Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/09/2019

Tanja Bendele

Ruhr-IP Patentanwälte Brucker Holt 58

D-45133 Essen

Gemany

Application No:	18091012
Your reference:	KDM10656EU
Trade mark:
Mark type:	Figurative mark
Applicant:	CAVEX HOLLAND B.V. 2003 RW Haarlem P.O. Box 852 The Netherlands

The Office raised an objection on 31/07/2019 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 29/08/2019, which may be summarised as follows:

1. Consumers will have a higher degree of attention since the goods affect their health.

2. The sign’s structure of letters and figurative elements afford the mark the necessary distinctiveness. The term ‘Fresh4sure’ is neither grammatically correct nor common in English.

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.

While it may be true, as the applicant asserts, that the attentiveness of the relevant public in relation to the goods concerned may be higher than average, it does not imply that a sign is less subject to any absolute grounds of refusal. Taking into account that the mark applied for consists of a simple combination of meaningful/banal elements and the sign as a whole is immediately understandable in relation to the goods concerned, it is very unlikely that the relevant attentive public would fail to grasp the message contained in the mark. (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

2.

The applicant essentially argued that the representation and arrangement of the verbal and figurative elements of the sign is rather unique and they, in their totality, afford the sign the necessary distinctiveness. It also claimed that the sign applied for contains an unusual and non-grammatical combination of words. The Office cannot endorse these assertions for the reasons set forth below.

If a trade mark is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). In the present case, the sign consists of the juxtaposition of a numerical and two words whose meanings were provided in the Office’s objection letter. The applicant has not questioned those definitions according to which it was found that the mark as a whole indicates that the relevant goods provide guaranteed freshness. The applicant has not provided any evidence or argument to corroborate that the combination of the sign’s elements would be ungrammatical or unusual. Both ‘fresh’ and ‘sure’ are very common words and there is nothing uncommon in their combination or in the addition of ‘4’ used as ‘for’, either. In this regard, the applicant simply states that “In addition, the two words are adjectives with a particular sound: “r” at the beginning of the word “Fresh” and at the end of the word “Sure”, creating a framework, and “s” at the end of the word “Fresh” and at the beginning of the word “Sure”, forming a connection between the two words. Further, the initial letters of the two words are capital letters respectively, which is unusual in English language, in particular in the case of English adjectives, and is an interesting particularity.” Apart from the fact that ‘fresh’ and ‘sure’ are separated by the number ‘4’, therefore, consumers will perceive, understand and read this combination as ‘fresh for sure’, there is, in fact, nothing particular about one word ending in ‘r’ and another starting by ‘r’ even if these were to follow one another. Also, the use of capital letters, be it in adjectives, is a banal feature which is certainly not memorable and cannot have a distinguishing role.

With regard to the sign’s figurative elements, these consist of a grey rectangle and a black triangular shape. The applicant also asserts that “the black-coloured geometrical shape hosting the element “4” represents a tongue-like structure”. The Office fails to see how these very simple geometric forms could afford the sign any distinctiveness and nor can it see, in particular, that the black triangular shape would be perceived as a tongue. Nevertheless, even if it were to be admitted, which it is not, that the said figurative element may resemble a tongue, this would not really help the applicant’s case given that the relevant goods include products such as ‘tongue scraper” and, in general, oral hygiene items. In fact, consumers will perceive these elements nothing more than plain background or minor decorative features. These elements are, therefore, incapable of adding distinctiveness or diverting consumer’s attention from the non-distinctive message conveyed by the sign’s other components.

Based on all the foregoing, it is concluded that the mark conveys an understandable and clearly laudatory meaning in relation to the goods, and it is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that consumers would perceive the mark as a badge of origin distinguishing the goods for which registration is sought as they would not need any particular mental effort to interpret the message conveyed by the individual elements of the signs or by the sum thereof as defined in the objection letter and above.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 091 012 is hereby rejected for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Ferenc GAZDA