Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/07/2020

LAW OFFICES OF PATRINOS & KILIMIRIS

Hatziyianni Mexi Street 7

GR-115 28 Athens

GREECE

Application No:	018193103
Your reference:	TM14294EU00
Trade mark:	SEA SIDE DRY MIST
Mark type:	Word mark
Applicant:	FREZYDERM S.A. 75 MENANDROU STR GR-10437 ATHENS GREECE

The Office raised an objection on 20/02/2020 pursuant to Article 7(1)(b), (c), (g) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

In the present case, the relevant English-speaking consumers, that is, the English-speaking public at large, would perceive the sign as providing information that the tanning, sun care, blocking and protective creams, lotions, preparations, oils, etc. claimed in Class 3 are non-greasy/non-sticky products (‘dry’) diffused with a spray (‘mist’) onto the skin, and which are particularly suited for use at the beach (‘seaside’). Therefore, the sign describes the kind, quality, intended purpose and/or other characteristics of the goods in question. The mere fact that the words ‘SEA’ and ‘SIDE’ are separated in the sign does not preclude that they will be directly and immediately understood by the relevant consumers as the correct combined word ‘SEASIDE’.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Furthermore, signs that are commonly used in connection with the marketing of the goods concerned are devoid of distinctive character. In the present case, an internet search dated 20/02/2020 and indicated in the attached letter of objection, revealed that the words ‘DRY MIST’ are commonly used in the relevant market.

Additionally, the word ‘mist’ contained in the sign would clearly be deceptive when used in connection with sun blocking lipsticks in Class 3, as it conveys information that the products designated under this sign are sprayed onto the skin as a fine drizzle of tiny liquid drops (‘mist’), whereas the goods to which an objection has been raised (lipsticks) in reality cannot have these characteristics, as they generally have a solid state or, if they are liquid, they are not sprayed onto the lips but rather applied with a pencil or similar lipstick applicator.

Despite the fact that the products to which an objection has been raised (‘lipsticks’) are so different to sprays (‘mist’), they are nonetheless packaged in a similar fashion, oftentimes sold in closed boxes and generally displayed on the same retail shelving counters that offer sun protection products in shops and supermarkets. Hence, there is a sufficiently serious risk that the relevant public will be deceived as regards the nature, matter state and/or application method of the goods in question.

Therefore, the sign for which protection is sought is deceptive within the meaning of Article 7(1)(g) and Article 7(2) EUTMR.

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR. Moreover, the sign for which protection is sought is also deceptive within the meaning of Article 7(1)(g) and Article 7(2) EUTMR with regard to sun blocking lipsticks.

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. With the above notice (attached) the applicant was given opportunity to submit observations in reply. The Office has not received any observations within the specified time limit. Consequently, further argumentation is superfluous.

For the reasons set out in the present decision and those indicated in the attached letter of objection, the application for European Union trade mark No 18 193 103 is hereby rejected for all the goods claimed, pursuant to Article 7(1)(b), (c), (g) 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