Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/02/2020

HIRSCH & ASSOCIÉS

137 rue de l'Université

F-75007 Paris

FRANCIA

Application No:	018112920
Your reference:	24971MAFZLCTMCDLyp
Trade mark:	WILD BOTANICAL GIN
Mark type:	Word mark
Applicant:	Glendalough Irish Whiskey Limited 9 Newtown BEC Newtownmountkennedy Wicklow Wicklow IRLANDA

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

• The trade mark applied for is not descriptive and does not need to be kept free for other traders to use. The sign has a minimum degree of distinctiveness.

• The sign is not a term used in everyday parlance. It is an invented phrase coined by the applicant and must be assessed as a whole and not merely regarding its elements.

• The sign is extremely unusual, very syntactically unusual, creative and allusive.

• The EUIPO has accepted other trade marks containing the term ‘GIN’.

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.

In the present case, the Office does not reintroduce arguments which have already been discussed, but builds on those arguments and, in this refusal, addresses the arguments of the applicant in its observations of 08/11/2019.

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).

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 in the field of alcoholic beverages 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 the goods in question, even if the awareness of part of the relevant public is high, given the fact that they are related to alcoholic beverages, 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).

On 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 terms ‘WILD’ ‘BOTANICAL’ and ‘GIN’. Furthermore, since the term ‘WILD BOTANICAL GIN’ consists of English words, the relevant public in relation to which the absolute grounds for refusal are to be examined is the English-speaking public within the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30). Taken as a whole, the term ‘WILD BOTANICAL GIN’ immediately informs English-speaking consumers without further reflection that the sign means wild botanical gin and therefore, that the goods applied for are gin made of wild botanicals.

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). The question whether or not the term is used in everyday parlance is therefore not relevant.

The structure of the sign in question does not diverge from English grammar rules but rather complies with them. Therefore, the relevant consumers would perceive the sign as providing information about the kind, nature or intended purpose of the goods concerned in Class 33, namely as gin made of wild botanicals.

Since the sign at issue is made up of several components (a compound mark) or an invented phrase, 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 trade mark’s individual components in turn (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 being wild botanical gin. Therefore, the sign conveys obvious and direct information regarding the intended purpose, nature or kind of the goods in question. The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind.

It follows that the link between the words ‘WILD BOTANICAL GIN’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR. Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

On the non-distinctive character of the trade mark

As explained in the enclosed letter, and according to the case-law of the Court of Justice, the fact that a sign is descriptive of a characteristic of the goods or services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39). This is clearly applicable to the present case, as has been demonstrated above. Given that the sign has a clearly descriptive meaning in relation to the goods applied for, the impact of the sign on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the sign could indicate a trade origin.

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, a value statement, and an inspirational or motivational 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 Class 33, namely that they promise to be gin made of wild botanicals.

When assessing the sign ‘WILD BOTANICAL GIN’ as a whole, it cannot be considered extremely unusual, very syntactically unusual, creative and allusive to the extent that it would make the sign distinctive. The grammatical peculiarities indicated by the applicant do not have any impact on the descriptiveness and non-distinctiveness of the mark ‘WILD BOTANICAL GIN’, since a trade mark is not subject to strict grammar rules and, in the context of commercial and advertising language – where the rules of written English are often disregarded by using simple statements to highlight aspects of the goods and services to attract consumers – the expression ‘WILD BOTANICAL GIN’ 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 ‘WILD BOTANICAL GIN’ in relation to the goods at issue, would perceive it as an extremely unusual, very syntactically unusual, creative and allusive term. 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.

Therefore, the sign applied for is as well ineligible for registration under Article 7(1)(b) and Article 7(2) EUTMR because it is devoid of any distinctive character.

Previous case law from the Office

As regards the applicant’s argument that 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). ‘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).

The applicant submitted a total of 15 examples for EUTM registrations in Class 33 containing the term ‘GIN’, such as No ‘W01 476 882’ ‘GLACIER GIN’, No 17 199 258 ‘Gentle Gin’ or No 15 218 282 ‘BALTIC DRY GIN’.

However, these trade marks differ from the sign at issue, in particular since they do not coincide in their respective word elements apart from the descriptive term ‘GIN’. Therefore, they may have a different overall meaning in relation to the goods in question. Furthermore, it should be pointed out that the submitted examples of EUTM registrations may have been carried out under different administrative practice standards. Since then, the practice of registration may have evolved in accordance with the highest juridical jurisprudence.

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 18 112 920 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.

Frank MANTEY