Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/01/2016

THE BOOTS COMPANY PLC

Jamie Sala-Scott

The Boots Company PLC

Group Intellectual Property

Nottinghan NG90 1BS

REINO UNIDO

Application No:	014397913
Your reference:	JSS/KAL/24373
Trade mark:	DOUBLE DEFENCE
Mark type:	Word mark
Applicant:	THE BOOTS COMPANY PLC . Nottingham NG2 3AA REINO UNIDO

The Office raised an objection on 09/09/2015 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 06/11/2015, which may be summarised as follows:

1. Examiner has failed to consider the mark as a whole and has instead placed too much emphasis on the individual elements of the mark. There was no consideration as to whether the words ‘DOUBLE DEFENCE’ follow a grammatical structure. The words are not a familiar expression in the English language due to their syntactically unusual juxtaposition. The ‘action of defence’ cannot be doubled.

2. The relevant public will not be able to identify the specific nature of characteristics of the goods at issue, confronted with the words ‘DOUBLE DEFENCE’. The examiner’s recognition that ‘the mark ‘DOUBLE DEFENCE’ immediately inform consumers without further reflection that ‘the goods… are providing a function of defending twice as much in quantity or strength against unspecified negative factors, such as sunlight, environmental stress or aging’ even supports the argument that the mark has a vague and indeterminate meaning in relation to the relevant goods. The average consumer is not likely to view sunlight, the environment and aging as an attack on the body that requires defence. The mark contains no specific indication as to what that ‘unspecified’ element is.

3. Since the mark does not consist exclusively of descriptive signs or indications, the mark is not devoid of any distinctive character.

4. Several similar marks have been approved by the OHIM with the goods in Class 3 and the mark ‘DOUBLE DEFENCE’ is, at least, more distinctive than those registered marks.

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.

As mentioned in the applicant’s observation, since the trade mark at issue is made up of two components, 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).

1. Since the words DOUBLE DEFENCE are composed of the adjective ‘double’ and the noun ‘defence’, they are considered to comply with English grammar. Contrary to the applicant’s argument, the mark was taken into consideration as a whole and it was found that it will not be perceived as unusual but as a meaningful expression in relation to the goods in question, namely, defence or protection twice the usual quantity or strength (e.g. against sunlight, aging or environmental stress) as stated in the Office’s objection letter. Furthermore, it should be noted that the words ‘DOUBLE DEFENCE’ are currently used in several markets including the cosmetic market in a descriptive way as below, and therefore it cannot be endowed with sufficient function to indicate commercial origin.

http://www.ukbikefactory.com/schwalbe-marathon-deluxe-evo-double-defence-roadstar-compound-folding-tyre.html

https://www.wageningenur.nl/en/newsarticle/Mustard-plants-have-double-defence-against-insect-pests.htm

http://adshel.co.nz/insights/nivea-sun-double-defence/

http://www.poshbeauty.co.uk/caci-non-surgical-treatments/

http://www.reallyree.com/2014/09/estee-lauder-enlighten-ee-cream-review.html

2. The applicant argues that the mark has vague and indeterminate meaning in relation to the goods in question and therefore it does not consist exclusively of descriptive signs or indications. In that regards, since the search results above confirm that the words ‘DOUBLE DEFENCE’ are commonly used in the cosmetic market, designating a functional quality of cosmetic products, that is, a function of double defending or protecting skin or body parts against possible negative factors, the relevant consumer will easily perceive the mark as indicating descriptive character of the goods in question. The Office, therefore, considers that the mark, as it is, has clear meaning in relation to the goods at issue to sufficiently function as a ground for refusal.

3. As regards the applicant’s argument that several similar registrations 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 should be noted that the following applications have been refused by the Office for the goods in Class 3:

CTM 007468911 FIRST DEFENCE

CTM 009216681 DUAL DEFENSE

CTM 012038791 TOTAL DEFENSE

CTM 013432026 ULTRADEFENSE

4. Despite the applicant’s arguments, the Office remains of the view that the mark is descriptive of the goods 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 14 397 913 is hereby rejected for the following goods:

Class 3 Night creams; serums; beauty serums; day creams; eye creams [not medicated]; night creams; creams; skin creams; balms; gels; toiletries and skin preparations, moisture cream, skin cleansing lotions and creams, skin fresheners, conditioning body creams; cosmetics and toiletries for complexion improvement; skin toner; moisturizers; facial firming and anti-ageing creams and serums; body firming and anti-ageing creams and serums; beauty serums with anti-ageing properties.

The application is accepted for the remaining services.

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 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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