Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 06/11/2015

BARDEHLE PAGENBERG PARTNERSCHAFT MBB PATENTANWÄLTE, RECHTSANWÄLTE

Postfach 86 06 20

D-81633 München

ALEMANIA

Application No:	014258024
Your reference:	M134447EMCE/ang
Trade mark:
Mark type:	Figurative mark
Applicant:	McDonald's International Property Company, Ltd. 2711 Centerville Road, Suite 400 Wilmington, DE 19808 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 1/7/2015, pursuant to Article 7(1)(b) and (c) CTMR, because it was found that this trade mark is descriptive an 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:

• The examiner did not access the overall impression of the sign as a whole in particular its visual elements like the colours, style elements etc.

• The relevant sector is restaurants and none of the images displayed in the notice of objection are taken from websites of restaurants.

• The mark at issue is sufficiently stylized to significantly differ from a true-to-life representation of pieces of food in a shape of strips in a paper container and its degree of abstraction to such pieces of food in a paper container is sufficiently high.

• The applicant requests that the Office waives the objection and allows the application to proceed for publication.

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, ‘trademarks 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 trademarks 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 trademarks. (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).

Under Article 7(1)(b) CTMR, ‘trademarks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d’une bouteille’, paragraph 34).

The subject-matter of the trade mark application is confined to the graphic representation as filed. A mark’s distinctiveness must be judged on the basis of the representation as filed. The public must be able to rely on the Register in order to ascertain with certainty what the subject-matter of the trade mark is, therefore, the mark’s representation must be, inter alia, intelligible, unequivocal and objective (see judgment of 12 December 2002, C-273/00, ‘Sieckmann’, paras 50 to 55).

The more closely the image of the shape for which registration is sought resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character for the purposes of Article 7(1)(b) CTMR. Only a trade mark which departs significantly from the norms or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character (see judgments of 29 April 2004 C- 456/01 P and C-457/01 P, ‘Tabs’, para. 39; of 7 October 2004, C-136/02, ‘Torches’, para. 31; and of 17 January 2006, T-398/04, ‘Tabs’, para. 30). A simple departure from the norm or customs of the sector is not sufficient, the departure must be significant (see judgment of 12 February 2004, C-218/01, ‘Perwoll’, para. 49).

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).

The applicant submits that the examiner seems to have objected the mark essentially on the grounds that it consists of a representation of pieces of food in a shape of strips in a paper container and on the basis of an Internet search. In doing so the examiner did not assess the overall impression of the sign as a whole in particular its visual elements, like the colours, style elements, etc. Furthermore the applicant makes the observation that the mark applied for does not consist of a true-to-life representation of pieces of food in a shape of strips in a paper container. The applicant concludes that for this reason alone the sign is distinguishable for the appearance of these types of food in a paper container itself.

As for the observation that none of the images displayed in the notice of grounds for refusal are taken from websites of restaurants or websites related to restaurants the Office contends that these examples were to show that this kind of graphic representation of foodstuffs is quite common and the public is widely exposed to it and that therefore the applied for sign does not depart significantly from the norm. It is not up to the Office to show that other similar signs are used in the market, the Court has confirmed that: where the Opposition Division or the Boards 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 Opposition Division or the Boards 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.).

The Office submits that the relevant public would view the representation of the fries or similar shaped foodstuffs in a paper container as a mere reference to the foods and drinks and the catering services rendered. The applied for device is a close representation of pieces of food in a shape of strips, such as fries, in a paper or cardboard container. The stylised image such as depicted in the application is a very widespread and commonplace image for these type of potato fries or other kinds of food in a similar shape in a paper or cardboard container and more broadly an indication of fast food. The relevant consumer is sufficiently educated to understand that the image of pieces of food in a shape of strips in a paper container in the style of a pictogram exposed in a restaurant or placed on a menu is not restricted to pieces of food in a shape of strips in a paper container only but is also a reference to all the fast food served.

The Office does not follow the applicant’s reasoning that in this case the mark applied for does not consist of a true-to-life representation of pieces of food in a shape of strips in a paper container and that the representation of these types of products with its colours and style elements bestows the device as a whole with distinctive quality. Also the applicant failed to demonstrate that the colouring or other decorative patterns included in the mark would enable this particular sign to indicate the origin of the goods in question. Although the sign is not a photograph of this kind of product it will be clearly recognised by the relevant public as being the image of a of French fries or other similar pieces of food in a shape of strips in a paper container. In the food industry it is commonplace to portray foodstuffs in the style of graphic designs and drawings, not just exact photographic images. In this specific case the relevant consumer, used to recognise several highly stylised pictograms in the food and catering sector and in search of finding a place to eat and to find out what type of food there is on the menu, will merely see in the applied for sign a direct reference of what he is looking for and will fail to perceive this sign as a badge of origin. Therefore, the sign does not have an unusual or ambiguous character which would lead the relevant public to make an association other than with the goods being sold and the services being provided. There is no additional unusual element such as the colours to distinguish the applicant's goods and services from those of a different commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) CTMR, the application for Community Trade Mark - 14258024 - is hereby rejected for all the goods and services claimed.

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.

Erika MIHELIČOVÁ