Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 20/11/2015

HOGAN LOVELLS

Avenida Maisonnave 22

E-03003 Alicante

ESPAÑA

Application No:	014326508
Your reference:	ALI-T-705561
Trade mark:
Mark type:	Figurative mark
Applicant:	Red Bull GmbH Am Brunnen 1 A-5330 Fuschl am See AUSTRIA

The Office raised an objection on 17/07/2015 pursuant to Article 7(1)(b) CTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 22/09/2015, which may be summarised as follows:

1. The sign is inherently distinctive since it was the first energy drink to be sold in a blue and -silver can. This is not a common colour combination and, in the relevant business sector (energy drinks), colours possess distinctive character.

2. If the Office does not agree regarding the inherent distinctiveness of the sign in question, the applicant claims acquired distinctiveness based on Article 7(3) CTMR. Evidence is submitted to prove acquired distinctiveness.

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.

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (judgment of 09/10/2002, T‑360/00, ‘UltraPlus’, paragraph 43).

1. Regarding the applicant’s first argument, that the sign is inherently distinctive, the Office does not agree. As explained in the objection letter, the sign in question is a parallelogram composed of two fields of different colours, namely blue and silver. It does not contain any fanciful element and does not have the necessary minimum degree of distinctive character required for a sign to be considered inherently distinctive.

The arguments that the applicant was a pioneer on the market and that the colours are an uncommon combination does not change the fact that a sign, as simple as this, is not likely to possess inherent distinctiveness even in a particular market in which colours may confer distinctiveness on a sign. It has to be kept in mind that the sign has not been applied for as a colour mark but as a figurative mark.

When encountering this sign on an energy drink can for the first time, the average consumer would not associate the colours to any particular manufacturer but would merely see a simple geometric shape in two colours. Therefore, the mark is devoid of distinctive character and is refused registration on the grounds of Article 7(1)(b) CTMR.

2. Since the Office does not agree that the sign is inherently distinctive, the applicant’s claim of acquired distinctiveness has to be evaluated. Thorough evidence was provided to prove this claim and has been carefully assessed.

The evidence submitted by the applicant consists of the following:

• An affidavit dated 18/09/2015 signed by Ms. Jennifer A. Powers, Red Bull GmbH’s intellectual Property Counsel. It contains a summary of the applicant’s history, sales-, and marketing and advertising expenditure, as well as information on brand value, brand awareness, market share, licensing practice and promotional activities and the applicant’s trade mark portfolio in other jurisdictions, and case law;

• sales and promotional material and figures;

• market studies and market awareness studies;

• publications, rankings and surveys;

• court decisions;

• Eurostat figures.

The following guidance has been given by the European Court of Justice regarding the assessment of evidence of use to prove acquired distinctiveness:

In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may be taken into account: 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 form chambers of commerce and industry or other trade and professional associations.

On the basis of those factors, the competent authority must assess whether the relevant class of persons, or at least a significant proportion thereof, identify goods and or/services as originating from a particular undertaking because of the mark.

Article 7.3 must be construed restrictively and prudently since it grants an exclusive right to the use of the mark even though that mark is not inherently eligible for registration.

In terms of the territorial aspect, the extensive evidence submitted can be considered satisfactory. For the items of evidence that do not give data for the entire European Union (the surveys, the market studies), the conclusions reached in the material submitted can be extrapolated to cover the entire territory due to the homogeneity of consumers of energy drinks and to similar market conditions.

In addition, as regards sales figures and marketing expenditure, as well as market share, the evidence demonstrates a strong presence and market value for the trade marks that appear in the material.

However, after reviewing all of the evidence submitted, the Office cannot accept that the sign in question has acquired distinctiveness through use, for the following reasons:

The evidence relates to the applicant’s trade marks in general and, more specifically, to the colour combination of blue and -silver as an indicator of trade origin for energy drinks and in no case relate to the sign applied for.

Despite the extensive material provided, the applicant has failed to submit evidence of acquired distinctiveness for the trade mark in this particular case, namely the following figurative mark composed of a common parallelogram with two fields in blue and silver:

The applicant refers to this sign in the observations as ‘-the blue/silver cut mark-‘ since it is an extract (a cut) of the complete design of the Red Bull energy drink can. In the material submitted, the sign applied for is not found used on its own but only as a component, a part of the signs used effectively by the applicant in relation to energy drinks and to which the sales- and marketing figures, surveys and studies all refer.

While case law indicates that the use of a sign together with other trade marks is not incompatible with acquired distinctiveness, in this case the Office finds no effective proof that the sign applied for does manage to create a direct link with a particular trade origin in the minds of the consumers.

In order to consider that a component of a trade mark has acquired distinctiveness in itself, as a consequence of the use made by it, the component in question should attract the consumer’s attention as an indicator of trade origin, and be recognised as such, at least to a minimum degree.

From the evidence submitted, and considering a situation in which a consumer sees an energy drink can of any plain colour with this sign depicted on its surface, it cannot be concluded that the person would link such a sign unequivocally with the applicant.

For the abovementioned reasons, and pursuant to Article 7(1)(b) CTMR, the application for Community trade mark No 014326508 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.

Elna ISAKSSON