Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 08/12/2015

INNOVATE LEGAL SERVICES LIMITED

107 Fleet Street

London EC4A 2AB

REINO UNIDO

Application No:	014452106
Your reference:	DC/TM196
Trade mark:	THE GALLEY
Mark type:	Word mark
Applicant:	The Galley, LLC 6910 South Lewis Tulsa Oklahoma 74136 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 25/08/2015, pursuant to Article 7(1)(b) and 7(2) CTMR, because it was found that this trade mark is devoid of any distinctive character, for the reasons set out in the attached letter.

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

Class 11 Sinks; kitchen sinks; kitchen sinks for household or domestic use; kitchen sinks for commercial use; kitchen sinks for industrial use; kitchen sink sprayers; sink units; basins; kitchen machines (electric-) for cooking; kitchen machines (gas -) for cooking; wash hand basins and wash hand bowls; mixing valves (faucets) for sinks; plugs of metal for sinks; vanity top sinks; stainless steel sinks; installations and apparatus for water supply and sanitary purposes; taps, mixer taps, tap handles and water fittings; mixing valves for sinks; filtration units, devices and apparatus; apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; plumbing fittings, namely, drain covers for sinks; fittings for the draining of water; sink strainers (plumbing fittings).

Class 35 Retail services in relation to sinks; retail services in relation to kitchen sinks; retail services in relation to kitchen sink sprayers, sink units, basins, dish drying racks, sink strainers (plumbing fittings), waste disposal units, kitchen appliances, wash hand basins, wash hand bowls, plugs, and installations and apparatus for water supply and sanitary purposes; retail services in relation to taps, mixer taps, tap handles, water fittings, mixing valves for sinks, filtration units, devices and apparatus, and apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; online retail services all in the field of sinks, kitchen sinks, kitchen sink sprayers, sink units ,basins, waste disposal units, kitchen appliances, wash hand basins, wash hand bowls, plugs, installations and apparatus for water supply and sanitary purposes, taps, mixer taps, tap handles, water fittings, mixing valves for sinks, filtration units, devices and apparatus, and apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; retail store services featuring sinks; retail store services featuring kitchen sinks; retail services through direct solicitation by distributors directed to end-users featuring sinks; retail services through direct solicitation by distributors directed to end-users featuring kitchen sinks.

On 26/10/2015 the applicant submitted observations, which may be summarised as follows:

• The subject mark ‘THE GALLEY’ is not specifically or exclusively marketed for use in respect of ‘galley kitchens’. The expression does not convey any characteristics of the goods and services at issue, and has sufficient distinctive character as it is unexpected in relation to such goods and services.

• When assessing the distinctive character of the subject mark the examiner has referred to the goods and services in total, without providing reasoning for the objection each of the individual goods and services specified in the application.

• The examiner has provided no evidence to support the objection raised. The Internet extracts provided show that the term ‘galley’ is a potential descriptor for kitchens but not the goods and services at issue.

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 16/09/2004, C-329/02 P, 'SAT.1', paragraph 25).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T-222/02, 'ROBOTUNITS', paragraph 34).

In its submissions the applicant has argued that the subject mark ‘THE GALLEY’ is not specifically or exclusively marketed for use in respect of ‘galley kitchens’. That the expression does not convey any characteristics of the goods and services at issue, and has sufficient distinctive character as it is unexpected in relation to such goods and services.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the meaning of the term

‘THE GALLEY’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified goods and services for which registration is being sought i.e. that they are products designed/intended for use in galley kitchens or galley style kitchens, where space is of a premium, and services related to the retail of such goods. It is, therefore, the Office’s view that the term ‘THE GALLEY’ is readily intelligible when taken in conjunction with the goods applied for, and viewed by the relevant consumer, who will see the phrase ‘THE GALLEY’ merely as a descriptor of the kind of goods being provided rather than an indication of trade origin.

As regard to the applicant argument that the Office did not make a full assessment for all of the individual goods and services applied by giving specific reasons for each of the terms which is required according to established case-law. First of all, with regard to the obligation to state reasons, it is true that the examination of absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, that the Office must, in principle, state reasons in respect of each of those goods or services, although a general reasoning may be used where the same ground of refusal is given for a category or group of goods or services (see, to that respect, 15.02.2007, C- 239/05, The Kitchen Company, EU:C:2007:99, § 34 and 37) which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group (see order of 18.03.2010, C- 282/09 P, P@YWEB CARD and PAYWEB CARD, EU:C:2010:153, § 40). In the case in hand the contested goods listed in Class 11 are kitchen fittings and the services in Class 35 are retail services related to the sale of such fittings. As such, it is considered that these constitute sufficiently homogeneous groups that can allow for a general reasoning. The argument of the applicant must therefore be set aside.

Finally, as regards the argument that Office has not provided any evidence to support the assessment that the mark would not function as an indicator of commercial origin in relation to the relevant goods and services, 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).

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 ‘THE GALLEY’ is hereby rejected in part, namely for:

Class 11 Sinks; kitchen sinks; kitchen sinks for household or domestic use; kitchen sinks for commercial use; kitchen sinks for industrial use; kitchen sink sprayers; sink units; basins; kitchen machines (electric-) for cooking; kitchen machines (gas -) for cooking; wash hand basins and wash hand bowls; mixing valves (faucets) for sinks; plugs of metal for sinks; vanity top sinks; stainless steel sinks; installations and apparatus for water supply and sanitary purposes; taps, mixer taps, tap handles and water fittings; mixing valves for sinks; filtration units, devices and apparatus; apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; plumbing fittings, namely, drain covers for sinks; fittings for the draining of water; sink strainers (plumbing fittings).

Class 35 Retail services in relation to sinks; retail services in relation to kitchen sinks; retail services in relation to kitchen sink sprayers, sink units, basins, dish drying racks, sink strainers (plumbing fittings), waste disposal units, kitchen appliances, wash hand basins, wash hand bowls, plugs, and installations and apparatus for water supply and sanitary purposes; retail services in relation to taps, mixer taps, tap handles, water fittings, mixing valves for sinks, filtration units, devices and apparatus, and apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; online retail services all in the field of sinks, kitchen sinks, kitchen sink sprayers, sink units ,basins, waste disposal units, kitchen appliances, wash hand basins, wash hand bowls, plugs, installations and apparatus for water supply and sanitary purposes, taps, mixer taps, tap handles, water fittings, mixing valves for sinks, filtration units, devices and apparatus, and apparatus for steam generating, cooking, drying, ventilating, water supply and sanitary purposes; retail store services featuring sinks; retail store services featuring kitchen sinks; retail services through direct solicitation by distributors directed to end-users featuring sinks; retail services through direct solicitation by distributors directed to end-users featuring kitchen sinks.

The application will be accepted for the remaining goods and services, namely:

Class 21 Cutting boards; colanders; bowls; drain racks; dish drying racks.

Class 35 Retail store services featuring kitchen appliances, namely, cutting boards, colanders, bowls, and drain racks; retail store services featuring cutting boards, colanders, bowls, and drain racks; retail services through direct solicitation by distributors directed to end-users featuring cutting boards, colanders, bowls, and drain racks.

Under Article 59 of the Community Trade Mark Regulation you have a right to appeal against this decision. Under Article 60 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Andrew CARTER