Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/06/2020

BEAR & WOLF IP LLP

Third Floor, 57 Farringdon Road

London EC1M 3JB

REINO UNIDO

Application No:	018105815
Your reference:	BAM0011
Trade mark:	BAMBU
Mark type:	Word mark
Applicant:	Bambu Sales, Inc. 501 Penhorn Avenue Unit 10 Secaucus New Jersey 07094 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/09/2019 and on 03/04/2020 pursuant to Article 7(1)(b) and (c) 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 10/01/2020 and on 03/06/2020, which may be summarised as follows:

1. The relevant public would not immediately perceive that the goods at issue would contain bamboo; no direct and specific relationship exists between sign and the goods since these goods are not made of bamboo. Cigar cutters, metal pocket-sized receptacles and containment clips are made of metal. Machines for injecting tobacco into cigarette tubes, vaporizers, electronic cigarettes and related goods are made of plastic or metal. Cigar humidifiers and matches are made of wood. Cigarette refill cartridges are made of glass. Liquified gas cylinders contain flammable liquids and are not made of bamboo. Pouches need to be made of soft materials to be able to fold over or roll up easily; most of them are made of leather or vinyl/cloth. Internet results are not determinative; if the consumers need to run internet checks to perceive the characteristic, Article 7(1)(c) EUTMR falls away.

2. The Office had no justifiable reasons to extend the objection to further goods in its second objection letter.

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

to waive the objection for the following goods:

Class 34 Cigarette tubes; cigarette filters; filter tips; cigar wraps; smoker's articles, namely, filter tubes; tobacco filters.

The objection is maintained for the remaining goods.

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).

1. The relevant Italian-, Spanish, Portuguese- or Swedish-speaking consumer would understand the sign as having the meaning ‘Bambù’ or ‘Bambu’ (translation into the language of the proceedings: ‘Bamboo’).

The word BAMBU will be perceived as a minimal misspelling of ‘Bambù’ by the Italian and the Spanish public. These consumers will, without further mental steps, understand the word BAMBU as meaning ‘Bambù’ in their respective languages. From their view the misspelling is not striking, surprising, unusual, arbitrary or capable of changing the meaning of the word; it does not require some mental effort from these consumers in order to make an immediate and direct link with the aurally and visually nearly identical word ‘Bambù’.

In connection with the goods at issue, the relevant consumers would perceive the sign applied for – BAMBU – as providing information that these goods are (partially) made of bamboo, that they consist of or that they contain (significant parts or elements that are made of) bamboo. Therefore, the sign describes the material which the goods in question are (partially) made of.

As to the applicant’s claim that the relevant consumer would not immediately perceive that the goods at issue contain bamboo, the Office points out that the assessment of a mark has to be carried out in relation to the goods concerned and not in the abstract (23/10/2008, R 752/2008-1, Buch24, § 16: ‘Trade mark law is not a guessing game’). ‘As such this context provides a significant interpretative aid as to how consumers will perceive the contested mark. Even when the mark displays minor elements of vagueness in its conceptual content, when viewed in isolation, such vague or unclear elements can be minimised or eliminated when consumers are confronted with the mark in the context of the relevant goods.’ (20/04/2020, R 13/2020-5, Sleep, § 36).

It must be recalled that under Article 7(1)(c) EUTMR it is irrelevant ‘whether or not the mark refers to characteristics which are commercially essential or merely ancillary’ (10/01/2020, R 2187/2019-1, Leg mask, § 38, referring to 12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102).

As to the applicant’s assertion that the goods at issue ‘are not made of bamboo’, the Office notes that ‘a trade mark which is descriptive of a part incorporated into a product may be deemed descriptive of that product as a whole if the relevant public perceives the characteristics of that part as able to have a significant impact on an essential characteristic of the product itself’ (30/10/2019, R 626/2019-1, ORGANIC & BOTANIC (fig.), § 31; 24/01/2019, R 1422/2018-2, Seamless view, § 18, referring to 10/07/2014, C-126/13 P, EcoDoor, EU:C:2014:2065, § 27). This is the case here.

The results of the Office’s internet search – documented (in excerpts) in the objection letter – show that the goods at issue can be made of bamboo or contain significant parts or elements that consist of bamboo and which would be perceived as an essential characteristic of the product itself by the relevant consumer:

Goods as cigar cutters, metal receptacles, containment clips, vaporizers, electronic cigarettes, gas cylinders and machines for injecting tobacco can be made of metal or plastic and cigarette refill cartridges can be made of glass, as the applicant claims; but they also can contain significant (for instance decorative) bamboo parts and elements (as shown in the objection letter for receptacles, cartridges, electronic cigarettes and vaporizers which can be completely covered with bamboo ornaments) that would be perceived by the relevant consumer as an essential characteristic of the product itself.

Pouches can be made of leather or vinyl/cloth, as the applicant claims; but they can also be made of woven bamboo strips or feature a bamboo handle. Cigar humidifiers and cigar tubes can be made of wood; but they can also be made of bamboo. Matches usually consist of wood, as the applicant claims, but – according to the internet information provided in the objection letter – they could also be made from bamboo.

In this regard it has to be noted that ‘a sign can also be considered to be of merely descriptive nature even if it is not used as a descriptive indicator on the market as yet, but such use could legitimately be conceived in the future’ (19/11/2019, R 856/2019-5, Bluewater, § 40, referring to 23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32 ; 21/01/2009, T 296/07, PharmaCheck, EU:T:2009:12, § 43; 30/04/2013, T 61/12, Slim belly, EU:T:2013:226, § 36; 31/05/2016, T 454/14, STONE (fig.), EU:T:2016:325, § 83; 12/06/2018, T 375/17, BLUE, EU:T:2018:340, § 28).

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 or services of one undertaking from those of other undertakings.

Moreover, the sign applied for – BAMBU – would be perceived by the relevant public as merely informative. It simply indicates to the consumer that the goods are (partially) made of bamboo, that they contain significant parts or elements that are consist of bamboo. The relevant public will not associate any meaning with the sign other than this informative one and will not perceive any particular indication of commercial origin in the sign.

Consequently, 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 to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

2. As to the applicant’s claim that the Office was not allowed to extend the objection in a second objection letter, the Office notes that (according to Article 45(3) EUTMR) even a re-opening of the examination of the absolute grounds for refusal is possible at any stage before the registration of a trade mark; in the case at hand the examination does not even have to be re-opened, it is still ongoing.

For reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (see 27/03/2019, R 1277/2018-1, sleep right. beds (fig.), § 68 and 02/052017, R 2131/2016-1, WINBET ONLINE (fig.), § 52, referring to 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73 et seq.). Therefore, as shown above, the extension of the scope of the objection in a second letter was not only justified, but legally appropriate.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 105 815 is hereby rejected for the following goods:

Class 34 Smokers' rolling trays; cigarette rolling machines; machines allowing smokers to make cigarettes by themselves; pocket apparatus for rolling cigarettes; pocket appliances for rolling one's own cigarettes; pocket devices for self-rolling of cigarettes; pocket machines for rolling cigarettes; pocket-size cigarette rolling machines; tobacco grinders; vaporizers for the ingestion and inhalation of tobacco and other herbal matter; electronic smoking vaporizers, namely, electronic cigarettes, and electronic smoking vaporizers for use as an alternative to traditional cigarettes; smoker's vaporizer pipe cartridge sold empty; smokeless cigar vaporizer pipes; smokeless cigarette vaporizer pipes; ashtrays; cigar and cigarette boxes; cigar cases; cigar cutters; cigar holders; cigar humidifiers; cigar lighters; cigar tubes; cigarette ash receptacles; cigarette cases; cigarette holders; cigarette lighter holder; cigarette lighters not for land vehicles; clips for attaching cigarette lighters onto objects; computerized cigarette lighters; electric cigarettes; electric cigars; electronic cigarettes; electronic cigarette lighters; electronic cigarette refill cartridges sold empty; electronic cigars; electronic hookahs; electronic smoking pipes; hand-held machines for injecting tobacco into cigarette tubes; holder for a cigarette pack and lighter; holders for cigars and cigarettes; hookah parts, namely, hoses, bowls, mouthpieces, and bases; hookahs; humidors; lighters for smokers; liquefied gas cylinders for cigarette lighters; match boxes; match holders; matches; paraffin matches; pipe pouches; pipe tampers; safety matches; smoker's articles, namely, metal pocket-sized receptacles with lids for cigarette butts, rehydration tubes, containment clips used to keep a cigar from falling apart; smoking pipe cleaners; smoking pipe racks; smoking pipes; smoking urns; snuff boxes; snuff dispensers; sulfur matches; tobacco jars; tobacco pipe cleaners; tobacco pipes; tobacco pouches; tobacco tins; tobacco water pipes; yellow phosphorus matches.

The application may proceed for the remaining goods:

Class 34 Cigarette tubes; cigarette filters; filter tips; cigar wraps; flints and firestones; flints for lighters; lighter flints; smoker's articles, namely, filter tubes, keystones for pipes, cigar glue, cigar relighting liquid solution; tobacco filters.

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.

Thorsten Ickenroth