Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/02/2020

IOANNIDES, CLEANTHOUS & CO LLC

4 Prometheus Street 1st floor

CY-1065 Nicosia

CHIPRE

Application No:	018103607
Your reference:	IP662
Trade mark:	GOLD ONE
Mark type:	Word mark
Applicant:	SELECT JEWELRY, INC. 47-28 37th Street, 3rd Floor LONG ISLAND CITY (NEW YORK) New York 11101 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/08/2019 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, which forms part of this refusal.

Following the grant of an extension of time, the applicant submitted its observations on 23/12/2019 which may be summarised as follows.

1. The sign GOLD ONE is fanciful and distinctive, irrespective of whether it implies a brief promotional message. As a whole, the sign does not provide any information or reference to the nature and characteristics of the goods applied for in Class 14. The expression GOLD ONE does not have a clear, delineated meaning but is merely vague and allusive, bearing no direct descriptive relationship to the goods. The sign is a fanciful and distinctive union of two words and the presence in it of descriptive of generic words does not make it descriptive. Conversely, descriptiveness must be assessed based on the totality of the sign and on this basis, it cannot be held to be descriptive.

2. The combination of the words ‘GOLD’ and ‘ONE’ is lexically and grammatically unusual.

3. The level of attention of the public is a relevant factor. In particular, the goods in Class 14, being jewellery, are not everyday consumer items such that the relevant consumer will exercise a higher degree of care and attention.

4. The Office has accepted for registration for goods in Class 14 a number of signs with a similar structure to the mark applied for, such as GOLD SILK and GOLD SHEEN, or GOLD-CARD.

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.

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C 517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T 138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

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, EU:C:2004:258, § 38).

Moreover, it is also 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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 21).

As to the applicant’s arguments

1. The mark applied for is composed of the words, ‘GOLD ONE ’.

Bearing in mind the definitions and analysis already provided in the Notice of grounds for refusal on 26/08/2019, the sign as a whole is immediately intelligible to English-speakers as a meaningful word combination.

The words ‘GOLD ONE’ will simply be perceived by the relevant English-speaking public as a conjunction of two words which, together, do no more than provide a promotional laudatory message that is plain, direct and unambiguous and, therefore, unlikely to be perceived as an indicator of commercial origin.

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 goods in question, namely that they consist of or contain gold or are otherwise precious.

In relation to jewellery goods in Class 14, the words ‘GOLD ONE’ constitute a laudatory message whose only objective is to provide a positive view of the specified goods. Moreover, it constitutes a simple message that could be attributed to any producer with the consequence that it does not indicate the commercial origin of those goods.

2. There is nothing unusual about the sign’s structure and the meaning of the sign is clear, as explained above. The sign follows ordinary English grammar and spelling rules i.e. the adjective ‘GOLD’ followed by the noun to which it relates, ‘ONE’. In that regard, the Office observes that the English word ‘GOLD’ may be used either as an adjective or a noun so that the word combination ‘GOLD ONE’ is grammatically-correct English. In any event, the Office points out that even grammatically incorrect terms are not an obstacle for an objection under Article 7 (1)(b) EUTMR.

The way in which the two words GOLD ONE are combined is not in itself fanciful. There is no unusual variation in syntax or meaning. As a result, the applicant has failed to prove the fanciful and distinctive nature of the word combination in relation to the goods.

The Office respectfully disagrees with the applicant’s argument that the words ‘GOLD’ and ‘ONE’ have no clear, delineated meaning but are merely vague and allusive. It is highly unlikely that English speakers, when faced with the word combination ‘GOLD’ and ‘ONE’, would not be able to pick out the promotional laudatory meaning set out above. It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as generic and not as the trade mark of a particular proprietor. Signs consisting of a mere promotional formula are often written in a simplified form, in such a way so as to make them more concise and ‘snappier’. Consumers are accustomed to short, compact and punchy promotional messages and so do not grant trade mark value to such marketing claims.

3. With respect to the applicant’s argument that the inherent distinctiveness depends on the degree of attention of the relevant public, the Office points out that even if the awareness of part of the relevant public is high, given the relatively high cost of the goods, 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).

4. Finally, as regards the applicant’s argument that a number of similar registrations have been accepted by the Office, 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).

In light of the above observations, the Office maintains that the sign is devoid of any distinctive character with respect to the goods applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 103 607 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.

Kieran HENEGHAN