Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 27/04/2020

Jean-Christophe Guerrini

17, rue de la Paix

F-75002 PARIS

FRANCIA

Application No:	18 082 703
Your reference:	Superpetittext
Trade mark:	SUPERPETIT
Mark type:	Word mark
Applicant:	Albarine Limited 105, 1/F, Casey Building, 38 Lok Ku Road Sheung Wan REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised a partial objection on 19/11/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any

distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 18/12/2019, which may be summarized as follows:

1. Distinctive character of the sign

2. Similar mark registered by national/international office

3. Similar marks registered by the Office

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.

1. Distinctive character of the sign

General remarks on Article 7(1)(b) EUTMR

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

occasionof 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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark

in the traditional sense of the term ‘is only distinctive for the purposes of

Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of

the commercial origin of the goods or services in question, so as to enable

the relevant public to distinguish, without any possibility of confusion, the

goods or services of the owner of the mark from those of a different

commercial origin’ (05/12/2002, T-130/01, Real People, Real Solutions,

EU:T:2002:301, § 20 ; and 03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 21).

Applicant´s remarks

The sign at issue is a single, “portmanteau” word and not two words as indicated in the Office´s notice of grounds for refusal.

The sign at issue does not exist in the French or English language and neither is it found in French/English dictionaries. As a non-existent construction, it does not indicate very small size and/or exclusively designate the characteristics of the applied for goods and services.

The verbal element “petit” of the sign indicates to most readers that the language of the sign is French. In French, “petit” is the noun meaning “child” or “kid”. Thus, it will appear that “SUPERPETIT” is understood to mean “Superkid” or “Superchild”, where, “Super” is an adjective/prefix.

“SUPERPETIT” translates into English and other languages as “Superkid” and will be understood by French/English speakers to have the clear meaning intended by the applicant. The sign “SUPERPETIT” will not be perceived as a designator of product size or characteristics. No reasonable consumer would assume that goods bearing the “SUPERPETIT” trademark are of

very-small size.

“Petit” is not used in the English language for indicating sizing of the relevant classes of goods. Used in conjunction with “Super” ensures no confusion with the common international sizing (S, M, L) convention, which is also used universally in France. According to the Collins Dictionary, untranslated “petit” in English (British and American) usage is predominantly for legal matters. It has no accepted application in indicating the size of goods.

While sizing conventions are of relevance to clothing - class 25 (noting the prevalence of the “S,M.L” international standard), goods in class 28 are rarely graded in terms of size and when they are, tend to use the adjective “mini” in the context of toys and playthings rather than more complex constructs.

Therefore, the applicant contends that “SUPERPETIT” is indeed of distinctive character and capable of identifying the source of goods to the relevant consumers.

Office’s comments

The Office finds that the sign as a whole, ‘SUPERPETIT’ is a compound of two French words, consisting of the prefix/adverb ‘SUPER’ and the adjective ‘PETIT’ placed together which will not be perceived as unusual by the relevant public but rather as a grammatically correct and meaningful expression informing, namely that the goods are extraordinarily or extremely small in size compared to average sizes - such as miniature toys in class 28 and clothing of small sizes in class 25 like ‘XS’ (extra small), etc. - including the various retail services of the same goods thus being a laudatory or attractive term in context with the goods and services at issue and in relation to a targeted public of children. Equivalent or comparable terms used f.ex. in English could be super cool, super nice, etc., where the term ‘super’ in itself emphasizes a high quality, e.g. in French ‘manger super’, in English ‘eat superbly’.

As to the applicant´s argument that the composition ‘SUPERPETIT’ cannot be found in a dictionary, a distinctive character of a word sign should not be inferred from the fact that the word element of that sign does not appear in dictionaries as such (27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 33 and case law cited therein).

As to the applicant’s assertion that the sign also can mean ‘superchild’ or ‘superkid’, thus implying several meanings of the sign, it is true that the fact that a mark applied for can, inter alia, have a number of meanings is one of the characteristics which is likely, as a rule, to endow the sign with distinctive character but not the decisive factor for establishing that that sign has distinctive character (29/01/2015, T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 38). However, at the same time it can be added that a compound word sign must be refused registration under Article 7(1)(b) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/01/2014, T-68/13, Care to care, EU:T:2014:29, § 41 and the caselaw cited).

Moreover, the sign ‘‘SUPERPETIT’’ does not constitute a play on words or form a striking, inventive or unexpected combination of words exhibiting originality and resonance. There is nothing about the expression ‘SUPERPETIT’ that might, beyond its obvious laudatory promotional meaning, enable the relevant public to memorize the sign easily and instantly as a distinctive trade mark for the goods and services in question.

Therefore, the Office maintains its’ position that the sign in question is devoid of any distinctive character ion context with the goods and services at issue within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

2. Similar mark registered by national/international office

Applicant´s remarks

Consumers in French speaking markets will clearly perceive the trademark

as a badge of trade origin (meaning “Superkid” or “Superchild”) and not as an indication of size, as such a definition is highly unusual in French commerce.

This is supported by the registration by INPI/Institut National de la Propriété Industrielle in France of an earlier trademark “Super Petit” by the shareholders of the applicant, for goods and services in class 25, 28 and 35, namely

Reg.no 4211852

Another similar example and precedent is the [international] registration of the well-known global clothing brand trademark SUPERDRY under reg.no. IR/WO 899643. Clearly, no consumer would expect all the goods registered with the sign “Superdry” to be “very water-resistant”, as this trademark is distinct from the words “Super” and “Dry”.

Office´s comments

As regards the national/international decisions referred to by the applicant, according to case-law the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national/international system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

3. Similar marks registered by the Office

Applicant´s remarks

The applicant directs the Office’s attention to the following EU trademark registrations:

EUTM no Representation

• 00 045 161 SUPERCOOK

• 00 563 064 SUPERNATURALS

• 00 042 747 ROLLS SUPERGLIDE

• 00 024 653

Office´s comments

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).

In addition it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during that

period. The Court of Justice is also aware of this market and practice

evolution and have stated 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) and 7(2) EUTMR,

the application for European Union trade mark No 18 082 703 is hereby rejected in part for the following goods and services claimed, namely:

Class 25 Clothing; footwear; headgear.

Class 28 Toys, games, playthings and novelties.

Class 35 Retail services in relation to clothing; wholesale services in relation to

clothing; catalogue retail services in relation to clothing; online retail

services in relation to clothing; mail order retail services in relation to

clothing; television shopping based retail services in relation to

clothing; retail services in relation to footwear; wholesale services in

relation to footwear; catalogue retail services in relation to footwear;

online retail services in relation to footwear; mail order retail services

in relation to footwear; television shopping based retail services in

relation to footwear; retail services in relation to headgear; wholesale

services in relation to headgear; catalogue retail services in relation to

headgear; online retail services in relation to headgear; mail order

retail services in relation to headgear; television shopping based retail

services in relation to headgear; retail services in relation to toys,

games, playthings and novelties; wholesale services in relation to

toys, games, playthings and novelties; catalogue retail services in

relation to toys, games, playthings and novelties; online retail services

in relation to toys, games, playthings and novelties; mail order retail

services in relation to toys, games, playthings and novelties; television

shopping based retail services in relation to toys, games, playthings

and novelties.

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

Class 16 Decoration and art materials and media; printed matter; stationery and

educational supplies.

Class 21 Tableware, cookware and containers; household utensils for cleaning,

brushes and brush-making materials.

Class 28 Sporting articles and equipment.

Class 35 Retail services in relation to decoration and art materials and media;

wholesale services in relation to decoration and art materials and

media; catalogue retail services in relation to decoration and art

materials and media; online retail services in relation to decoration

and art materials and media; mail order retail services in relation to

decoration and art materials and media; television shopping based

retail services in relation to decoration and art materials and media;

retail services in relation to printed matter; wholesale services in

relation to printed matter; catalogue retail services in relation to

printed matter; online retail services in relation to printed matter; mail

order retail services in relation to printed matter; television shopping

based retail services in relation to printed matter; retail services in

relation to stationery and educational supplies; wholesale services in

relation to stationery and educational supplies; catalogue retail

services in relation to stationery and educational supplies; online retail

services in relation to stationery and educational supplies; mail order

retail services in relation to stationery and educational supplies;

television shopping based retail services in relation to stationery and

educational supplies; retail services in relation to tableware, cookware

and containers; wholesale services in relation to tableware, cookware

and containers; catalogue retail services in relation to tableware,

cookware and containers; online retail services in relation to

tableware, cookware and containers; mail order retail services in

relation to tableware, cookware and containers; television shopping

based retail services in relation to tableware, cookware and

containers; retail services in relation to household utensils for

cleaning, brushes and brush-making materials; wholesale services in

relation to household utensils for cleaning, brushes and brush-making

materials; catalogue retail services in relation to household utensils for

cleaning, brushes and brush-making materials; online retail services in

relation to household utensils for cleaning, brushes and brush-making

materials; mail order retail services in relation to household utensils

for cleaning, brushes and brush-making materials; television shopping

based retail services in relation to household utensils for cleaning,

brushes and brush-making materials; retail services in relation to

sporting articles and equipment; wholesale services in relation to

sporting articles and equipment; catalogue retail services in relation to

sporting articles and equipment; online retail services in relation to

sporting articles and equipment; mail order retail services in relation to

sporting articles and equipment; television shopping based retail

services in relation to sporting articles and equipment.

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.

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