Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/09/2019

Shtiryana Vlacheva Vlachanova-Krasteva

15, Janko Sakazov Blvd., Et.1, Ap. 2

1504 Sofia

BULGARIA

Application No:	018061024
Your reference:	41901
Trade mark:	my coffee.store
Mark type:	Figurative mark
Applicant:	OVARAS - 38 EOOD JK Bukston ; ul. General Al. Suvorov 127 1618 Sofia BULGARIA

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 29/07/2019 and 30/07/2019, which may be summarised as follows.

1. ‘MY COFFEE.STORE’ is a website for a new shopping concept, where registered users can purchase products from the menu. The QR code in the mark is the applicant’s logo and a unique identifier containing the web address for my coffee.store.

2. ‘MY COFFEE.STORE’ has a specific meaning and is therefore only descriptive for coffee-based beverages and related services. All other goods and services should be accepted as the mark does not contain any information with respect to them.

3. The application is for a European Union trade mark and therefore many of the relevant consumers do not speak English.

4. As the figurative mark is not descriptive for the goods that are not coffee-based or for the related services, it is also sufficiently distinctive and capable of performing the principal function of a trade mark.

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).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

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).

It should also be recalled that pursuant to Article 7(2) EUTMR, a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an obstacle pertaining to one of the abovementioned territories of the European Union is deemed to be sufficient in order to reject a trade mark application.

As to the applicant’s arguments

First of all, the Office would like to point out that the objection has been raised because the figurative mark ‘MY COFFEE.STORE’ would be perceived as descriptive for marketing; organization of exhibitions for commercial or advertising purposes; demonstration of goods; presentation of goods on communication media, for retail purposes; advertising; online ordering services; retail services in relation to foodstuffs; retail services via global computer networks related to foodstuffs; unmanned retail store services relating to food; retail services via catalogues related to foodstuffs; mail order retail services related to foodstuffs; wholesale services in relation to foodstuffs; retail services in relation to non-alcoholic beverages; wholesale services in relation to non-alcoholic beverages; mail order retail services related to non-alcoholic beverages; retail services via global computer networks related to non-alcoholic beverages in Class 35 and for some of the services in Class 43, namely for bars; restaurants; snackbars; self-service restaurants; bistro services; catering; coffee shop services; coffee bar services; tourist restaurants; providing food and drink in internet cafes; provision of food and drink; serving food and drink in internet cafes; self-service cafeteria services; mobile restaurant services.

As stated in the letter of objection, the relevant consumers would perceive the sign as providing information that the services in Class 35 are advertising, marketing and promotional services concerning personalised (or with a personal touch), sales, retail, wholesale or commercial trading services of coffee, coffee-based products and/or foodstuff that is usually accompanied by coffee.

Insofar as the abovementioned services in Class 43 are concerned, the mark would inform that the services include the sale of personalised (or with a personal touch) coffee, coffee-based products and/or other products that are usually accompanied by coffee. For the rest of the services in Class 43, namely pubs; salad bars; wine bars; fast food restaurants; grill restaurants; takeaway food services; takeaway food and drink services; take-out restaurant services; take-away fast food services; tapas bars; juice bars; sushi restaurant services, the mark would be perceived as non-distinctive as it does not allow the relevant public to be guided as to the commercial origin of the services.

In light of the above, the Office finds the applicant’s argument that the mark is intended to be used in connection with a new kind of shopping concept, irrelevant, as the manner in which the mark is intended to be used cannot help the applicant to overcome the objection raised pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR.

Furthermore, the Office notes that 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).

Furthermore, the Office does not agree with the applicant that the QR code in the mark is a sufficiently unique identifier as to overcome the objection on absolute grounds for refusal.

It is generally known that nowadays QR codes are used not only in production logistics, for which they were originally developed, but in a wide variety of areas, including in dealings with end consumers. They generally serve to convey further information of many different types. Depending on their form, they contain this information directly or via a link that redirects visitors to more detailed information on the internet. Therefore, the Office believes that general practical experience shows that consumers are accustomed to encountering QR codes in everyday life, in connection with both goods and services.

The Office does not agree with the applicant that the mark is only descriptive for coffee-based drinks and related services. For the reasons pointed out in the letter of objection, the mark remains descriptive for all of the services in Class 35, as in the relevant market sector it is common to sell foodstuff to be accompanied by coffee.

In support of this conclusion of the market reality, the Office referred to the following internet references:

Furthermore, the Office considers that, although not directly descriptive for pubs; salad bars; wine bars; fast food restaurants; grill restaurants; takeaway food services; takeaway food and drink services; take-out restaurant services; take-away fast food services; tapas bars; juice bars; sushi restaurant services in Class 43, the sign is nevertheless entirely devoid of any distinctive character with respect to these services. Whilst not directly descriptive, it is nonetheless, (because of its meaning in the context of the services claimed), entirely devoid of distinctive character.

Although the sign for which protection is sought contains certain figurative elements that confer upon it a degree of stylisation, the nature of these elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. There is nothing about these features or the way in which they are combined that allows the mark to fulfil its essential function for the services for which protection is sought.

As regards the applicant’s argument that the mark is aimed at consumers of which many are non-English speakers, the Office reminds the applicant that a European Union trade mark registration has a unitary effect in all Member States. Therefore, Article 7(2) EUTMR excludes an application from registration if a ground for refusal obtains in only part of the European Union. For example, it suffices for a refusal if the trade mark is descriptive, or lacks distinctive character, in any one of the official languages of the European Union (03/07/2013, T‑236/12, Neo, EU:T:2013:343, § 57).

Following the above, in the present case, the relevant public consists of English-speaking consumers who can indeed understand the meaning of the verbal elements of the mark as they have clearly defined meanings in English. Therefore, it is irrelevant whether non-English speakers in the EU would perceive the mark as distinctive, as the relevant public consists of English speakers in the EU.

As the mark applied for is descriptive pursuant to Article 7(1)(c) for the services in Class 35 and for some of the services in Class 43, it is also automatically lacking distinctive character with respect to these services.

As regards the remaining services in Class 43, the Office notes that it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Although it is acknowledged that even signs with a low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because the distinctive character means that the trade mark guarantees the identity of the origin of the marked product or service to the consumers or end-users by enabling them, without any possibility of confusion, to distinguish the product or service from others which have another origin (15/09/2005, C‑37/03, ‘BioID’, ECLI:EU:C:2005:547).

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 18 061 024 is hereby rejected for all the 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.

Paivi Emilia LEINO