Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/01/2020

Causeway Law Limited

6 Hays Lane

London SE1 2HB

REINO UNIDO

Application No:	018107322
Your reference:	ES/ThreePears
Trade mark:	LICEBUSTER
Mark type:	Word mark
Applicant:	Three Pears Holdings Limited Unit 6, Station Road Industrial Estate, Station Road, Rowley Regis Warley B65 0JY REINO UNIDO

The Office raised an objection on 10/09/2019 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 08/11/2019, which may be summarised as follows.

As regards trade marks composed of words, such as the mark at issue, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. It is submitted that the term “LICEBUSTER”, which is a made up compound word that cannot be found in any dictionary, is not a term that is used in common parlance amongst the relevant consumer (which we agree is English-speaking) to designate any of the goods or services covered by the Application. The applicant makes reference to previous similar EU and national registrations.

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)(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).

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 (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). The Office has done so in its previous communication and found the parts separately and the mark as a whole to be descriptive and non-distinctive therefore. In the present case, the relevant consumers would perceive the sign as providing clear and direct information that the goods are hair products, either medicated or not, and treatments to destroy lice parasites. Therefore, the sign describes the kind and intended purpose of the goods in question. The message conveyed by the mark applied for is clear, direct and immediate. It is not in any way ambiguous, there is only one way to interpret the meaning.

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, emphasis added.)

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).

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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, the marks cited are not comparable to the present mark and the facts of each case are different.

The EUIPO and its Boards of Appeal strive to act consistently, but each case must be considered separately. Even though in some earlier cases the examiner may, in the opinion of the applicant, have applied a less strict approach to marks that in some respects are reminiscent of the one being applied for, the contested decision is, however, in harmony with the most recent decisions of the EU Courts and Boards of Appeal.

‘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).

Since the mark under application, considered as a whole, is clearly descriptive in terms of the goods concerned, the relevant public will consider it primarily as descriptive, which clouds the impression that the mark could indicate a commercial origin. Hence, the mark applied for, when considered as a whole, is devoid of any distinctive character in terms of the goods concerned and it cannot be registered under Article 7(1)(b) EUTMR. A mark which is descriptive of the characteristics of goods is necessarily devoid of any distinctive character with regard to the same goods within the meaning of Article 7(1)(b) (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86, and 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited).

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 18107322 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.

Erkki Münter