Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 27/01/2016

IP LAB

2nd Floor, 145 - 157 St John's Street

London EC1V 4PY

REINO UNIDO

Application No:	014197602
Your reference:
Trade mark:	Easyfeed
Mark type:	Word mark
Applicant:	Natasha Chappell Old Cottage, Bar Lane Southwater RH13 9DL REINO UNIDO

The Office raised an objection on 21/07/2015, 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. The objection letter is attached.

The mark applied for is the word:

Easyfeed

For ease of reference, the contested goods and services are listed below:

Class 1 Nutrients for flowers; Nutrients for plants; Plant nutrients; Plant feed; chemicals for use in agriculture, horticulture or forestry; natural and synthetic manures and fertilisers; plant nutrient compositions, plant growth regulant agents; compositions for use in agriculture, horticulture or forestry containing any of the aforesaid goods; granular and liquid fertilisers, plant nutrients, plant growth regulants and foliar feed compositions; slow, sustained or delayed release fertilisers and plant growth nutrient or regulant compositions; peat and peat substitute products; natural and synthetic plant growth media; dressings, tonics and moss control agents and compositions, all for turf, pasture and lawns; soil conditioning agents, composts, sand based composts, bark composts; crop, animal or municipal waste products, all for use as composts; peat or peat substitute products containing herbicides, pesticides, parasiticides, fungicides or ovicides; lawn sand, containing fertilizers; biological and bacterial preparations and compositions for aiding or enhancing the

growth of grass, turf, plants, shrubs, soft fruit or trees.

Class 11 Irrigation devices [automatic] for horticultural use; Sprinkler installations [automatic] for horticultural purposes; installations and apparatus for the hydroponic cultivation or propagation of plants; lighting units for the hydroponic cultivation of plants; growing units for the hydroponic cultivation or propagation of plants; parts and fittings for all the aforesaid goods; hydroponic devices and implements for growing plants.

Class 37 Installation and maintenance of irrigation systems; installation and maintenance of hydroponic systems.

The applicant submitted its observations on 20/11/2015 which may be summarised as follows:

• The mark is capable of functioning as a trade mark, based as it is on an unusual combination of words, which are joined together to form a single word which has no standard function in everyday English speech.

• Easy and Feed are in themselves commonplace and have an everyday meaning, we believe that by combining the two in this way renders the effect of being distinctive and able to act as a trade mark in its own Right

• The evidence of actual examples provided by the examiner of other uses of the word Easy and Feed in the marketplace all of the products mentioned are using the words Easy Feed in a descriptive manner and as an adjunct to another brand name on the products in question.

• This does not mean that the words when conjoined cannot function as a trade mark in their own right, but rather these manufacturers have chosen to utilise the words in a completely descriptive manner.

• We would also question the examination as it relates to all of the classes in the application. We would argue that even if the office were to maintain its objection in class 1 we would argue that the same objection does not follow with classes 11 and 37.

• The example the office has supplied for Easy Feed Systems is from a company in the United States and is therefore not relevant to the application in the European Union.

• We do not believe that the same analysis of the mark is applicable to classes 11 and 37 and would ask the office to reconsider the ability of this mark to be distinctive and be able to function as a trade mark in relation to these classes.

• We found no examples of any use of the words in relation to hydroponic devices themselves or the services of installing and maintaining these and other systems

• We also contend that the conjoined mark is able to function as a trade mark and would be considered to be distinction and able to act as a badge of origin in relation to these goods and services.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Judgment of 16 September 2004, Case C-329/02P SAT.1 SatellitenFernsehen GmbH / OHIM, (SAT.2), ECR I-8317, 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 October 2003, Case C-191/01P, OHIM /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

The Office is of the opinion that, contrary to what the applicant says the term Easyfeed is indeed descriptive of the kind and characteristics of the goods and services in question.

The expression applied for consists of the combination of two readily identifiable and ordinary words from the English language, namely ‘EASY’ and ‘FEED’. There is nothing unusual about the structure of that sign.

The words in the mark applied for are presented in a sequence that is intellectually meaningful and the combination follows ordinary English grammar. Therefore, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression as it is not sufficiently unusual, ambiguous or fanciful to require a measure of interpretation, thought or analysis by the relevant consumer.

Furthermore, the message expressed by the sign is clear, direct and immediate to the relevant public and in relation to the contested goods and services. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the goods and services claimed.

It is, therefore, the Office’s view that Easyfeed is readily intelligible when taken in conjunction with contested goods and services and merely informs consumers that the goods and services directly relate to feeding (nutrients and nourishment, etc.) to plants, etc., without much difficulty or effort. Therefore, this expression contains obvious and direct information on the kind and the characteristics of the goods and services.

Whilst it is noted that the applicant does not agree with this viewpoint, the Office puts forward that when the mark Easyfeed is used in connection with the contested goods and services, it would be reasonable to accept that the relevant consumer is likely to perceive the expression in a descriptive sense rather than as a badge of sole trade origin.

Furthermore, the Office notes the applicant’s comments that Easyfeed is a coined word, which will be considered as a whole when consumers catch first sight of it and as such will not divide it into two parts, namely ‘EASY FEED’, (which the applicant concurs would be seen in a descriptive sense).

However the Office informs the applicant that whether the mark is analysed as Easyfeed or Easy feed, makes little difference to the basis of the objection raised, as whether analysed separately or as a whole, the expression can only be interpreted and understood one way, namely in a descriptive sense in relation to the contested goods and services. Therefore, the Office has analysed ‘EASY’ and ‘FEED’ separately and has objected on the basis that the mark consists of a word produced by a combination of elements resulting in the mark being descriptive within the meaning of Article 7(1)(c) CTMR.

Moreover, A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [CTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts, that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.) In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgment of 30/11/2004, T‑173/03, ‘NURSERYROOM’, paragraph 21).

Additionally, With regard the applicant’s comments that the mark Easyfeed cannot be descriptive for all of the goods and services claimed, in particular those in Classes 11 and 37, the applicant is reminded 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 and services such as those in relation to which the application is filed, or of characteristics of those goods and 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.).

Furthermore, the Office demonstrated in the examination report that the term EASY FEED is used descriptively in the relevant trade which clearly shows that the term is not merely suggestive or allusive in relation to such goods/services claimed. The applicant’s comments that the Internet extract relating to EASY FEED systems is based in the US and therefore is not relevant is noted and in order to provide further clarification that the term is descriptive in relation to such to goods and services claimed, the Office now brings to the attention of the applicant the following Internet extracts retrieved on 27/01/2016.

http://www.easyfeed.co.uk/index.php

However, as regards the argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience. (See judgment of 15/03/2006, T‑129/04, ‘Forme d'une bouteille en plastique’, paragraph 19.)

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, the application for the Community Trade Mark Easyfeed is hereby rejected for all the goods and services applied for.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Sam CONGREVE