Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 17/09/2020

HGF LIMITED

4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West

Manchester M1 5WG

UNITED KINGDOM

Application No:	018191320
Your reference:	LMC/T296852EP
Trade mark:	DÉLICES DU MONDE
Mark type:	Figurative mark
Applicant:	Indevco Limited Akara Bldg., 24 De Castro Street Wickhams Cay 1 Road Town Tortola BRITISH VIRGIN ISLANDS

The Office raised an objection on 13/02/2020 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 24/03/2020, which may be summarised as follows.

1. The applicant disagrees with the finding of the Office that the sign ‘Délices du Monde’ is descriptive of the goods and services claimed. It is argued that the Office has erred in the translation into English of the term ‘délice’ as ‘delicacy’, and that instead, the French word for ‘delicacy’ is ‘délicatesse’. The applicant explains that according to the Collins French-English dictionary the word ‘délice’ is translated into English as ‘delight’.

In addition, it is stated that the word ‘délice’ is not only used to refer to food products, but that it can be used to refer to many goods or experiences. Hence, the applicant points out that the sign ‘Délices du Monde’ is inherently vague and simply suggestive or evocative of pleasure, treats or positive experiences and perhaps exoticism. Also, since the sign does not refer implicitly to any specific quality of the products concerned, nor to a particular country or region of origin, it is concluded that the sign does not provide enough direct and specific information about the quality or geographic origin of the goods claimed in Class 30 and thus, it cannot be considered to be descriptive. The applicant makes a comparison of the present case with the settled case-law ‘EASYBANK’ (05/04/2001, T-87/00, ‘EASYBANK’, EU:T:2001:119).

2. Considering that the sign is not descriptive, the applicant claims that it cannot lack distinctive character because the latter objection derives from the former. The applicant also asserts that the sign applied for is not a descriptive advertising slogan nor contains common laudatory terms. It is argued that the sign is catchy, memorable and apt to function as an EU trade mark because it is vague and indeterminate and consumers will perceive it as a distinctive badge of commercial origin. In support of these claims the applicant refers to settled case-law that promotional signs are not excluded a priori from functioning as trade marks (09/07/2008, T-70/06, ‘Vorsprung durch Technik’, EU:T:2008:266, § 26).

3. The applicant also concludes that since the sign is not descriptive of the goods claimed nor of any of their characteristics, there is no need for the competitors to use the same indication to refer to the same or similar goods.

4. Finally, the applicant refers to previously registered EU trade marks which are very similar to the one being applied for because they contain the word ‘délices’ or ‘monde’ and are equally vague and indeterminate.

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.

Upon re-examination of the application and having given due consideration to the applicant’s argument, the Office has decided to waive the objection in relation to all the goods claimed in Class 30 pursuant to the absolute ground of refusal laid down in Article 7(1)(c) EUTMR.

However, the objection is maintained for all the goods claimed in accordance with the absolute ground for refusal laid down in Article 7(1)(b) EUTMR.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T-79/00, ‘Lite’, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T-20/03, ‘Live richly’, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C-517/99, ‘Bravo’, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T-138/00, ‘Das Prinzip der Bequemlichkeit’, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C-456/01 P & C-457/01 P, ‘Tabs’, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T-194/01, ‘Soap device’, EU:T:2003:53, § 42; and 03/12/2003, T-305/02, ‘Bottle’, EU:T:2003:328, § 34).

Pursuant to Article 7(2) EUTMR, a sign may not be registered even if it is eligible for protection in respect of only a part of the European Union. As the trade mark applied for is composed of French terms, the assessment has to be carried out with respect to the French-speaking part of the European Union, which primarily consists of consumers in France, Belgium and Luxembourg (22/06/1999, C-342/97, ‘Loyd Schuhfabrik’, § 26; 27/11/2003, T-348/02, ‘Quick’, § 30).

Addressing in turn the Applicant’s arguments numbered as above, the Office states as follows:

The first argument of the applicant states that the Office has incorrectly translated the term ‘délice’ as ‘delicacy’, whereas it is pointed out that it should have been translated as ‘delight’. It is further maintained that the sign does not directly and specifically relate to the goods claimed and hence, that the sign cannot be considered descriptive of the said goods.

The Office agrees partly with the above and consequently has waived its objection pursuant to the absolute ground for refusal based on the descriptiveness of the sign, pursuant to Article 7(1)(c) EUTMR.

The term ‘Délice’ is a French word. It would be clearly understood by the relevant French-speaking average consumer, especially because the other two words are also French words (‘de’ and ‘Monde’). The relevant territory by reference to which the absolute grounds for refusal need to be examined is therefore the French-speaking territories of the EU, namely France, Belgium and Luxembourg.

Without entering in the discussions about the proper translation of the term ‘délice’, the Office would like to stress that the dictionary definition of the term ‘délice’ indicated in our previous notice was extracted from a reputed source, the French dictionary Larousse online. This definition specifically states that a ‘délice’ is a ‘chose qui fait un extrême plaisir’, which can be translated into English as ‘something that gives or affords an extreme pleasure’, be it translated as a ‘delicacy’ or as a ‘delight’. The applicant himself agrees, a contrario sensu, that such a term is indeed used to refer to food products. It is a well-known and generally accepted fact that food and beverages give pleasure to people through the sense of taste. Not in vain, the French adjective ‘délicieux’ (in English, ‘delicious’), which shares the same etymological root as the French word ‘délice’, is broadly used to refer to food and drinks considered to be highly pleasurable for the palate. Therefore, It is totally reasonable to presume that French-speaking average consumers will associate the term ‘délices’ with food and drink products, in the sense that they ‘give or afford an extreme pleasure or delight’.

The applicant maintains that the sign ‘Délices du Monde’ is vague and only suggestive or evocative of pleasure, positive experiences or perhaps exoticism. But since it does not refer implicitly to any specific quality of the products concerned, nor to a particular country or region of origin, it is concluded that the sign does not provide enough direct and specific information about the quality or geographic origin of the goods claimed in Class 30 and thus, it cannot be considered to be descriptive. The Office accordingly has waived the refusal based on the descriptiveness of the sign.

But there is definitely a promotional laudatory connotation in the sign in relation to the goods claimed which highlights positive aspects of such goods, namely that they are ‘highly pleasurable delicacies/delights/treats/specialties from all over the world’. This is the only logical and plausible explanatory meaning of the sign in relation to the goods concerned. The sign is certainly a promotional laudatory slogan that simply communicates a positive value statement in relation to the goods claimed.

2.

The applicant contends that the sign cannot lack distinctive character because it is not descriptive and the alleged lack of distinctiveness derives from the finding of descriptiveness. And that since the Office had not raised any other absolute ground for refusal of the sign applied for, apart from its descriptiveness, the sign should be registered as a distinctive sign.

It further claims that the sign does not contain laudatory terms but, to the contrary, that it is an allusive, catchy and memorable sign. In furtherance of this argument, the applicant relies on settled case-law which rules that promotional slogans are not excluded per se from functioning as EU trade marks (09/07/2008,  T -70/06, ‘Vorsprung durch Technik’, EU:T:2008:266, § 26). The Office is well aware of this case-law principle relating to promotional slogans and their capacity to function as EU trade marks in principle. But this does not imply that every slogan will always necessarily be distinctive.

First, the notice of the Office states that ‘Moreover, a sign may also lack distinctiveness in relation to the goods and services for which registration is sought for reasons other than the sign being descriptive in itself. The word ‘Délice’ is translated into English as ‘delicacy’, which the Oxford English Dictionary defines as ‘the quality of being delightful to the palate; delicateness or daintiness (of food)’ (information extracted from the Oxford English Dictionary ‘OED’ on 13/02/2020 at https://www.oed.com/view/Entry/49358?redirectedFrom=delicacy#eid ). Therefore, in the present case, the expression ‘Délices du Monde’ works as a promotional slogan-style message, the function of which is to communicate a value statement referring to highly desirable characteristics of the goods, namely that they epitomise delightful and/or the best quality food and drink produce from all over the world. As a consequence, the relevant customers 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 question, namely that they are top quality worldwide food and drink products that provide high pleasure, delight, rejoice, gratification, etc. when eaten and drunk’ (emphasis added).

Therefore, the Office did in fact raise the absolute ground for refusal laid down in Article 7(1)(b) EUTMR independently from the descriptiveness ground for refusal established under Article 7(1)(c) EUTMR.

It is clear that although each of the grounds for refusal is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b) and (c) of Article 7(1) EUTMR (08/06/2020, R 2552/2019-1, Staropolska KARCZMA (fig.), § 10). In this regard, reiterated case-law establishes that a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is on that account necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR, without prejudice to the application of Article 7(3) EUTMR (10/03/2011, C-51/10 P, ‘1000’, EU:C:2011:139, § 33). But this does not imply that the other way around may be true. Thus, a mark may nonetheless still be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive, as has been acknowledged on many occasions by the judge of the EU (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86, § 86; 12/02/2004, C-265/00, ‘Biomild’, EU:C:2004:87, § 18-19; 14/06/2007, T-207/06, ‘Europig’, EU:T:2007:179, § 47).

The Office is cognizant of the case-law principle ruling that for a trade mark to possess distinctive character for the purposes of Article 7(1) EUTMR, it must serve to identify the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings, so that the consumer who acquires the goods and services designated may repeat the experience, if it proves to be positive, or avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (11/12/2012, T-22/12, ‘Qualität hat Zukunft’, EU:T:2012:663, § 22 and 12/03/2020, R 2663/2019-2, ‘The next generation fund’, § 16). But this is not the case being examined here. As already explained above and in the attached letter of objection, the sign will be merely perceived by the relevant public as a non-distinctive promotional slogan-style expression.

Reiterated case-law rules that ‘a word mark is devoid of distinctive character when 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 at first glance as such, rather than as an indication of the commercial origin of the goods or services in question’ (03/07/2003, T-122/01, ‘Best Buy’, EU:T:2003:183, § 30; 30/06/2004, T- 281/02, ‘Mehr für Ihr Geld’, EU:T:2004:198, § 31; 12/03/2008, T-128/07, ‘Delivering the essentials of life’, EU:T:2008:72, § 20; 06/06/2013, T-126/12, ‘Inspired by efficiency’, EU:T:2013:303, § 25 and 11/05/2020, R 1946/2019-1, ‘GoBiggeR (fig.)’, § 13).

And although it is true that EU case-law has established that trade marks do not need to possess certain originality or creativity, that even simple words may fulfill a trademark function and that an advertising slogan cannot be required to display ‘imaginativeness’ or ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness, it has also been ruled that a slogan that is banal, commonplace or directly descriptive of a characteristic of the relevant goods or services is unlikely to possess any distinctive character because it probably will not be perceived immediately as an indication of the commercial origin of the goods or services in question. No undertaking should be given a monopoly right to use banal, commonplace or everyday terms to promote its commercial activities. On the other hand, a slogan that is for example original, imaginative and fanciful can be protected. Such a slogan is also far more likely to be able to perform the essential function of a trade mark (18/12/2005, R 552/2015-2, ‘Thinking People First’, § 24, emphasis added).

In the present case, the sign applied for lacks originality or resonance. The goods are foodstuffs such as coffee, tea, cocoa, rice, pasta, flour, bread, pastries, confectionery, honey, spices, seasonings, sauces, condiments, etc. Many of the goods applied for may conceivably come from remote and arguably exotic places all over the world, beyond EU borders (quite evident for example, in the case of coffee, tea, cacao, spices, etc.). So the sign certainly conveys the idea of of exoticism, as the applicant stated in his submissions, in the sense that the goods denoted by it are products and specialties from all over the world that give/afford extreme pleasure to the palate. There is nothing fanciful nor suggestive in the sign, which has a clear and obvious promotional meaning that will be perceived, first and foremost, as a promotional indication by the French-speaking average consumers, rather than as an indicator of commercial source.

The sign is therefore an advertising slogan that associates the products thus advertised with cosmopolitanism (or ‘exoticism’ in the words of the applicant) or variety. As already mentioned above, some of goods applied are goods with a clear international or exotic reference, such as coffee, tea, cacao, spices, etc. It is also generally known that coffee, tea, cacao, spices, etc. frequently originate from remote regions of the world, from a European perspective, and are imported therefrom. Accordingly, if the relevant consumer is confronted with such a slogan, he will associate it with the idea that a variety of food products and condiments provide high pleasure for the palate from different regions of the world. The slogan is furthermore a banal slogan which without striking features merely embodies a laudatory character. The slogan is therefore not simultaneously perceived as an indication of origin with regard to these goods (25/07/2008, R 905/2007-4, ‘TASTE OF THE WORLD’, § 13-14).

The figurative features contained in the sign are so negligible in nature that they do not endow the trade mark as a whole with any distinctive character. The banal and plain font type used in the sign is minimally stylised, making it perfectly and clearly legible for the target public.Those elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function in relation to the goods for which protection is sought.

In sum, in order to understand the sign, neither the target public requires at least some interpretation nor does it trigger a thought process in the minds of the relevant average consumers (21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, EU:C:2010:29, § 57). The relevant French-speaking average public, even that with a basic knowledge of French, will therefore recognise in the sign applied for, easily and without the need for further reflection, a promotional laudatory statement in relation to the goods in question (12/02/2015, T-318/13, ‘LIFEDATA’, EU:T:2015:96, § 22).

It is true that, as explained above, registration of a trade mark which consists of indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services is not excluded as such for this reason (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301, § 19; 11/12/2012, T-22/12, ‘Qualität hat Zukunft’, EU:T:2012:663, § 15). However, in the case of such trade marks, it must be examined whether they have components that might, beyond their obvious promotional meaning, enable the relevant public to memorise the word sequence easily and immediately as a distinctive trade mark for specific goods or services.

As already mentioned, settled case-law has established that a sign which fulfils functions other than that of a trade mark is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods and services (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301, § 20; 13/04/2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 31). It has been ruled by reiterated case-law that, in general, the awareness of the relevant public is liable to be relatively low when it comes to purely promotional indications or slogans (05/012/2002, T-130/01 ‘Real People, Real Solutions’, EU:T:2002:301, § 24). Since the relevant consumer is not very attentive if a sign does not immediately indicate to him/her the origin or intended use of the object of his/her intended purchase, but just gives him/her purely promotional, abstract information, he/she will not take the time either to enquire into the signs various possible functions or mentally to register it as a trade mark (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301, § 28-29; 11/12/2012, T-22/12, ‘Qualität hat Zukunft’, EU:T:2012:663, § 30 and 08/07/2020, R 87/2020-4, ‘CREATE VALUE’, § 13).

To conclude, there is nothing unusual, intriguing or ambiguous in the meaning conveyed by the sign that would trigger a cognitive effort or mental interpretation by the French-speaking relevant public. The sign ‘Délice du Monde’ has a clear, direct an obvious meaning that will be perceived in its plain and ordinary promotional sense in the specific context of the goods claimed.

3.

With regard to the argument put forward by the applicant that the sign does not need to be used by other competitors because it has no descriptive character, it must be observed that ‘the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication freely available for the benefit of third parties’ (by analogy, 27/02/2002, T‑106/00, ‘Streamserve’, EU:T:2002:43, § 39).

It is in the public interest for descriptive and non-distinctive marks to be kept free to be used by all, and for such signs and indications not to be reserved to one undertaking alone because they have been registered as trade marks.

Furthermore, and as already mentioned, what is relevant in the assessment of distinctiveness of an EU trade mark is that its distinctive character 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 services 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).

Consequently, this argument of the applicant cannot support the alleged distinctiveness of the sign applied for.

4.

Finally, the applicant contends that the Office should accept the sign applied for because similar signs containing the term ‘Délice’ were accepted for registration by the EUIPO. In this regard, it has to be recalled that reiterated EU case-law has ruled that ‘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).

In addition, it must also be pointed out that the Office practice changes over time to take into account and adapt to changing market conditions and consumers’ perceptions. And although it is true that previous decisions or registrations represent a circumstance that may be taken into consideration, however they are not decisive to allow registration of a particular sign (04/07/2019, R 1441/2018-5, ‘Ecotec’, §30).

Moreover, 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, § 74-77 and 10/01/2018, R 1851/2017-1, ‘StealthConnect’, § 29).

Furthermore, a person who files an application for registration of a sign as an EU trade mark cannot properly rely, in support of a claim of breach of the principle of protection of legitimate expectations, on previous decisions of the EUIPO (30/11/2017, T-102/15 and T-101/15, ‘COLOUR MARK’, EU:T:2017:852, § 139; 12/12/2014, T-405/13, ‘da rosa’, EU:T:2014:1072, § 64). Even though the Office should strive for consistency and apply the same criteria to the examination of trade marks, it follows from case-law that the principle of equal treatment and sound administration must be consistent with respect for legality. Decisions concerning the registration of a sign as a European Union trade mark which the Office is called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Thus, the legality of the decisions of the Office must be assessed solely on the basis of the EUTMR, as interpreted by the European Union judicature, and not on the basis of the Office’s previous decision-making practice (02/12/2008,T- 212/07, ‘Barbara Becker’, EU:T:2008:544, § 43; 27/02/2002, T-106/00, ‘Streamserve’, EU:T:2002:43, § 66 and 04/07/2019, R 1441/2018-5, ‘Ecotec’, § 30 and 31).

Notwithstanding the foregoing, it has to be pointed out that the examples provided are not analogous to the sign applied for and thus, cannot be taken into consideration in the present examination. Hence, some of the registered marks referred to by the applicant could arguably be considered distinctive because their meaning is not specific enough. For example, the EUTM no. 001940334 ‘LE JARDIN DES DÉLICES’ in Class 32, makes a subtle and imaginative reference to the famous tryptic of the same name by Dutch painter Bosch. Or EUTM no. 012397162, ‘DÉLICES DU PALAIS’ does not refer to any particular ‘palais’, thus it is indeed quite vague (whereas the world (‘monde’) is a specific enough reference to constitute a clear and obvious indication in the present case, in relation to the goods concerned. As regards EUTM no. 000336982, ‘CAFÉ DU MONDE’, it has to be pointed out that this mark, which claimed registration for goods in Class 30, was initially refused based on the absolute ground for refusal laid down in Article 7(1)(b) EUTMR, but then was registered after a limitation of the goods claimed in Class 30 was made, and a claim of acquired distinctiveness based on the use made of the sign in the relevant market was submitted.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘ ’ will be perceived by the relevant French-speaking consumers as pointing to the commercial origin of the goods at issue. The absolute ground for refusal under Article 7(1)(b) EUTMR precludes the registration of the sign ‘ ’ as a trade mark, at least in the French-speaking territories of the European Union (Article 7(2) EUTMR), that is, in France, Belgium and Luxembourg.

For the abovementioned reasons and those stated in the previous notice of the Office (attached), the application for European Union trade mark No 18 191 320 is hereby rejected for all the goods claimed, in accordance with Article 7(1)(b) and Article 7(2) EUTMR.

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.

María Mónica TARAZONA RUÁ