OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Refusal of application for a Community trade mark
(Article 7 CTMR and Rule 11(3) CTMIR)
CARPMAELS & RANSFORD (Trade Marks) LLP
One Southampton Row
London WC1B 5HA
Lyssé Partners, LLC
101 West Ohio Street, Suite 1350
Indianapolis, Indiana 46204
ESTADOS UNIDOS (DE AMÉRICA)
The Office raised an objection on 21/05/2015 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 23/07/2015, which may be summarised as follows:
‘Performance’ and ‘Fashion’ have a number of different meanings in English in addition to those the Office selected. The mark conveys and evokes a wide range of significations, and therefore it cannot be seen as straightforwardly descriptive of the goods and services in question.
The description of the mark provided by the Office conveys only a broad concept and fails to describe accurately what the functional quality of the goods and services is. If an examiner cannot arrive at a concise and clear description of the mark, the mark cannot leave a consumer with obvious and direct information regarding ‘the kind of the goods and serviced’ in question.
The examiner’s description, ‘articles of active wear…designed to fulfil a certain function such as keeping cool, comfortable or dry through moisture management or other techniques’, is only for the word ‘PERFORMANCE’ and not for the mark ‘PERFORMANCE FASHION’. The internet hits provided by the Office all relate only to the word ‘PERFORMANCE’.
The results of a Google search for the words ‘performance fashion’ does not relate to the goods or services for which registration is sought. Moreover, none of the results shows that the words are used in conjunction with one another as a set phrase.
The mark ‘PERFORMANCE FASHION’ is syntactically unusual in English. This deviation from common usage means that the mark cannot be used as a customary descriptive phrase for the goods and services in question. The fact that the mark requires a degree of interpretation on the part of the consumer sets it apart from descriptive marks that merely convey information.
Accordingly, it is clear that the mark is not descriptive of the goods and services for which registration is sought, and is capable of distinguishing the goods and services of the applicant form those of other undertaking.
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.
Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).
It is also 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).
Furthermore, 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 applicant argues that the words forming the mark have a number of different meanings and the mark evokes a wide range of significations. Therefore, it cannot be seen as descriptive of the goods and services in question. In that regard, it should be noted that for a trade mark to be refused registration under Article 7(1)(c) CTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32).
The applicant claims that the description of the mark provided by the Office conveys only a broad concept and fails to describe accurately the functional quality of the goods and services in question. The Office disagrees with the argument since the description, ‘the articles of active wear designed for fulfilling a certain functions, such as keeping cool, comfortable or dry through moisture management, etc.’ has been already indicated in the Office’s previous letter, and is considered to be accurate and specific enough to function as a ground for refusal. Furthermore, it is without a doubt that the definition relates to the mark as a whole, not solely to ‘PERFORMANCE’
With respect to the argument that the internet search results also relate solely to the word ‘PERFORMANCE’, and not to the mark, indeed, they relate to the words ‘performance clothing’ as highlighted in the Office’s notification. However, since the search results confirm that the word ‘PERFORMANCE’ is commonly used in the clothing market and is understood by the relevant public as designating a functional quality of the performance clothing, the relevant consumers will easily perceive the mark ‘PERFORMANCE FASHION’, as indicating descriptive character of the goods and services in question.
Contrary to the applicant’s argument that the results of Google search for the words ‘PERFORMANCE FASHION’ does not relate to the goods or services in question, and none of the results shows that the words are used in conjunction with one another as a set phrase, according to a Google search, it is found that the mark, ‘PERFORMANCE FASHION’ as a whole, is definitely used in the performance clothing market, and it also refers to the same meaning provided by the Office in the previous notification.
The applicant argues that the mark is syntactically unusual in English and this means that the mark cannot be used as a customary descriptive phrase for the goods and services in question. Whilst the mark is composed in a syntactically unusual way in English, the Office considers that since the mark is already used in the relevant market in a descriptive way in relation to the goods and services in question, it cannot be endowed with function to indicate commercial origin.
Despite the applicant’s arguments, the Office remains of the view that the mark is descriptive of the goods and services at issue and therefore does not qualify as a distinctive trade mark.
For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 13 964 416 is hereby rejected for the following goods and services:
Class 25 Leggings; tops; dresses; skirts; jackets; active wear, namely, tank tops, foundation garments, pantyhose, socks, hosiery, vests, hats, pants, jeans, swimwear, footwear, shoes, body suits, leg shapers, jogging suits, running suits, head wear, sweat suits, leotards, camisoles, gym suits, gym shorts, training suits, track suits, sweat pants, sweat shirts; and leggings and tops sold as a unit containing a control fabric panel incorporated into the garment for the purpose of body shaping and control.
Class 35 On-line retail store services featuring leggings and shapewear product.
The application is accepted for the remaining goods.
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.
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