Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/06/2020

ARCADE & ASOCIADOS

C/ Isabel Colbrand, 6 - 5ª planta

E-28050 Madrid

ESPAÑA

Application No:	018110613
Your reference:	12404
Trade mark:	My flight pack
Mark type:	Word mark
Applicant:	ERW ApS Wildersplads 8c DK-1403 COPENHAGEN DINAMARCA

The Office raised an objection on 02/10/2019 pursuant to Article 7(1)(b) and (c) 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.

On 02/12/2020, the Applicant requested an extension of two months for submitting his arguments in reply.

The applicant submitted its observations on 04/12/2019, which may be summarised as follows:

• the words “MY”, “FLIGHT” and “PACK”, do not have descriptive connotations with respect to the nature, purpose, quality, characteristics nor composition of the cites goods covered by the defended mark

• the possessive pronoun "MY" gives an obvious distinction to the mark in question as it personalizes the meaning of the remaining words

• there is not relationship concrete, direct and without further reflection between the mark and its cited products

• in addition, the Applicant argues that this remote relationship between the mark “My flight pack” and the applied products is only available to a minority part of the consumer of the EU territory, English and Irish, for the vast majority of EU consumers who speak other languages, this remote relationship is non-existent

• the mark “My flight pack” is only a suggestive and is perfectly distinctive for all goods claimed in the application

• the Applicant refers the Board to The Baby-Dry case

• “My flight pack” is not, in any, common mode on the market to describe the characteristics of all the goods covered,

• The Applicant refers to a number of resolutions of the Board of Appeals

• The Office has admitted so normal and frequent marks composed of terms alluding to the nature, characteristics, qualities, origin or purpose of the differentiated product or services

• The mark “My flight pack” has been accepted by the Danish Patent and Trademark Office (DKPO).

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 for all the goods applied for in Class 2 pursuant to 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).

As regards the applicant’s first line of argument that the words “MY”, “FLIGHT” and “PACK”, do not have descriptive connotations with respect to the nature, purpose, quality, characteristics nor composition of the cited goods covered by the defended mark, the Office respectfully does not completely share this argument. Although it is true that the terms “MY”, “FLIGHT” and “PACK” do not have descriptive connotations with respect to the quality, nor the composition of the goods in question, in the Office’s view, the sign “My flight pack” does describe the kind and intended purpose of the goods for which protection is sought. As already noted in our previous notification of 02/10/2019, the Office maintains that the relevant consumers would perceive the sign as providing information that the dietary supplements applied for in Class 5 are being retailed in small packages for travelling purposes (specifically to be taken with, when travelling by airplane for example). Therefore, a word sign must be refused registration if at least one of its potential meanings designates a characteristic of the goods or services concerned (17/01/2019, T-40/18, SOLIDPOWER, EU:T:2019:18, § 37 and the case-law cited therein).

The Applicant argues that the possessive pronoun "MY" gives an obvious distinction to the mark in question as it personalizes the meaning of the remaining words. The Office does not share this argument and recalls that in the field of advertising the possessive adjective ‘my’ is frequently used together with other verbal elements for the purpose of addressing the consumer directly and indicating that the goods or services being promoted can be customized (13/09/2018, R1312/2018-5 ‘myPerfectcover letter (fig.)’.

As regards the Applicant’s next line of argument that there is not relationship concrete, direct and without further reflection between the mark and its cited products, the Office respectfully disagrees with the Applicant. The Office has thoroughly demonstrated in this communication and in the notification of 02/12/2019 that the sign has a strong descriptive meaning and lacks therefore of any distinctive character pursuant Article 7(1)(c) and (b) EUTMR. Therefore, the relevant public will not tend to perceive any particular indication of commercial origin beyond the information conveyed by the sign. Consequently, the Office is convinced that the relevant consumer would perceive the sign as providing information that the dietary supplements applied for in Class 5 are being retailed in small packages to be taken with, that can be adapted to the individual needs of each users, when travelling by airplane.

The Applicant further argues that this remote relationship between the mark “My flight pack” and the applied products is only available to a minority part of the consumer of the EU territory, English and Irish, for the vast majority of EU consumers who speak other languages, this remote relationship is non-existent. The Office points out that the sign applied for consists of three English words, and that account should be taken of the public in the English-speaking territory of the European Union, namely at least in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection ((22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26;

27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

In this regard, it should be recalled that pursuant to Article 7(2) EUTMR, a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an obstacle pertaining to the English-speaking public of the European Union is deemed to be sufficient in order to reject the EUTM applied for (Case R 1312/2018-5 “MyPerfectcoverletter”, paragraph 24).

The Applicant further argues that the mark “My flight pack” is only suggestive and is perfectly distinctive for all goods claimed in the application. The Office recalls that it is on the basis of its acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

As regards the Applicant’s reference to The BABY-DRY judgment, it must be noted that it was the first judgment given by the Court of Justice in relation to the Community trade mark, and one of its first pronouncements on the subject of absolute grounds for refusal. Since then the Court’s case law has evolved considerably. The Court has upheld a judgment of the Court of First Instance holding that COMPANYLINE was devoid of distinctive character for insurance services (Case C-104/00 P DKV Deutsche Krankenversicherung AG v OHIM [2002] ECR I-7561). It has annulled the judgment of the Court of First Instance which had held that DOUBLEMINT was not descriptive of chewing gum (Case C-191/01 P Wrigley v OHIM [2003] ECR I-12447). It has dismissed as clearly unfounded, by way of a reasoned order, appeals against judgments of the Court of First Instance which held that STREAMSERVE was descriptive of computers and related goods (Case C-150/02 P Streamserve Inc. v OHIM [2004] ECR I-1461) and that UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS were descriptive of printed matter and reference works amongst other things (Case C-326/01 P Telefon & Buch VerlagsgmbH v OHIM[2004] ECR I-1371). Moreover, Advocate General Jacobs has delivered an opinion inviting the Court to annul the judgment in which the Court of First Instance held that NEW BORN BABY was not a descriptive trade mark for dolls. Following that opinion the application to register NEW BORN BABY as a trade mark was withdrawn (see Case C-498/01 P OHIM v Zapf Creation AG [2004] ECR I-11349).

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The Applicant refers to a number of resolutions of the Board of Appeals. As regards the resolution of the Appeal Board No. 3 of OHIM, dated on November 20,2002, that annulled the decision of the Trademark Division refusing the mark “N-NETWORK” for products and services in classes 09, 16 and 42, the Office submits that this case is not applicable for the case at hand. The link between the term ‘m-Network’ and these goods and services appears to be too vague and indeterminate to confer an exclusive descriptive character on that term in relation to those goods and services, which is absolutely not the case for the sign for which protection is sought.

The Office claims that the sign applied for “My flight pack” is ineligible for registration under Article 7(1)(b) and (c) and Article 7(2) EUTMR, because it describes certain characteristics of the goods for which protection is sought. Therefore a mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR, is necessarily devoid of any distinctive character in relation to those goods within the meaning of Article 7(1)(b) EUTMR (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 therein).

Moreover, a mark which, as in the case at hand, would simply be seen as descriptive, cannot guarantee the identity of the origin of the marked goods to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods from other which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

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).

For reasons of legal certainty and, indeed, 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. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C- 51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited therein).

Finally, 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).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018110613 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.

Soledad PALACIO MONTILLA