Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 17/03/2016

KLEINER RECHTSANWÄLTE

Alexanderstr. 3

D-70184 Stuttgart

ALEMANIA

Application No:	014497812
Your reference:	1115-15_DP/se
Trade mark:	OPTIMO
Mark type:	Word mark
Applicant:	Optimo Hat Company, Inc. 10215 South Western Avenue Chicago, Illinois Illinois 60613 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/09/2015 pursuant to Article 7(1)(b) and 7(2) 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 05/01/2016, which may be summarised as follows:

1. The fact that the mark applied for is a word used in Spanish and Portuguese is not sufficient to deny distinctiveness. It is established that common words of a language in the European Union are not per se excluded from trademark protection. When assessing the distinctive character of a trademark the goods and services covered by the mark has to be considered. The Office did not provide a single evidence that the sign “OPTIMO” is a common expression to describe characteristics of the covered goods. We have conducted a search on Google using the words “optimo” and “hat”. The search results show that all links refer to the client and its “OPTIMO” mark. No references were found where “optimo” was used in a descriptive way.

2. Without an additional word element it is not clear what the expression “OPTIMO” refers to. The mark “OPTIMO” may refer to characteristics of the goods. However, it can also refer to the person who wear “eyeglasses”, “watches” and “hats”, etc. The mark “OPTIMO” might mean that the products make the respective person “excellent” or “perfect”. Or it could mean that only “excellent” or “perfect” people wear such products. Consequently, the mark is vague and needs interpretation.

3. The finding that the mark applied for is not devoid distinctive character is also confirmed by previous CTM registrations.

4. It has to be mentioned that the mark “OPTIMO” was filed and registered in the US as well.

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.

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).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (judgment of 04/10/2001, C‑517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T‑138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

As stated in the previous letter of the Office dated 07/09/2015, and acknowledged by the applicant, the mark applied for, ‘OPTIMO’, is a common laudatory word in both Spanish and Portuguese which means: very good, excellent, cannot be better. It is not vague, nor does it need interpretation. For the relevant public, i.e. the Spanish and/or Portuguese consumer, goods such as socks, hats, glasses, wrist watches, clothing, etc. can described or promoted by other traders as ‘optimo’, e.g. un producto optimo, un sombrero optimo, un reloj optimo, etc. The relevant public will not see the word as an indication of commercial origin.

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) CTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

With regards to the Internet search by the applicant, it is important to remember that the relevant public is the Spanish and/or Portuguese consumer, and as such, any search that is done must carried out by using Spanish or Portuguese words for the products. ‘Optimo’ + ‘hats’ will not show any hits because the word ‘hat’ is not used to describe that good in those countries. One would need to use Spanish or Portuguese vocabulary for that type of search, and this, of course, would yield different results. At any rate, the adjective ‘optimo’ does not to appear next to the word of the product to be considered non-distinctive. It is sufficient that it be presented in conjunction with the goods themselves for the relevant public to understand its meaning.

Furthermore, as stated by the Boards of Appeal, ‘…Although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) CTMR, it is not a conditio sine qua non’ (decision of 28/06/2007, R 0371/2007‑2 - ‘PUBLIC STORAGE’, paragraph 16).

As regards the argument that it is up to the Office to show that other similar signs are used in the market 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).

Also, 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).

As regards the US decision 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).

Moreover, as regards the applicant’s argument that a number of 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 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).

Consequently, taken as a whole, the mark applied for – ‘OPTIMO’ – is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 014497812 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.

Herbert JOHNSTON