Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/02/2020

STEVENS HEWLETT & PERKINS

1 St Augustine's Place

Bristol BS1 4UD

REINO UNIDO

Application No:	018085017
Your reference:	JS/CH/126419
Trade mark:
Mark type:	Figurative mark
Applicant:	Imperial Tobacco Limited 121 Winterstoke Road Bristol BS3 2LL REINO UNIDO

The Office raised an objection on 16/07/2019 pursuant to Article 7(1)(b) and (c) EUTMR 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 19/11/2019 which may be summarised as follows.

• The trade mark applied for is not descriptive and has a minimum degree of distinctiveness.

• The EUIPO has accepted international trade mark application No W01 412 401. Given that the mark of the subject application is virtually identical to the earlier mark accepted as being distinctive by the EUIPO, the Applicant contends that the subject application should be treated equally and accepted for registration.

Decision

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.

In the present case, the Office does not reintroduce arguments which have already been discussed, but builds on those arguments and, in this refusal, addresses the arguments of the applicant in its observations of 19/11/2019.

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).

The relevant public

Regarding the goods to which an objection has been raised, the Office considers that they both belong to a highly specialised market sector in the field of smoker’s products and are used by the average consumer. It must be held that the fact that the part of the relevant public is specialist or has a higher degree of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Even if the degree of attention of the relevant public (general and professional) is higher than average, it does not necessarily follow that a weaker distinctive character of a sign is sufficient to render a sign registrable (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). In view of the nature of the goods in question, even if the awareness of part of the relevant public is high, given the fact that they are related to smoker’s products, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

On the descriptive character of the trade mark applied for

As already explained in the enclosed notice of grounds for refusal, the trade mark applied for consists of the terms ‘CHANNEL FILTER SPECIAL PAPER QUALITY BLEND’. Furthermore, since the sign consists of English words, the relevant public in relation to which the absolute grounds for refusal are to be examined is the English-speaking public within 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). Taken as a whole, the terms ‘CHANNEL FILTER SPECIAL PAPER QUALITY BLEND’ immediately informs English-speaking consumers without further reflection that the sign explains in relation to the goods applied for that the latter include, use or function with a channel filter, special paper and are a quality blend.

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).

The structure of the sign in question does not diverge from English grammar rules but rather complies with them. Therefore, the relevant consumers, notwithstanding certain figurative elements consisting of the form of a stamp with two half round wavy lines, would perceive the sign as an indication of the kind, nature or intended purpose of the goods concerned in Class 34, namely tobacco, whether manufactured or unmanufactured, tobacco products, tobacco substitutes, none being for medicinal or curative purposes, cigarettes, cigarillos, cigars, hand-held machines for making cigarettes, cigarette tubes, cigarette filters, cigarette papers, electronic cigarettes, liquids for electronic cigarettes, matches and smokers' articles, which all include, use or function with a channel filter, special paper and are a quality blend.

It follows that the link between the words ‘CHANNEL FILTER SPECIAL PAPER QUALITY BLEND’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR. Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

On the non-distinctive character of the trade mark

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) and Article 7(2) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods of one undertaking from those of its competitors.

The sign for which protection is sought would simply be seen in the relevant market sector as a laudatory expression, the function of which is to communicate a customer service statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the smoker’s goods in question, namely that they promise to include, use or function with a channel filter, special paper and are a quality blend.

Although the sign for which protection is sought contains certain figurative elements as indicated above, these elements are so negligible in nature that they do not endow the trade mark as a whole with any distinctive character. Those elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function in relation to the goods for which protection is sought.

Therefore, the sign applied for is as well ineligible for registration under Article 7(1)(b) and Article 7(2) EUTMR because it is devoid of any distinctive character.

Previous case law from the Office

The applicant contends that the subject application should be treated equally as international trade mark application No W01 412 401 and accepted for registration, given that the mark of the subject application is virtually identical to the earlier mark accepted as being distinctive by the EUIPO.

As regards the applicant’s argument that a similar registration has 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).

However, it should be pointed out that the submitted example may have been carried out under different administrative practice standards. Since then, the practice of registration may have evolved in accordance with the highest juridical jurisprudence.

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 18 085 017 is hereby rejected for all the goods 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.

Frank MANTEY