Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/11/2019

Pavels Ivanovs

Slokas street 29-35

Jurmala, LV-2015

LETONIA

Application No:	18 084 817
Your reference:	bestnewageproduct
Trade mark:	Nature's goodies
Mark type:	Word mark
Applicant:	Pavels Ivanovs Slokas street 29-35 Jurmala, LV-2015 LETONIA

The Office raised an objection on 28/06/2019 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 29/07/2019, respectively on 16/08/2019, which may be summarised as follows:

1. Enquiry to the rules governing amendments to the representation of an EU trade mark,

2. Meanings of the sign at issue

3. Similar marks registered by the Office

4. Request for an extension of the examination period

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. Enquiry to the rules governing amendments to the representation of an EU trade mark

Applicant’s remarks

The applicant enquires whether the sign can be converted into a design or a logo or whether a design or a logo can be added to the current sign.

Office´s comments

According to

the Office´s Guidelines regarding amendment of the application

the Office’s practice in this regard is very strict.

There are two conditions for allowing a change to a mark once filed and these

are cumulative:

· the mistake must be obvious, and

· the amendment must not substantially change the mark as filed.

Even if the amendment is not a substantial one, if the mistake is not obvious,

the Office will not accept the amendment.

Therefore, it is not possible to make amendments to the current EUTM

application or replace the current application with another type of mark. However, for the sake of good order, it has to be mentioned that a new EU trade mark application with payment of the corresponding application fee may always be filed.

2. Meanings of the sign at issue

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 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).

Applicant´s remarks

The sign does not contradict Article 7 EUTMR. The sign itself has distinctive

character because the products of the applicant are made of natural products.

The term “Nature’s goodies” means goodies which are made of natural, healthy ingredients, which means that these products are of nature’s essence.

They are somehow related to the nature being pure food or pure drinks with no chemical substances added to thus supposedly being healthy. When food or drinks are described as being of nature’s essence, it means that there are no artificial chemical substances added.

Office´s comments

The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, ‘Quick’, § 29).

Consequently, the sign at issue ‘Nature’s goodies’ is to be assessed in relation to the goods applied for which for the sake of good order are:

Class 29 Canned fruits; fruit jellies; alginates for culinary purposes; tinned fruits; yoghurt; milk shakes; marmalade; frosted fruits; candied nuts; seaweed extracts for food; croquettes; milk products; crystallized fruits.

Class 30 Cereal bars; preparations made from cereals; high-protein cereal bars; bread; confectionery; pastries; marshmallow confectionery; chocolate; ice cream; sorbets; ices (edible -); sugar; honey; dried and fresh pastas, noodles and dumplings.

Therefore, the Office finds that the sign at issue will be perceived by the relevant public as a laudatory term communicating a quality statement in relation to the goods applied for. The relevant public will not tend to perceive any particular indication of commercial origin beyond the promotional information with highlight of positive aspects of the goods applied for, namely that these have fundamental, natural qualities and moreover are particular tasty to eat or to drink. As pointed out by the applicant, the relevant public may also perceive the sign as highlighting other positive aspects such as products free from chemicals in the ecological sense apart from being pure and essential in their nature.

It is in the above-mentioned context that the Office maintains its’ position that the sign ‘Nature’s goodies’ is devoid of any distinctive character within the meaning of art. 7(1)(b) and art. 7(2) EUTMR.

3. Similar marks registered by the Office

Applicant´s remarks

Appr. 274 EU trademarks are registered, including the word “nature’s” and most of these registered signs do not contain a logo.

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).

Lastly, the Office would like to avail of the opportunity to make reference to the following earlier, similar EU trade mark applications - containing the term ‘nature´s’ – which have been object to a refusal by the Office:

EUTMa REPRESENTATION

• 00 380 709 NATURE'S CHOICE

• 18 137 476 ¹

• 17 993 074 Nature's Wild Berry

• 16 969 511 NATURE'S BEST HARVEST²

• 16 027 732 NATURE’S PROVENANCE

• 15 883 119 NATURE'S RANGE

• 15 501 877

• 14 799 266 NATURE'S AID

• 13 892 724 Nature's Purest Miracle

• 10 035 855 NATURE'S ORGANICS³

4. Request for an extension of the examination period

Applicant’s remarks

The applicant requests an extension of the examination period.

Office´s comments

As the request for an extension of the time limit is not reasoned or justified by any circumstances and as the applicant submitted its’ observations within the currently applicable time limit, the request cannot be met.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No  18 084 817 is hereby rejected for all the goods claimed, namely:

Class 29 Canned fruits; fruit jellies; alginates for culinary purposes; tinned fruits; yoghurt; milk shakes; marmalade; frosted fruits; candied nuts; seaweed extracts for food; croquettes; milk products; crystallized fruits.

Class 30 Cereal bars; preparations made from cereals; high-protein cereal bars; bread; confectionery; pastries; marshmallow confectionery; chocolate; ice cream; sorbets; ices (edible -); sugar; honey; dried and fresh pastas, noodles and dumplings.

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.

Finn PEDERSEN