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

(Article 7 EUTMR)

Alicante, 01/12/2020

Brand Murray Fuller LLP

50 Eastcastle Street

London W1W 8EA

REINO UNIDO

Application No:	018094311
Your reference:	T22029EM
Trade mark:
Mark type:	Three-dimensional
Applicant:	Organicix, LLC 6770 Paradise Road Las Vegas Nevada 89119 UNITED STATES

The Office raised objections on 05/08/2019 and 07/01/2020 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letters.

The applicant submitted its observations on 09/12/2019, which may be summarised as follows.

• The appearance of the mark for which protection is sought departs significantly from the norms and customs of the relevant sector. The relevant consumer would in no way regard the shape which is the subject of the application as typical of the shape of the goods in question, or as a mere variant thereof.

• The applicant has submitted images which are allegedly results of an online search according to the following criteria: electronic+smoking+vapourisers.

• The goods in question are not throw-away items; they are sophisticatedly engineered products designed to appeal to the aesthetic sensibilities of the relevant consumer and to be kept and re-used many times. The consumer therefore selects the product with care and deliberation.

• The mark in question has a large number of distinctive elements which are by no means common in the sector individually, let alone collectively. These include the overall shape of the product, its curved edges at the top and bottom, the dotted grid on its main surface, the oval inlay and patterned device on the top, and the shape and juxtaposition of the hinges and control buttons down its side. None of these features are common in the field and the combination of elements gives the device a particular appearance of an unusual and individual character which collectively act as an indication of origin.

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.

Lack of distinctiveness – 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).

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 (3D), EU:C:2004:258, § 38).

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [EUTMR]’ (12/01/2006, C‑173/04 P, Standbeutel, EU:C:2006:20, § 31).

The sign for which protection is sought consists merely of a combination of presentational features of a vaporiser for smoking that would be seen by the relevant consumer as typical of the shape of the goods in question. This shape is not markedly different from shapes commonly used in trade for the goods at issue; it is merely a variation thereof. Reference is made to the examples of similar shapes of vaporisers provided in the Office notification dated 07/01/2020.

The examples provided by the applicant in support of its statement that the mark applied for departs significantly from the norms and customs of the relevant sector are not conclusive. It is not clear from the search results when and where the search has been performed. The search results are also not exhaustive and do not show all the existing shapes of electronic smoking vaporisers that are offered on the market. They are rather a sample of possible existing shapes. Indeed, the goods in question may appear in different shapes and the Office has not concluded that there is only one possible shape of these goods. However, with the examples provided, the Office has demonstrated that the mark applied for does not depart significantly from a shape (one of the possible shapes) in which the goods in question are offered.

Furthermore, in order to ascertain whether the shape of the electronic smoking vapouriser in question may be perceived by the public as an indication of origin, the overall impression created by the appearance of those electronic smoking vapourisers must be analysed (24/11/2004, T‑393/02, Kopfflasche, EU:T:2004:342, § 37). In this regard, it is irrelevant whether all the presentational features of the sign applied for as described by the applicant, for example, curved edges at the top and bottom, a dotted grid on the major surface, an oval inlay etc., are common for the shape of such goods. Consumers do not focus on the smallest details of the graphic representation of a trade mark and, as mentioned above, it is the overall impression created by the sign that is important. Furthermore, it is decisive in the assessment whether the shape which is represented in the application departs significantly from the norms and customs of the relevant sector. Small deviations from such norms and customs do not endow the trade mark with distinctiveness when the overall impression created by the sign would be seen by the relevant consumer as typical of the shape of the goods in question.

In relation to the applicant’s argument that the goods in question are sophisticatedly engineered and designed to appeal to the aesthetic sensibilities of the relevant consumers, the assessment of the mark applied for needs to be carried out in relation to the goods as applied for. Features that are not apparent from the specifications of the goods covered are irrelevant and cannot be taken into consideration. In this regard, from the specification of electronic smoking vapourisers, neither a degree of sophistication nor an enhanced quality of these goods is apparent, or can be assumed, as alleged by the applicant.

The applicant’s assertion that consumers will select the products with care and deliberation can be interpreted as a claim that the degree of attention will be high. However, this argument is not conclusive. It is 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). The degree of attention of the relevant public is average, contrary to the applicant’s assertions, because the goods are not specialised by their nature, they are rather ordinary, not expensive and purchased often (especially by regular smokers). Even if the degree of attention were high, this would not lead to a different conclusion because a higher degree of attention of the public concerned does not endow the sign with distinctiveness and does not enable the public to more readily see a badge of trade origin in signs which are non-distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for EUTM No 18 094 311 is declared to be non-distinctive pursuant to Article 7(1)(b) in in the European Union 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.

Ivo TSENKOV