Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/01/2021

BJERKÉNS PATENTBYRÅ KB

Box 128

SE-721 05 Västerås

SUECIA

Application No:	018243405
Your reference:	402290EU
Trade mark:
Mark type:	Figurative mark
Applicant:	Fresh-CO SH.P.K Ruzhdi Haxhijaj n.n RS-30000 Peje, Kosovo RS

The Office raised an objection on 14/07/2020 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 22/07/2020, which may be summarised as follows.

1. The Office has previously accepted word marks consisting of the term ‘FRESH’.

2. The applicant’s sign contains figurative elements which give the sign distinctive character and that were not taken into account in the assessment of the sign.

3. When comparing to a previously registered figurative mark for similar goods (EUTM 008520926), the applicant’s sign is at least as distinctive due to the figurative elements.

4. The font used for the applicant’s sign is specially designed by themselves and should be distinctive enough for acceptance as a trade mark for the goods in question.

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.

General remarks:

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 Office’s reply to the applicant’s observations:

1. The applicant refers to previous registrations of verbal signs consisting of the term ‘FRESH’ but does not provide any specific examples of such signs and therefore no clear comparison can be made. When checking the EUIPO trade mark database, there are examples of such signs being accepted but none of them for goods in the classes relevant for the case at hand, namely, classes 3 and 5. In any case, when examining a sign for the purpose of absolute grounds for refusal, it must be assessed as a whole and put in relation to the goods or services in question. As for the applicant’s sign, the assessment made by the EUIPO find the sign as a whole descriptive and devoid of any distinctive character. The verbal element ‘FRESH’ is clearly a descriptor of the goods that can smell clean or fresh or have a clear of fresh effect when used. The figurative elements are excessively simple and do not provide the sign with the required distinctive capacity in order to function as a trade mark.

2. As explained in the previous paragraph, the sign was assessed as a whole at the EUIPO. Thereby, all the elements of the sign were considered and taken into account. The outcome of such examination, however, was that the figurative elements of the sign are not sufficient to render the sign distinctive. The oval or leave-shaped background would not be perceived as a distinctive element but merely as an ordinary background, or even as a label which is a commonly used element on many goods. Furthermore, the fact than one edge is slightly rounded and the other pointy will not stand out to the relevant consumer at the time of purchase, thereby altering the perception of the sign to that of a distinctive trade mark. Nor will the consumer perceive the slightly pointed endings of the letters ‘e’ and ‘s’ since these elements are simply too insignificant to be noted at the time of purchase. To sum up, the figurative elements are not enough in order to make the consumer perceive the sign as a trade mark capable of identifying a particular commercial origin.

3. 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).

‘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).

Additionally, it must be noted that the previous sign is accepted in relation to different goods and also that the practice of the Office has evolved through the years and, as a consequence, the outcome of an assessment made in 2009 might be different to one made in 2020.

4. The font might have been specifically designed by the applicant but this does not mean that the perception of the sign as a whole will be that of one with distinctive character. In fact, the font used does not draw the attention for being unique or slightly different from other commonly used fonts. It appears therefore unlikely, first of all, that the relevant consumer would pay any particular attention to the font and, secondly, to find such font different, thereby rendering the sign distinctive in the eyes of the consumer. The font is merely one negligible element in the figurative sign and will not be perceived as distinctive.

Conclusion:

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 243 405

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.

Elna ISAKSSON