Decision on the inherent distinctiveness of an application for a

European Union trade mark (Article 7 EUTMR)

Alicante, 30/03/2020

URQUHART-DYKES & LORD LLP

Churchill House

Churchill Way

Cardiff CF10 2HH

REINO UNIDO

Application No:	018105114
Your reference:	T512224EM/ATH
Trade mark:	SMOOTHSKIN
Mark type:	Word mark
Applicant:	CyDen Limited Office Block A, Bay Studios Business Park, Fabian Way, Swansea SA1 8QB REINO UNIDO

The Office raised an objection on 05/09/2019 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 09/01/2020 that may be summarised as follows:

• The trade mark at issue is of a non-descriptive and distinctive character.

• The word SMOOTHSKIN is not a word that exists in the English language. It is a word invented by the Applicant and is in use in this form only by the Applicant for the relevant goods. Google search results against “smoothskin”, showing only results for the Applicant. Were this an entirely and exclusively descriptive sign, one would expect at least some results relating to other businesses/undertakings in relation to the relevant goods.

• It is submitted that given certain goods in Class 8 do not treat the skin and indeed have no actual effect on the skin at all, focusing on hair and most importantly the hair follicle.

• Whilst allusive, the sign is one step away from descriptive especially in respect of these goods, and therefore has sufficient distinctive character to be capable of performing its essential function for these goods in particular.

Decision

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.

General remarks on Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ 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). By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 31). ‘The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T 222/02, Robotunits, EU:T:2003:315, § 34).

In response to the applicant’s submissions, the Office states the following:

The relevant public

Regarding the goods to which an objection has been raised, the Office considers that they both belong to a highly specialised market sector and are used by the average consumer.

It must be held that the fact that the part of the relevant public is specialist or has a higher degree of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Even if the degree of attention of the relevant public (general and professional) is higher than average, it does not necessarily follow that a weaker distinctive character of a sign is sufficient to render a sign registrable (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the fact that they are related to engineering, 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).

The descriptive character of the trade mark applied for

As already explained in the enclosed notice of grounds for refusal, the trade mark applied for consists of the words ‘SMOOTH’ and ‘SKIN’. Taken as a whole, the term ‘SMOOTHSKIN’ immediately informs consumers without further reflection as having the following meaning: smooth skin. The goods at hand are related to cosmetics. Consequently, when the relevant consumer, who is reasonably well-informed and reasonably observant and circumspect, encounters the sign ‘SMOOTHSKIN’ on such goods it is highly likely that it will be perceived as descriptive.

SMOOTHSKIN in relation to cosmetics refers to the outcome of a successful beauty care treatment which leaves the skin with a soft touch. Therefore, the relevant consumers would perceive the sign as an indication of the kind, nature or intended purpose of the goods concerned in Classes 8 and 10, namely as cosmetic or therapeutic devices for skin treatment which cause the skin to become or remain smooth.

The applicant argues that certain goods in Class 8 were not treating the skin, but rather focusing on hair. Taking into consideration the facts that hair is a part of the skin on the one hand and that skin is usually softer after a depilation on the other, the applicant‘s argument is deemed void.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

Similarly, the applicant's argument that the word combination 'SMOOTHSKIN' is used on the market only in the context of and as an indication of the applicant and that an internet search via Google refers mainly to the applicant itself, which confirms that the relevant public will see the sign as an indication of origin of the applicant, is also futile. First, the search was not carried out in relation to the goods at issue in the proceedings. On the other hand, the hits of a Google search also depend on how often the individual user enters a term via his own IP address or in which country he does so. Moreover, the frequency of a term among the hits of a Google search bears no relation to the actual perception of that term by the public. On the contrary, the intensive presence of the term in question in the Google search can only be regarded as the result of a successful marketing campaign on the internet carried out by the applicant itself, since a high number of hits can be obtained relatively easily, for example, by using meta-tags to improve the ranking of a website (search engine optimisation or SEO). (10/07/2017, R-1547/2016-5, Gute Ideen voller Energie, § 34)

Since the trade mark at issue 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 (judgment of 19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31). A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates 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, with the result that the word is more than the sum of its parts (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T 173/03, Nurseryroom, EU:T:2004:347, § 21).

In the present case, the trade mark applied for considered as a whole, does not require any additional mental effort in order to lead the relevant public to the perception of describing the goods at issue as an indication of their kind, nature and intended purpose. Therefore, the neologism in question does not create 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 and, hence, not more than the sum of its parts.

Furthermore, the sign is not allusive or one-step away from descriptive. As a main rule, the mere combination of several descriptive terms remains essentially descriptive. The only exception is where the unusual nature of the combination of word elements creates an overall impression which is sufficiently far removed from that produced by the mere combination of its constituent elements, thereby making the resulting compound term more than the mere sum of its parts (19/04/2007, C-273/05 P, Celltech, EU:C:2007:224, § 76,78). Furthermore, given that the words ‘SMOOTH’ and ‘SKIN’ are well-known basic words with a clear and distinct concept, combined in accordance with English grammar rules without any graphic or semantic modification, the relevant consumer will immediately and without any mental effort deduce the conceptual content of the combined mark as stated in the letter of 05/09/2019.

On the non-distinctive character of the trade mark

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods of one undertaking from those of its competitors.

The sign for which protection is sought would simply be seen in the relevant market sector as a laudatory expression, the function of which is to communicate a customer service statement. 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 Classes 8 and 10, namely that they promise to provide consumers with a soft complexion.

The Office agrees that a sign must be considered as a whole; in the present case it is the whole term that is descriptive and non-distinctive. As already explained, ‘SMOOTHSKIN’ describes characteristics of the goods in question. The term is not allusive or one step away from distinctive; English speaking consumers must be expected to immediately understand the meaning of a combined noun describing the goods at issue. Therefore, the Office maintains that the sign in question 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 or allusive 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, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

When assessing the sign ‘SMOOTHSKIN’ as a whole, it cannot be considered as allusive or one step away from distinctive to the extent that it would make the sign distinctive. The expression ‘SMOOTHSKIN’ will be perceived as ordinary, easily understandable and grammatically correct. Contrary to the applicant’s argument, it is highly unlikely that the average consumer, when seeing the expression ‘SMOOTHSKIN’ in relation to the goods at issue, would perceive it as allusive or one step away from distinctive. An artificial and fastidious linguistic analysis would be needed to deem this expression to have no particular meaning or to find that it has particular grammatical originality, whereas the perception of it according to the direct meanings of the component words is likely to be automatic.

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 18 105 114 is declared to be descriptive and devoid of any distinctive character in the UK, Ireland and Malta.

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.

Frank MANTEY