Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 25/11/2015

NOVAGRAAF NEDERLAND B.V.

P.O. Box 22722

NL-1100 DE Amsterdam

NETHERLANDS

Application No:	14 223 812
Your reference:	GvH/1567911T/CTM
Trade mark:	PERLWEISS
Mark type:	Word mark
Applicant:	CHURCH & DWIGHT CO., INC. 500 Charles Ewing Boulevard Ewing, New Jersey 08628 UNITED STATES OF AMERICA

The Office raised an objection on 20/07/2015 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, for the reasons set out in the attached letter.

The applicant submitted its observations on 18/09/2015, which may be summarised as follows:

1. The applicant claims that the identical mark (CTM 685 99 21 PERL WEISS) has previously been accepted by the Office for similar goods.

2. The applicant claims that identical marks have been registered by some national offices.

3. The applicant also filed evidence for acquired distinctiveness under Article 7(3) CTMR.

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)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

The mark ‘PERLWEISS’ assessed as a whole immediately inform consumers that the goods applied for are oral care and oral hygiene products in Classes 3 and 21, and chewing gums, mints and non-medicated lozenges in Class 30, all of which have the purpose of giving the teeth a pearly white colour.

Therefore, the mark conveys obvious and direct information regarding the intended purpose of the goods in question.

When taken as a whole, the meaning of the expression ‘PERLWEISS’ will be clear to any German-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is being sought.

It is, therefore, the Office’s view that the expression ‘PERLWEISS’ is readily intelligible when taken in conjunction with the goods applied for, and viewed by the relevant consumer, who will see the expression merely as a descriptor of the kind of goods in question rather that an indicator of who is providing them.

With regard to the applicant’s observations, the Office responds as follows:

1. The applicant claims that an identical mark (CTM 685 99 21 PERL WEISS) has previously been accepted by the Office.

As regards the applicant’s argument that an identical registration 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).

2. The applicant claims that identical marks have also been registered by national offices.

As regards the national decisions referred to by the applicant, 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.)

In addition references to national registrations conferred by Member States which do not have German as their language, where the sign may well be distinctive without necessarily being so throughout the European Union, cannot be accepted as relevant in this case (see by analogy the judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 40).

3. Acquired distinctiveness under Article 7(3) CTMR.

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. 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.

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 products 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.

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.

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.

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 10/11/2004, T-396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C-108/97 and C-109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C-25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C-299/99, ‘Philips’, paragraph 63).

The applicant submitted its evidence of acquired distinctiveness together with its observations on 18/09/2015, which may be summarised as follows:

1. The mark was introduced in 1993 in connection with oral care products in Germany and the applicant owns the internet domain http://www.perlweiss.de . In addition, oral care products bearing the mark are also being sold in Hungary (http://www.perlweiss.hu ) and in Austria.

The following attachments were submitted with observations:

2. Attachment 2: Financial Report regarding total sales and turnovers.

3. Attachment 3: Copies of advertisements/promotions in magazines and a store-shelf photo showing the mark in use.

4. Attachment 4: A report listing airtime information regarding ‘PERLWEISS’ TV commercials.

5. Attachment 5: Letters to confirm the amount of investment regarding television ads.

6. Attachment 6: Copies of product coupons.

7. Attachment 7: Videos of TV commercials.

According to current case-law of the Court of Justice in the case
T-190/09 of 09/03/2011, „5 HTP“, in assessing the distinctive character of a mark in respect of which registration has been applied for, the following may, inter alia, be taken into account (see para. 47):

1. The market share held by the mark;

2. How intensive, geographically widespread and long-standing use of the mark has been;

3. The amount invested by the undertaking in promoting the mark;

4. The proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;

5. Statements from chambers of commerce and industry or other trade and professional associations;

6. Opinion polls;

7. The distinctive character, also acquired through use, must be assessed in relation to the goods and services applied for (para. 65);

8. The applicant has to demonstrate to the Office that its trade mark had acquired distinctive character before the filing date of the mark.

Taking into account the evidence provided by the applicant and having the case law in mind the Office cannot accept the acquisition of distinctiveness through use for the following reasons:

• The objection was raised with reference to the German-speaking consumer in the European Union. The Member States in which German is official language or one of the official languages are Germany, Austria, Luxembourg and Belgium. In relation to Luxembourg and Belgium, there is no specific information or evidence which shows that the mark applied for has acquired distinctive character through use in these territories for the goods objected to. And with regard to the Germany and Austria, some information on sales was given but they were not clear enough.

• The information about the market share, sales in value and volume are based on a ‘financial report’ prepared by Nielsen. There is no information given in the submissions what Nielsen is and about the methodology this company or organisation applied in the preparation of the report. It is alleged in the letter that the market share of the mark is more than 8 percent but the Office cannot extract this information from the financial report. In addition the report is about the teeth-whitening sector and there is no specific information about the market share of ‘PERLWEISS’ goods for the territories in which the mark is considered objectionable. It also does not show use for all goods applied for in the application.

• The evidence does not provide sufficient data relating to how intensive and geographically widespread the use of the mark is.

• Attachment 3, 4 and 5 provide some general and abstract data about the advertisement activities and the amount invested in advertising but there is no specific information about advertisement of ‘PERLWEISS’ mark within Luxembourg and Belgium. And even for Germany and Austria the information given is not specific enough.

• There is a store shelf photo showing the mark in use but it is not possible to see in which country, in which town or at what time the products were offered.

• There are no statements of chambers of commerce or other independent sources.

• There are no surveys and polls.

• Finally, the evidence provided some general and abstract data, but did not specify actual figures or percentages of market share for the territories in which the mark is considered objectionable.

In the assessment of the evidence provided, the Office highlights that, according to the General Court (see, inter alia, judgment of 12 September 2007, T-141/06, ‘Glaverbel’, paragraph 40), a distinction must be made between ‘direct proof’ of acquisition of distinctive character (surveys, evidence of the market shares held by the mark, statements from Chambers of Commerce and Industry or other trade and professional associations) and ‘secondary evidence’ (sales volumes and advertising material, duration of use) that are merely indicative of the mark’s recognition on the market. Though secondary evidence may serve to corroborate direct proof, it cannot substitute it.

In the case at hand, it must be held that the evidence provided is mainly secondary evidence. The applicant did not provide the Office with any survey or evidence of the market shares held by the mark ‘PERLWEISS’ and the recognition by the relevant public through opinion polls or surveys. The financial report with sale figures is not sufficient. There is no clear information on the company and its methodology who collected this evidence, and neither about the market as a whole. A market share of more than 8% is claimed but nowhere proven.

It follows that, having considered the evidence in its entirety, the Office does not find that the trade mark ‘PERLWEISS’ has been used to such an extent that the use proves that it will be recognised by a significant proportion of the relevant public.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, the application for Community trade mark No 14 223 812 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.

Mustafa IMAMOGLU