Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 17/10/2019

PONS CONSULTORES DE PROPIEDAD INDUSTRIAL, S.A.

Glorieta Rubén Darío, 4

E-28010 Madrid

ESPAÑA

Application No:	018076002
Your reference:	11644
Trade mark:	VERDE+
Mark type:	Word mark
Applicant:	MULTY HOME LP 100 Pippin Road, Concord Ontario L4K 4X9 CANADÁ

The Office raised an objection on 19/06/2019 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 goods applied for, for the reasons set out in the attached letter.

The applicant submitted its observations on absolute grounds for refusal on 16/08/2019, which may be summarised as follows.

1. The mark must be assessed as a whole and average consumers do not analyse its various details.

2. The relationship between the term and the goods and services must be sufficiently direct and specific, as well as concrete, direct and understood without further reflection. The mark is not common for the goods in question and it is sufficiently far removed.

3. The term ‘VERDE’ has many possible meanings.

4. The expression ‘VERDE+’ is merely suggestive.

5. The applicant’s products are not in relation to the term ‘VERDE’ and the mark is not descriptive for the applicant’s products.

6. The absolute grounds for refusal should be applied in a restrictive way and the minimum level of distinctive character is sufficient.

7. The Office has accepted various suggestive marks. The applicant refers to the following registrations: EUTM No. 015 804 602 ‘VITA+VERDE’, EUTM No. 000 708 974 ‘TERRA VERDE’, EUTM 001239037 ‘BOSQUE VERDE’, EUTM No. 004 214 326 ‘MADE IN GREEN HECHO EN VERDE’, EUTM No. 004 296 828, ‘VERDECORA’, EUTM No. 008 779 381 ‘NATURA VERDE’, EUTM No. 010 854 347 ‘POTENZA VERDE’, EUTM No. 013 623 137 ‘LA KOUZINA VERDE’, EUTM No. 016 421 521 ‘TIERRAVERDE’, EUTM 002 248 581 ‘MASSAGE +’, EUTM 002 250 694 ‘CREST MASSAGE +’, EUTM 003 176 922 ‘HIGHTECH+’ and EUTM 003 444 271 ‘ECO+’

Amendment of the list of goods and services

On 02/07/2019, the Office sent a notice of requirement to amend classification of the list of goods and services as the list did not entirely comply Article 33 EUTMR.

On 02/09/2019, the applicant replied to the notice, requesting the transfer of “rain barrels” to class 20 with the following wording: “Rain barrels, not of metal”. Secondly, the applicant requested the transfer of “non-metal water barrels” to Class 20 as suggested by the Office.

On 03/09/2019, the Office sent a confirmation of amendment of classification of goods and services to the applicant and the list of goods and services now read as follows.

Class 20 Rain barrels, not of metal; Non-metal water barrels.

Class 21 Garden planters, window boxes.

Absolute grounds for refusal

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 for all of the goods applied for, namely:

Class 20 Rain barrels, not of metal; Non-metal water barrels.

Class 21 Garden planters, window boxes.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

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 territories of the European Union is deemed to be sufficient in order to reject a trade mark application.

The Office agrees with the applicant that the mark must be assessed as a whole. However, it must be borne in mind that, although the average consumers normally perceive a mark as a whole and do not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, as in the present case, suggest a concrete meaning or which resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

The assessment of the distinctiveness of a mark must be based on the overall impression conveyed by the mark, but nothing prevents the Office from examining each of the mark’s individual elements separately (09/12/2010, T 282/09, Carré convexe vert, EU:T:2010:508, § 18; 21/01/2011, T-310/08, executive edition, EU:T:2011:16, § 28 and 27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 21 and the case-law cited).

In the present case, the Office has stated in the letter of objection that according to the Spanish dictionary Dle the term ‘VERDE’ contained in the mark refers to ‘Dicho de un producto: ecológico (que no es perjudicial para el medio ambiente)’. The Office has provided the following translation for the term: ‘said of a product: ecological (that is not harmful for the environment)’.

As regards the ‘+’ symbol in the mark, the Office has stated that the symbol in question at the end of the verbal element ‘VERDE’ only reinforces the message as it is established in case law that the ‘+’ symbol commonly indicates in advertising a higher value or a positive advantage (see e.g. 25/11/2010, C-216/10 P, A+, EU:C:2010:719, § 32 and 08/11/2018 R 2290/2017-1, DOG+, § 16).

Following the above, the relevant consumers would perceive the sign as providing information that the goods in question are ecological/environmentally friendly (green). The Office is of the opinion that the message of the mark is concrete, direct and understood without further reflection by the relevant public when the mark is used in connection with Rain barrels, not of metal; Non-metal water barrels in Class 20 and Garden planters, window boxes in Class 21.

As regards the applicant’s argument that the term ‘VERDE’ has many meanings in Spanish, 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.). In the present case, the applicant does not dispute the meaning of the term provided by the Office. In fact, in the letter of the observations the applicant demonstrated possible meanings of the term by attaching a screenshot of the same Spanish dictionary (The Dictionary of the Royal Spanish Academy, available at: https://dle.rae.es/?id=bbs8NTC) that the Office used in the letter of objection and which clearly shows the meaning of the term in relation to a product: ‘ecological (II that is not harmful to the environment)’.

The Office does not find the applicant’s argument convincing that the mark is only suggestive, as the mark has a clear meaning that is immediately understood by the relevant consumers. The Office notes that green consumerism is on the rise and environmentally friendly and sustainable products are of interest.

Considering the dictionary meaning of the term ‘VERDE’ in relation to a product, namely ‘‘ecological (II that is not harmful to the environment)’, the Office does not agree with the applicant that the meaning of the mark is sufficiently far removed from the goods for which protection is sought in Classes 20 and 21.

The Office holds that there is nothing unusual about the combination of the term ‘VERDE’ and the ‘+’ symbol in the mark applied for. Therefore, the elements, taken as a whole, are only a sum of its non-distinctive and descriptive parts (see by analogy 12/02/2004, 06/06/2019, R 344/2019-2, Polywrap (fig.) 9 C-363/99, Postkantoor, EU:C:2004:86, § 100 and 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 41). The Office is of the opinion that the overall impression of the mark is not sufficiently far removed from that produced by the mere combination of its constituent elements and therefore does not make the resulting compound term more than the mere sum of its parts.

As regards the applicant’s argument that the applicant will not use the mark in descriptive way, the Office would like to point out that the use of the applicant is not relevant in the present context. 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).

As regards the applicant’s argument that the absolute grounds for refusal should be applied in a restrictive way and the minimum level of distinctive character is sufficient, the Office would firstly point out that the objection has been raised as the mark describes certain characteristics of the goods for which protection is sought, and it is thus also devoid of any distinctive character.

Furthermore, although it is acknowledged that even signs with 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 consumer or end-user by enabling him, 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).

The trade mark registrations referred to, namely EUTM No. 015 804 602 ‘VITA+VERDE’, EUTM No. 000 708 974 ‘TERRA VERDE’, EUTM 001239037 ‘BOSQUE VERDE’, EUTM No. 004 214 326 ‘MADE IN GREEN HECHO EN VERDE’, EUTM No. 004 296 828, ‘VERDECORA’, EUTM No. 008 779 381 ‘NATURA VERDE’, EUTM No. 010 854 347 ‘POTENZA VERDE’, EUTM No. 013 623 137 ‘LA KOUZINA VERDE’ and EUTM No. 016 421 521 ‘TIERRAVERDE’, EUTM 002 248 581 ‘MASSAGE +’, EUTM 002 250 694 ‘CREST MASSAGE +’, EUTM 003 176 922 ‘HIGHTECH+’ and EUTM 003 444 271 ‘ECO+’, cannot result in a more favourable assessment.

No meaningful conclusions can be drawn as to the intrinsic distinctive character of ‘VERDE+’ due to registration of the marks referred to.

Firstly, the Office notes that many of the marks referred to are figurative marks, namely EUTM No. 015 804 602 ‘VITA+VERDE’, EUTM No. 000 708 974 ‘TERRA VERDE’, EUTM 001239037 ‘BOSQUE VERDE’, EUTM No. 004 214 326 ‘MADE IN GREEN HECHO EN VERDE’, EUTM No. 004 296 828, ‘VERDECORA’, EUTM No. 016 421 521 ‘TIERRAVERDE’, EUTM 003 176 922 ‘HIGHTECH+’ and EUTM 003 444 271 ‘ECO+’.

Secondly, although it is correct that, when making an assessment consistent appraisals should be sought as far as possible, this cannot lead to trade marks which are considered as not eligible for registration being registered solely because other marks which include one of their elements have been registered. The mere fact that some of the marks listed contain the word ‘VERDE’ or the ‘+’ symbol does not make them (evidently) similar with the sign in question nor could it be concluded that the application mark would be distinctive. None of the marks referred to is identical to the mark applied for. The Office would also like to point out that the Office has refused on absolute grounds in 2017 the EUTM application No. 016072274 for ‘+GREEN’ that was applied for goods in Class 16.

Thirdly, the Office notes that the assessment of distinctive character is not exact science. The Office strives to act consistently, but each case must be considered separately. Even though in some earlier cases the examiner may, in the opinion of the applicant, have applied a less strict approach to marks that in some respects are reminiscent of the one being applied for, the contested decision is, however, in harmony with the most recent decisions of the EU Courts and Boards of Appeal.

If, by accepting in a decision given in a particular case that a sign is eligible for registration as an EU trade mark, the Office has erred in law, that decision cannot be successfully relied on to support an application for the annulment of a later contrary decision adopted in a similar case. 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 (08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227, § 59 and the case-law cited).

Nevertheless, the way in which the principles of equal treatment and sound administration are applied must be reconciled with compliance with the law. Accordingly, anyone seeking to register a sign as a trade mark may not plead, in their own favour, any illegal act committed for the benefit of others, in order to ensure an identical decision.

Moreover, for reasons of legal certainly and, indeed, of sound administration, the assessment of any application for registration must be stringent and complete in order to prevent trade marks being improperly registered. That assessment should be carried out on a case-by case basis. Indeed, registration of a sign as a trade mark depends on the specific criteria applicable in the factual circumstances of the instant case to ascertain whether the sign in question is caught by a reason for refusal (10/03/2011, C-51/10 P, 1 000, EU:C:2011:139, § 73 to 77; 15/09/2005, C-37/03 P, BioID, 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 18 076 002 is hereby rejected for all the goods claimed, namely for:

Class 20 Rain barrels, not of metal; Non-metal water barrels.

Class 21 Garden planters, window boxes.

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.

Päivi Emilia LEINO