Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 27/10/2015

BEAUTYGE BEAUTY GROUP, S.L.

David VARGAS

WTC Almeda Park Tirso de Molina, 40

E-08940 Cornellá de Llobregat (Barcelona)

ESPAÑA

Application No:	013926506
Your reference:
Trade mark:	NATURAL HONEY
Mark type:	Figurative mark
Applicant:	BEAUTYGE BEAUTY GROUP, S.L. WTC-Almeda Park Tirso de Molina nº 40 E-08940 Cornellá de Llobregat (Barcelona) ESPAÑA

The Office raised an objection on 27/04/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 27/08/2015, which may be summarised as follows:

1. Instead of deconstructing the trade mark, the overall impression of the sign should be considered. In the present case, the CTM application consists of a curved rectangle including two words ‘NATURAL HONEY’. The colour of the rectangle is a shade of grey while the two words are written in white letters. There is a band under the square which is of light grey colour. However, the Examiner ignored those figurative elements and based its arguments only on the word elements contained in the mark.

2. A word mark ‘NATURAL HONEY’ has been registered in other European countries, including English speaking countries Ireland and Malta. This fact proves that the sign at hand does not have a direct and specific relation with the goods claimed and is, therefore, distinctive.

3. The applicant claims that the contested trade mark has acquired distinctiveness due to its long-lasting use in relation to the goods claimed. In order to support this argument the applicant submits evidence of the mark’s use in Spain.

4. The Office has already registered other trade marks of the applicant containing the word element ‘NATURAL HONEY’ for Class 3. Therefore, the Office has to take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not.

Pursuant to Article 75 CTMR, 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.

Under Article 7(1)(c) CTMR, ‘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) CTMR 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

1. The applicant claims that instead of deconstructing the trade mark, the overall impression of the trade mark ‘NATURAL HONEY’ should be considered.

The Office agrees with this statement and claims that since the trade mark at issue is made up of several components (a compound mark), for the purpose of assessing its distinctive character it must be considered as a whole.

However, the Office does not agree with the applicant’s argument that the Examiner ignored figurative elements of the mark and based its objection only on the word elements contained in the mark.

In the provisional refusal the Office evaluated the overall impression made by that mark and stated that:

‘Although the mark applied for contains graphical representation that confers upon it a degree of stylisation, it is so minimal in nature that it does not endow the trade mark applied for as a whole with any distinctive character. The graphical representation in the present case consists of the words ‘NATURAL’ and ‘HONEY’ written in white on a grey label with curved white line below. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C-37/03 P, ‘BioID’, paragraph 74).’

Indeed, the presence of figurative elements may give distinctive character to a sign consisting of a descriptive expression so as to render it eligible for registration as a CTM. Therefore, the question to be considered is whether the stylisation and/or the graphical features of a sign are sufficient to make it act as a trademark.

When the verbal element is descriptive, as it is in the present case, it must be checked in particular if the figurative element is striking and/or surprising, and/or unexpected, and/or unusual, and/or arbitrary; capable to create in the consumers’ mind an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element; of such a nature as to require an effort of interpretation from the part of the relevant public in order to understand the meaning of the word element.

In the present case the Office finds that the figurative elements of the contested trade mark are not striking or unexpected and will not require any effort of interpretation from the part of the relevant public. The label consists of a simple geometric shape and the use of colours grey and white is basic and does not endow the mark with a sufficient degree of distinctive character either.

When considered as a whole, the mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

2. The Office does not concur as regards the applicant’s argument that, since no distinctiveness objection has so far been raised in other English-speaking countries, it should be allowed to proceed to registration in the EU too.

Examinations and registrations of national trade marks or Community trademarks have no binding effect and do not provide any entitlement to registration. According to case-law:

the Community 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 Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community 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.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

3. The applicant claims that the contested trade mark has acquired distinctiveness due to its long-lasting use in relation to the goods claimed. In order to support this argument the applicant submits the following evidence:

• Exhibit D: screenshots of the website www.naturalhoney.com;

• Exhibit E: letter (with translation in English) confirming that NATURAL HONEY Instant Body Milk is the product of the year 2010;

• Exhibit F: letter (with translation in English) confirming that NATURAL HONEY body lotion ‘tired legs’ is the product of the year 2012;

• Exhibit G: document evidencing that ‘NATURAL HONEY Shower Gel’ is the ‘elected product of the year 2014’;

• Exhibit H: spot TV ‘NATURAL HONEY’ 2010;

• Exhibit I: spot TV ‘NATURAL HONEY’ 2014.

Under Article 7(3) CTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) CTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant/holder. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) CTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (see judgment of 10/11/2004, T‑396/02, ‘Storck’, paragraph 55).

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the goods or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages or numbers (see judgment of 04/05/1999, C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52, and judgment of 10/11/2004, T‑396/02, ‘Storck’, paragraph 56). According to the judgment of the Court of Justice of 4 May 1999 in Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger (‘Chiemsee’) [1999], paragraph 50), a sign that is initially devoid of distinctive character may be deemed to have acquired sufficient distinctiveness through use if there has been a long-standing and intensive use of the mark, in such a way as to allow the sign to operate, from the point of view of the relevant public, as an identifier of a product originating from a particular undertaking.

Second, in order to have the registration of a trade mark accepted under Article 7(3) CTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgment of 10/11/2004, T‑396/02, ‘Storck’, paragraph 57).

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied (see judgment of 10/11/2004, T‑396/02, ‘Storck’, paragraph 58, and judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75).

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63, and judgment of 10/11/2004, T‑396/02, ‘Storck’, paragraph 59).

The application covers skin care preparations; body wash; body lotion in class 3, and these are goods of everyday consumption and are aimed at an average consumer.

With regard to the lack of distinctiveness of the mark applied for and, as the specifications claimed cover the abovementioned goods in class 3, the relevant consumer will immediately perceive the mark applied for as conveying obvious and direct information on the ingredients of the goods in question, i.e. that these goods contain natural honey.

Based on the aforesaid, it is concluded that the use of the mark is expected to be relatively long lasting and extensive before the filing date of the application in order to establish that the mark has acquired distinctiveness.

Further, taking into account that the mark concerned is composed of English words, the

relevant public by reference to which the lack of distinctiveness must be examined is the relevant English-speaking consumer in the Community. Hence the question to be answered is whether a significant proportion of the relevant public within the English-speaking consumer in the Community has been sufficiently educated through exposure to the mark, to uniquely associate the mark in question applied to skin care preparations; body wash; body lotion with the applicant’s undertaking, before the filing date of the application.

Examination of the documents and material provided by the applicant

The Office, having carefully examined the above-listed material submitted by the applicant, is not persuaded that it is sufficient to conclude that the mark applied for has

acquired distinctiveness through use in application of Article 7(3) CTMR.

The Office has to highlight the fact that since the mark concerned is composed of English words, the relevant public by reference to which the lack of distinctiveness must be examined is the relevant English-speaking consumer in the Community. Accordingly, the relevant territory is the UK, Ireland and Malta. However, the applicant submits the evidence related only to Spain, which is not the relevant territory in the present case. Therefore, the evidence submitted by the applicant cannot be taken into consideration.

Although the applicant claims that the contested mark is being used in Malta, it does not submit any evidence supporting such statement.

In the light of above, the documentation is not sufficient to prove that consumers will perceive the sign as an indication of origin due to its intensive, long-standing and widespread use throughout the English-speaking Member States. Consequently, the appellant failed to demonstrate that the sign applied for has acquired distinctiveness within the meaning and under the conditions laid down in Article 7(3) CTMR.

4. As regards the applicant’s argument that other similar registrations have been accepted by OHIM, according to settled case‑law, ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

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 (OHIM v Erpo Möbelwerk, paragraph 45, and OHIM v BORCO-Marken-Import Matthiesen, paragraph 45). 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 (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

In the present case, it has become apparent that, contrary to what may have been the position with regard to certain earlier applications for the registration as trade marks of signs containing the words ‘NATURAL HONEY’, the present application was caught by grounds for refusal set out in Article 7(1) of Regulation No 40/94 because of the goods in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant class of persons.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 13926506 is hereby rejected for all the goods claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Julija SIRVINSKIENE