Information extracted on 17/05/2019 at https://www.leafly.com/news/cannabis-101/the-complete-list-of-cannabis-delivery-methods )

(Information extracted on 17/05/2019 at https://www.google.com/search?client=firefox-b-e&ei=woPeXLaOEIm7UPXQjbgP&q=+marijuana+pills&oq=+marijuana+pills&gs_l=psy-ab.3..0l10.10350.13025..13168...0.0..0.130.665.5j2......0....1..gws-wiz.......0i71j0i67j0i203j0i30j35i39j0i20i263j0i10.rtjERpvT0LQ )

As a result, the sign describes the kind or intended purpose of the goods in question. The argument of the applicant, which there is no intention to use the mark as a descriptive manner is irrelevant to the consideration.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and (f) and Article 7(2) EUTMR, the application for European Union trade mark No 18 056 700 is hereby rejected for all the goods/services 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.

Ali KÜÇÜKŞAHİN