Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/12/2020

Sándor Géza

KÁRPÁT U. 22. III/15.

H-1133 Budapest

HUNGRÍA

Application No:	018275105
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Beerd Brew Design Budapest Maglódi u. 47 H-1106 HUNGRÍA

The Office raised an objection on 04/08/2020 pursuant to Article 7(1)(f) and (g) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is contrary to public policy or to accepted principles of morality and deceptive, for the reasons set out in the attached letter.

The applicant both limited the list of goods to beer and brewery products (Class 32) and submitted its observations on 09/09/2020. The latter may be summarised as follows:

• The trade mark at issue is not contrary to public policy or to accepted principles of morality and it is not deceptive.

• Liquid Cocaine is a double IPA, a type of beer that has been on the market since 2017 and it is one of the flagship products of the applicant (who uses the commercial name: Mad Scientist). As of 07/09/2020, 11,794 people tasted and rated the beer worldwide according to the popular beer tasting platform UNTAPPD. Liquid Cocaine may be bought online or in shops throughout the European Union and in various third countries as well. As of 07/09/2020, at UNTAPPD users can rate 111 beers produced by the applicant and there is a total of ratings of 100,720 from which 9,638 ratings were given to Liquid Cocaine. Based on the international availability of the beer, the applicant is convinced that it is a widely known product thus this term is acceptable for “beer and brewery products”.

• Regarding the deceptiveness in connection with the liquid cocaine cocktail, the applicant argues that liquid cocaine is not that a popular or common cocktail that would make the beer deceptive for the relevant public. The applicant conducted an online research to survey how well-know the liquid cocaine cocktail is. The applicant searched for the keywords “most famous cocktails” and recorded the data from the first page of the Google search results in the below table. None of the results mentioned liquid cocaine at all. This type of cocktail is not a generally known type for the relevant consumers, the above researches also enhance these standings. When an average consumer looks at the product (trade mark), he can easily understand what it is: a strong beer called Liquid Cocaine.

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 09/09/2020.

General remarks on Article 7(1)(f) and (g) EUTMR

Article 7(1)(f) EUTMR excludes from registration trade marks that are contrary to public policy or to accepted principles of morality. Article 7(1)(f) EUTMR mirrors that of Article 6quinquies(B)(3) of the Paris Convention (), which provides for the refusal of trade mark applications and for the invalidation of registrations where trade marks are ‘contrary to morality or public order’.

The wording of Article 7(1)(f) EUTMR is very broad and allows a great deal of room for interpretation. A judicious application of this provision necessarily entails balancing the right of traders to freely employ words and images in the signs they wish to register as trade marks against the right of the public not to encounter disturbing, abusive, insulting and even threatening trade marks (06/07/2006, R 495/2005-G, SCREW YOU, § 14).

The rationale of Article 7(1)(f) EUTMR is not to identify and filter out signs whose use in commerce must at all costs be prevented, but to preclude trade marks from registration where granting a monopoly would contravene the state of law or would be perceived by the relevant public as going directly against the basic moral norms of society. In other words, the Office should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society (06/07/2006, R 495/2005-G, SCREW YOU, § 13).

The application of Article 7(1)(f) EUTMR is not limited by the principle of freedom of expression (Article 10, Freedom of expression, European Convention on Human Rights) since the refusal to register only means that the sign is not granted protection under trade mark law and does not stop the sign from being used — even in business (09/03/2012, T-417/10, ¡Que buenu ye! HIJOPUTA (fig.), EU:T:2012:120, § 26).

Article 7(1)(g) EUTMR provides that marks that are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, will not be registered.

According to the case-law relating to Article 3(1)(g) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [now Article 4(g) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015] (TMD), the wording of which remains identical to that of Article 7(1)(g) EUTMR, the circumstances for refusing registration referred to in Article 7(1)(g) EUTMR presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (30/03/2006, C-259/04, Elizabeth Emanuel, EU:C:2006:215, § 47, and the case-law cited therein).

In response to the applicant’s submissions, the Office states the following:

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 foodstuffs and catering 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 some 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 dietary and nutritional supplements, 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).

Public policy / accepted principles of morality

The goods to which this objection applies are:

Class  32 Beer and brewery products.

As already explained in the enclosed notice of grounds for refusal, the trade mark applied for contains the words ‘Liquid Cocaine Double Ipa 9%’. Furthermore, since the terms ‘Liquid Cocaine Double Ipa 9%’ are 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 words ‘Liquid Cocaine Double Ipa 9%’ immediately inform English-speaking consumers without further reflection that the sign means: Liquid Cocaine - Double Ipa 9%.

Taking into account, as factual evidence, that certain drugs, such as liquid cocaine, are illegal in some Member States as well as the fact that the EU has undertaken drug policy initiatives to fight against illegal drugs, it is an objective indication that such signs would be perceived as going directly against the basic moral norms of society.

The assessment made takes into account the term used in the mark applied for as promoting the use of illegal drugs. However, the objection would not have been raised if the sign contained a reference to a drug that is for medical use, as the mark would not fall, in principle, within the prohibition of Article 7(1)(f) EUTMR.

In the present case, according to the standards and values of ordinary citizens, the mark would be perceived to be in reference to an illegal drug, namely liquid cocaine, and without the connotation of being for medical use, which contravenes the basic accepted principles of morality in relation to the goods for which protection is sought.

Pursuant to Article 7(3) EUTMR ‘Paragraph 1(b), (c) and (d) [of Article 7(1) EUTMR] shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it.’ Consequently, even if the applicant had claimed acquired distinctiveness and could prove it, Article 7(1)(f) and (g) EUTMR cannot be overcome by acquired distinctiveness through use.

However, the Office is of the opinion that liquid cocaine, besides from being an illegal drug, has also been established on the market place as a shot or cocktail. The client did not provide any proof that this is the case also for that term in relation to beer and brewery products, other than regarding his own use as a brand. Were there not just a brand use but instead a type of beer that is described as liquid cocaine, the case would probably be different.

Deceptiveness

The goods to which this objection applies are:

Class  32 Beer and brewery products.

The assessment of deceptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. The sign for which protection is sought contains the element liquid cocaine. This element would be understood by the relevant English-speaking public as having the following meaning: liquid cocaine (shot/cocktail).

The relevant part of the sign for which protection is sought would clearly be deceptive when used in connection with beer and brewery products in Class 32, as it conveys clear information indicating that the products designated under this sign contain liquid cocaine, a common cocktail, whereas the goods to which an objection has been raised in reality cannot have these characteristics, since they are in fact not a cocktail or part of that cocktail. Therefore, there is a sufficiently serious risk that the relevant public will be deceived as regards the kind or intended purpose of the goods in question.

As regards the argument that insufficient evidence was provided with respect to the existence of the term ‘liquid cocaine’ in relation to cocktails within the European Union, the Court has confirmed that where the Board of Appeal finds that it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods and services which are likely to be known by anyone and are in particular known by the consumers of those goods and services. In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (15/03/2006, T-129/04, Shape of a plastic bottle, EU:T:2006:84, § 19). The Operations Department applies the same standard.

Similarly, the applicant's argument that the words ‘liquid cocaine’ are used on the market only in the context of and as an indication of the applicant and that an internet search via Google refers mainly to the applicant itself, which confirms that the relevant public will see the sign as an indication of origin of the applicant, is also futile. The hits of a Google search also depend on how often the individual user enters a term via his own IP address or in which country he does so. Moreover, the frequency of a term among the hits of a Google search bears no relation to the actual perception of that term by the public. On the contrary, the intensive presence of the term in question in the Google search can only be regarded as the result of a successful marketing campaign on the internet carried out by the applicant itself, since a high number of hits can be obtained relatively easily, for example, by using meta-tags to improve the ranking of a website (search engine optimisation or SEO). (10/07/2017, R-1547/2016-5, Gute Ideen voller Energie, § 34)

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(f) and (g) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 18 275 105 is hereby rejected.

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