Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 31/05/2020

BIRD & BIRD LLP

Avenue Louise 235

B-1050 Bruxelles

BÉLGICA

Application No:	018094102
Your reference:	LLOEB.0118
Trade mark:	TASSOS
Mark type:	Word mark
Applicant:	The Tassos Group, LLC 2575 White Oak Circle Aurora Illinois 60502 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 13/08/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

In summary, the relevant public would perceive the sign, TASSOS, as referring to Thassos, which is a Greek island, geographically part of the North Aegean Sea, but administratively part of the Kavala regional unit. Thus, considering the goods in question, the part of the relevant consumers would perceive the sign applied for as providing information that those goods, namely olives and products made from or containing olives, originate from Thassos. The misspelling, namely the addition of the letter ‘h’ (in case of English, Polish, German, Italian) or omission of the letter ‘s’ (in case of Spanish, Lithuanian) letter in the middle of the word will not change its meaning. Moreover, for the public speaking those languages the exact spelling of the island in question might not be known since it is a foreign word. Therefore, the sign describes the geographical origin of the goods in question or of their ingredients. Taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods in question.

On 11/10/2019 the applicant requested an extension of the time limit to submit observations. The time limit was extended on 11/10/2019, with the deadline expiring on 18/12/2019. The applicant submitted its observations on 13/12/2019, which can be summarised as follows:

1. The examiner is incorrect in concluding that the sign for which registration is sought ‘TASSOS’ is a misspelling of the words ‘Thassos’ or ‘Tasos’. ‘TASSOS’ is a Greek male given name, which is a variant of Anastasios and means ‘resurrection’. The misspelling changes the meaning of the verbal element. There is no link to the island of Thassos. Therefore, the sign is acceptable.

2. The mark ‘TASSOS’ does not describe the origin of the goods for which is sought because there is no direct and specific relationship between the mark and the goods. In addition, the name ‘Thassos’ is not a denomination of origin of any of the goods.

3. The fact that the term has a certain dictionary meaning does not imply its descriptive connotation. The argument is illustrated by the cases of 12/09/2019, C-541/18, #darferdas?, EU:C:2019:725, § 24-26 and of 30/09/2014, R 757/2014-2, BABES.COM, § 16-17. The potential descriptive use of the sign provided by the Office is not particularly significant and there is no evidence that it could become so in the future.

4. Therefore, the registration of the sign ‘TASSOS’ would not prevent third parties from freely using the word ‘THASSOS’ as a reference to the island and the goods and services that originate from it. Consequently, the general interest protected under Article 7(1)(c) will not be jeopardised.

5. The mark ‘TASSOS’ is memorable and inherently distinctive. Therefore, it is

eligible for registration. Only a minimum degree of distinctive character is

sufficient to overcome the objection of lack of distinctiveness.

6. The applicant invoked Article 7(3) as a subsidiary claim.

To address the additional objection pursuant to Article 7(1)(j) EUTMR, the Office raised a second objection on 29/02/2020 because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

In summary, the sign for which registration is sought evokes protected designation of origin (PDO) THROUMBA THASOU’1 (olives) as well as the protected geographical indication (PGI) ‘THASOS’2 (olive oil), which are protected under Regulation (EU) No. 1151/2012 of 21/11/2012 on quality schemes for agricultural products and foodstuffs (Ref. No PDO-GR-0351 and PGI-GR-0377) and therefore is ineligible for registration. The Office proposed limitation to overcome the refusal under Article 7(1)(j) EUTMR for the goods affected by the geographical indication and designation of origin. For the sake of completeness, it should be noted that since the sign is also descriptive and devoid of any distinctive character, the acceptance of the proposed limitation of the goods in principle would not overcome the objection based under 7(1)(b) and (c) EUTMR.

The Office addressed the applicant observations on inherent distinctiveness (which are summarised above) and concluded that the sign ‘TASSOS’ will be perceived as inherently non-distinctive and descriptive of the goods in question or their ingredients. For the reasons set out in both letters of objection, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18094102 was rejected for all the goods claimed (based on inherent distinctiveness).

Furthermore, the Office invited the applicant to submit observations regarding invoked Article 7(3) EUTMR as a subsidiary claim as well as to submit observations to address objection pursuant to Article 7(1)(j) EUTMR.

The applicant failed to submit observations within the time limit addressing the objection under Article 7(1)(j) EUTMR and failed to submit observations regarding invoked subsidiary claim pursuant to Article 7(3) EUTMR. For the reasons set out in the letter of objection, and pursuant to Article 7(1)(j) EUTMR (which cannot be overcome by Article 7(3) EUTMR), the application for European Union trade mark No 18094102 is hereby rejected for the following goods:

Class 29 Processed olives; olive oil; olive spread, paste, sauce, tapenade, pate and dips; olive-based spreads.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18094102 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in Ireland, Malta and UK (English speaking part of the relevant public), Germany, Italy, Lithuania, Poland and Spain 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.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Laima IVANAUSKIENE