Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 29/01/2016

JCP Solicitors Limited

Venture Court Waterside Business Park

Swansea [Abertawe GB-ATA] SA6 8QP

REINO UNIDO

Application No:	014506604
Your reference:	84085/5
Trade mark:	RECOVER
Mark type:	Figurative mark
Applicant:	FLOURISH MAKE UP LTD 9 BRIDLE CLOSE KINGSTON UPON THAMES KT1 2JW REINO UNIDO

The Office raised an objection on 16/09/2015 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 26/10/2015, which may be summarised as follows:

1. The definition of the word ‘RECOVER’ as set by the Office in its notice of 16/09/2015 is not descriptive of the goods and services in question. The cosmetics do not enable a person to regain or recover a former/better condition, but rather assist the person to create the illusion of having a certain complexion.

2. The applicant is of the opinion that the figurative device within the mark is able to endow it with a distinctive character. The square is placed in an unusual position, it distracts the word ‘RECOVER’ that it is not read as ‘RECOVER’ anymore but as ‘RE’ and ‘COVER’.

3. The applicant referred to the national registration of the mark in the United Kingdom (No UK0003063424).

4. The applicant suggested the limitation of the list of goods and services to overcome the objections.

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).

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.

‘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).

1. Regarding the first applicant’s argument, the Office disagrees. The Office is of the opinion that the relevant public would perceive the mark as conveying obvious and direct information that the goods and services in question are intended to help the consumers to regain former and usually better conditions of a body. If such goods and services are really able to regain former conditions of a body or merely enable consumers to create an illusion of it is irrelevant.

2. As regards the second applicant’s argument, the Office disagrees. The Office notes that the figurative device that is in a same colour as word element is merely a square that is a simple geometric shape. Furthermore, the Office does not consider position of a square as unusual at all. It merely separates the prefix ‘RE-‘ from the rest of the word. The Office does not find the stylisation of the mark ‘RECOVER’ (colour and device of a square) original enough to endow it with a distinctive character.

3. As regards the national 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.)

4. Regarding the limitation proposed by the applicant, the Office is of the opinion that such limitation would not overcome the objections that were raised. Amended list of goods and services would contain the goods and services that have been objected and, therefore, the limitation of the list of goods and services would not overcome the objections that have been raised.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 506 604 is hereby rejected for the following goods/services:

Class 3 Cosmetics; Cosmetics preparations; Skincare cosmetics; Colour cosmetics for the skin; Makeup; Skin foundation; Facial concealer; Cosmetic creams.

Class 44 Cosmetic make-up services; Consultancy services relating to cosmetics.

The application is accepted for the remaining goods/services.

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.

Klara BOUSKOVA