Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/04/2020

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	018117705
Your reference:	ALI-T-733202
Trade mark:
Mark type:	Figurative mark
Applicant:	The Real Good Food Company LLC 111 N. Artsakh Avenue 91206 Glendale California ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 18/09/2019 pursuant to Article 7(1)(b) 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.

The applicant submitted its observations on 10/01/2020 which may be summarised as follows:

1. The mark is not descriptive and has distinctive character for all goods applied for. The level of distinctiveness required under Art. 7(1)(b) EUTMR is minimal. If the public perceives the mark as an indication of origin, the fact that the mark is at the same time – even primarily – understood as a promotional formula has no bearing on its distinctive character; a sign is devoid of distinctive character if it is perceived by the relevant public as a mere promotional formula and nothing else. It is necessary to examine whether its figurative elements allow the mark to diverge from the mere perception of the word elements used.

The sign has at the very least this minimal level of inherent distinctiveness, in particular due to its high level of stylization. The verbal element REALGOOD contains highly stylized font. The two letters ‘o’ are highly stylized and resemble the shape of a pair of eyes, a device that has no relation to the goods claimed. The letter ‘R’ is unique, with its upper part almost forming a circle and also resembling the shape of a ‘J’ on the left. The letter ‘g’ is fanciful and includes a forward-facing descender which resembles a stylized ribbon and gives an impression that it continues the preceding letter ‘l’; it also touches the stylized thumb. The thumbs up device is also fanciful and is depicted as propping up or balancing the entire verbal element. The figurative elements are, on account of their central position and prominent size, at least co-dominant – if not dominant – in the overall impression produced by the sign.

The Office provided insufficient reasoning in the objection letter; it did not carry out an assessment as regards each of the goods claimed. The Court of Justice has acknowledged that the reasoning may be general for all the goods in question where the same ground for refusal is given for a category or group of goods which form a sufficiently homogeneous category; however, in the present case the Office did not categorize the goods and identify any homogeneity among them.

The General Court confirmed in relation to goods in Classes 29 and 30 that the term REAL QUALITY is not devoid of distinctive character (T-816/14, paras 60-64).

We refer to the decisions 08/10/2019, R 1125/2019-4, THE GOOD CIDER OF SAN Sebastian SINCE 1918 (fig.) and 1990/2016-5; the Boards of Appeal have considered in both decisions that the figurative elements allow the signs to function as trademarks.

The UKIPO accepted the registration of the same figurative mark; this decision indicates that even native English speakers would not perceive the sign applied for as non-distinctive.

2. The Office registered several comparable marks: EUTM 10481174 for Class 32, EUTM 11789757 in Classes 29 and 30, EUTM 6930655 in Classes 29 and 30, IR 1241385 in Classes 35, 36, 38, 42. These registrations confirm the established practice that terms as Terms as ‘real’ and ‘good’ can be distinctive for the goods at issue, in particular when combined with figurative elements. Due weight should be given to comparable prior decisions; the principles of equal treatment and sound administration are equally important.

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.

1. The sign applied for is devoid of any distinctive character.

With regard to the applicant’s – incorrect – claim that the Office stated in the objection letter that the sign applied for “is descriptive”, the Office notes that the mere fact that a sign is not descriptive does not automatically confer distinctive character upon it (30/04/2003, T-707/13 & T-709/13, BE HAPPY, EU:T:2015:252, § 32; 12/02/2004 ‚ C-363/99, Postkantoor, EU:C:2004:86, § 44; 30/03/2015, R 2459/2014-2, REMARKABLE, § 22). (08/07/2019, R 567/2019-2, Mach dein Leben bunter, § 15).

While it is true that a minimum degree of distinctiveness is sufficient to register a mark, this is not the case here; the sign applied for is entirely devoid of distinctive character in conjunction with the goods claimed.

It has to be kept in mind that a sign is not distinctive if its semantic content

‘indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods’ (30.06.2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

This is the case here. The sign unambiguously indicates to the consumer favourable aspects of the goods claimed relating to their market value and merely conveys a promotional information which is – in the perception of the relevant public – clearly linked to the goods claimed.

The sign would be understood by the relevant English-speaking average consumer as having the meaning ‘truly of high quality’ (see 04/03/2016, R 1125/2015-4, REALFAST, § 15 and 26/09/2007, R 791/2007-1, REALCOOL, § 14; the word element ‘real’ is used informally for ‘really’ and adverbially as an intensifier, originally in Scottish and North American English, which is also understood by European English speakers, see 15/12/2010, T-380/09, EU:T:2010:521, Gasoline, § 41).

In connection with the goods claimed the sign would simply be perceived by the relevant public as a merely promotional laudatory reference, a value statement, which only serves to highlight positive aspects of the goods claimed, namely that these goods – food products as bread rolls, chicken products, pasta, pizza and snacks (Cl. 29 and 30) – are truly of high quality.

As to the applicant’s claim that the Office has to carry out an assessment for each of the goods claimed the Office notes that all goods claimed are prepared foods intended for human consumption; therefore,

‘it is clear that the goods concerned in Classes 29 and 30 (…) have a sufficiently direct and specific link to each other to the extent that they form, as such, a sufficiently homogenous category or group of goods, and that even general reasoning could be applied’ (see, by analogy, 02/09/2016, R 2405/2015-2, REAL (fig.), § 67).

The simple juxtaposition of the word elements ‘real' and 'good' will be easily recognized by the relevant public and does not create an impression that differs from the impression given by merely placing the elements next to one another. Consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words known to them (see 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The figurative elements of the sign are of a purely auxiliary and decorative nature and not able to render the sign as a whole distinctive.

The stylized closed fist held with the thumb extended upward in approval (‘thumbs up’) merely serves to reinforce the ‘real good’ message; it underlines the meaning of the word elements and creates a further direct link to the goods claimed, indicating that these food products are really good, ‘truly of high quality’.

The stylization of the letters does not endow the sign as a whole with any distinctive character. The Office does not share the applicant’s view that the letter ‘R’ and the two letters ‘o’ are highly stylized or that that the two letters ‘o’ will be perceived as resembling the shape of a pair of eyes; the typeface is rather common. The stylization of the descender of the letter ‘g’ is in no way unique (see, by analogy, 13/01/2014, R 1702/2013-2, SIMPLY EXPRESS (FIG. MARK), § 22); it does not deviate significantly from what is customary to the extent that it would constitute an independent element in the perception of the relevant public and it does not enable the relevant consumer to identify the origin of the goods claimed.

The relevant public will not associate any meaning with the sign other than the laudatory one and will not perceive any particular indication of commercial origin in the sign.

As regards the case 24/02/2016, T-816/14, REAL HAND COOKED / real; QUALITY, EU:T:2016:93 and the figurative mark ‘real quality’ referred to by the applicant the Office notes that the relevant public in this case was the German public; signs consisting of English words may well be distinctive in countries that do not have English as their language – as for instance Germany – without necessarily being so throughout the European Union (see, by analogy, 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 40). In the decision referred to by the applicant the General Court agreed with the findings of the Board of Appeal (4/02/2016, T-816/14, REAL HAND COOKED / real; QUALITY, EU:T:2016:93, § 58 et seq.): ‘However, the relevant public was not likely to perceive both words as an ensemble or as an expression on its own. According to the Board of Appeal, German consumers are not used to multilingual expressions.’ Since the relevant public in the present case is the English-speaking public, the case referred to by the applicant is of no relevance to the present case.

As to the decisions 08/10/2019, R 1125/2019-4, THE GOOD CIDER OF SAN Sebastian SINCE 1918 (fig.) and 07/04/2017, R 1990/2016-5, Authentic (fig.) the Office notes that these cases present decisive differences in comparison with the mark at hand. Both cases concern goods in other classes (Classes 31 and 33) than the goods claimed in the present case and the figurative elements of the signs are more complex than the figurative elements of the sign applied for here. Therefore, these cases are not comparable to the case at hand.

As regards the decision of the UKIPO referred to by the applicant, the Office notes that 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).

The sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

2. As regards earlier registrations referred to by the applicant, the Office notes that these registrations present differences in comparison with the mark under analysis, and such differences may justify a different outcome.

In all the cases referred to by the applicant – EUTMs 10481174, 11789757, 6930655 and IR 1241385 – it is important to note that the word elements ‘good’ or ‘real’ are combined or juxtaposed with other word elements than in the present case (‘double’, ‘too’, ‘simply’ or ‘best’). The IR 1241385 covers only services and the EUTM 10481174 only goods in Class 32; claimed in the present case are goods in Classes 29 and 30. Moreover, the figurative elements of the IR 1241385 are very different from those in the present case.

Therefore, none of these cases is comparable to the case at hand. Thus, the principles of equal treatment and sound administration do not require a different outcome; they are not affected.

In this regard, the Office highlights that

‘each mark must be considered on its own merits and an EU trade mark application cannot draw its distinctive character from any other mark previously registered by the Office. (...) [D]ecisions concerning registrability of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the registration must be assessed solely on the basis of the EUTMR as interpreted by the Court’s case-law and not on the basis of a previous decision-making practice.’ (10/12/2019, R 1170/2019-5, Cuisine, § 76; see also 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).

The Office points out that

‘even if those trade marks were to be deemed as having been unlawfully granted, it is important to recall that, in accordance with the settled case-law of the Court of Justice, the principles of equality of treatment and of sound administration must be applied in a way that is consistent with respect for legality and, as such, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else’ (10/12/2019, R 1170/2019-5, Cuisine, § 72, referring to 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 75-76; 14/06/2016, T-385/15, Shape of a toothbrush (3D MARK), EU:T:2016:348, § 33).’

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 117 705 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.

Thorsten Ickenroth