Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/02/2020

Baker & Mckenzie

Bethmannstr. 50-54

D-60311 Frankfurt/Main

Germany

Application No:	18103916
Your reference:	RN/kt-FlavorAboveAll
Trade mark:	FLAVOR ABOVE ALL
Mark type:	Word mark
Applicant:	Weber-Stephen Products LLC 1415 S. Roselle Road Palatine Illinois 60067 United States of America

The Office raised a total objection on 05/09/2019 pursuant to Article 7(1)(b) EUTMR 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 an integral part of this decision.

In its communications received by the Office on 03/01/2020, the applicant submitted its observations which may be summarized as follows:

1. Neither the sign’s components nor their combination is devoid of any distinctiveness. The word ‘flavour’ refers to foodstuff, however, the relevant goods cannot be eaten and thus they have no taste at all and have no flavour. Barbecue grills or smokers and/or fuel do not give taste to food. Therefore, the component "flavor" does not directly describe characteristics of the relevant goods. The method of preparation or certain additives may add flavour, but the claimed goods by themselves cannot.

2. The composed term "FLAVOR ABOVE ALL" is, contrary to the view of the Office, no laudatory slogan. A slogan needs to convey a promotional message with regard to qualities of features of the covered goods. This is not the case here.

3. The registry shows a number of prior European Union Trademarks that are successfully registered for goods and services, inter alia in the same classes, which contain the phrase "above all" or "flavor":

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

The Office maintains that the sign conveys an obvious message that the goods may be designed and used with the purpose of meeting customer needs in relation to taste of food prepared by using the goods at issue. The combination of the word ‘flavour’ and the term ‘above all’ merely refers to this feature of the goods, in a laudatory and non-distinctive way. It follows that consumers will require no particular mental effort to see the direct link between the message and the goods. In this regard, contrary to the applicant’s assertion that consumers would first need to make the step to realize that the goods relate to food, the wording of the specification of the goods (fuel for outdoor cooking devices, namely, barbecue grills and smokers and outdoor cooking devices, namely, barbecue grills and smokers) leaves no doubt in any consumer’s mind that the goods are intended to be used for preparing food in relation to which flavour is a fundamental and essential aspect and quality to be considered. While the applicant argues that the goods at issue are not used to give flavour to food, the Office also makes reference to the market evidence provided in the objection notice and merely cites, as an example, one of the articles which explains that “Dry hardwood is perhaps the most traditional of all fuels used for barbecuing. (…)Different varieties of wood are often used to impart unique flavours into the food and is more commonly used in barbecue situations where smoke or extra flavour is a requirement.”.

2.

As to the laudatory nature of the sign, the dictionary definition (‘most importantly’) and the common meaning of the term ‘above all’ clearly indicate that this is a banal reference to the importance of a certain goal (to be achieved by using the goods at issue). Therefore, in combination with the word ‘flavour’, this term merely emphasizes in a laudatory manner the desired, positive, effect of the goods.

3.

With regard to the fact that signs containing the same terms were already registered, it must be recalled that, 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). Furthermore, 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 addition, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature.

Conclusion

Overall, while the applicant argues that consumers would not immediately understand the term ‘Flavour above all’ in relation to the goods, it in fact has failed to provide any further or different interpretation of the sign or that of the sign’s components. Indeed, the sign is not capable of creating an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed.

It is recalled that a given term is objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information concerning the use of the goods and not as indicating their origin (see, as analogy, judgment of 12/07/2012, T-470/09, Medi, EU:T:2012:369, § 36). Accordingly, the Office maintains its arguments that the sign at issue will be perceived as providing information as to the desired effect of the use of the goods, expressing this in combination with a laudatory term, as explained in the objection notice.

In the objection notice, the Office stated that the relevant public is composed of the English-speaking consumers. It is further clarified, as was already established by numerous case-law, that this public, which exercises an average degree of attention in the present case, consists of consumers of the United Kingdom, Ireland and Malta, where English is one of the official languages as well as the public in countries where English is adequately understood, such as Finland, Sweden, Denmark, the Netherlands and Cyprus (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23, and 09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26 and 53). This is because the sign is composed of rather basic English words.

Based on all the foregoing, it is concluded that given the unambiguous message and information conveyed, the sign is directly related to the goods claimed to such an extent that the relevant public, immediately and without further reflection, would see in it an indication of its positive feature. Therefore, the connection between the relevant goods and the sign is not sufficiently indirect as required under Article 7(1)(b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 103 916 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