Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 01/02/2016

NOVAGRAAF UK

2nd Floor, Renown House, 33-34 Bury Street

London London, City of EC3A 5AR

REINO UNIDO

Application No:	014511109
Your reference:	TFA/1574451T/CTM
Trade mark:
Mark type:	Figurative mark
Applicant:	Lucozade Ribena Suntory Limited 2 Longwalk Road, Stockley Park Uxbridge UB11 1BA REINO UNIDO

The Office raised a partial objection on 18/09/2015, pursuant to Article 7(1)(b) and (c) CTMR. The objection letter is enclosed in the annex.

Following a limitation, for ease of reference, the objected goods are listed below:

Class 25 Mineral waters; aerated waters; non-alcoholic beverages; preparations for making beverages; aerated juices; beers; beverages containing vitamins; bottled water; carbonated non-alcoholic drinks; concentrates for use in the preparation of soft drinks; cordials; pastilles for effervescing beverages; energy drinks; energy drinks containing caffeine; essences for making beverages; flavoured waters; fruit based beverages; fruit flavoured beverages; fruit juices; fruit squashes; isotonic beverages; isotonic drinks; juices; low calorie soft drinks; smoothies; soft drinks; sports drinks; sports drinks containing electrolytes; squashes [non-alcoholic beverages]; syrups for making beverages.

The applicant submitted its observations on 09/10/2015, which may be summarised as follows:

1. The mark is neither banal nor basic.

2. The mark depicts a bottle which is not a basic shape.

3. The mark is not descriptive; it does not combine a basic shape.

4. The shape departs significantly from the shape expected.

5. The mark is distinctive.

6. The Office has not submitted any proof that the contested mark corresponds with the customary shape.

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 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).

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.)

‘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).

As already stated in the objection letter of 18/09/2015 the pictures on the bottle have a descriptive meaning.

Furthermore, it does not matter that a sign may have also other connotations:

For a trade mark to be refused registration under Article 7(1)(c) CTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

‘The signs and indications referred to in Article 7(1)(c) 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).

The applicant did not bring any convincing arguments why the mark is not descriptive.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

Given that the mark has a clear descriptive meaning in relation to the objectionable goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, the mark is devoid of any distinctive character and is not capable of distinguishing the objectionable goods and services for which registration is sought.

The argument that the container is a unique creation, specifically commissioned by the applicant, is also lacking in grounds. The declaration of distinctive character of a trade mark in the context of Article 7(1)(b) CTMR is not subordinate to noting a certain degree of artistic creativity or imagination by the trade mark applicant. It is sufficient that this enables the relevant public to identify the origin of protected products and to distinguish them from those of other companies is not verified in this case (see judgment of 29 September 2009, T-139/08 ‘sourire du smiley’, paragraph 27 and decision of 02/06/2010, R 1442/2009-1, ‘Representation of a milk bottle’ (figurative mark), paragraph 27).

The Office was also not required to submit proof that the applied sign of a bottle corresponds with the customary shape. The Office can base its examination of distinctive nature on facts arising from generally acquired experience and known by consumers when dealing with currently consumed products as in the case of mineral waters and other non-alcoholic drinks (see judgment of 15/03/2006, T-129/04, ‚Plastikflaschenform (plastic bottle shape)‘, paragraph 19). Secondly, to the extent that they are more familiar with the market, the onus is on the applicant to demonstrate that the sign at issue is distinctive and, therefore, ideal to differentiate the commercial origin of its products (see judgments of 5/03/2003, T-194/01, ‘soap device’, paragraph 48.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) CTMR, the application for Community trade mark No 014511109 is hereby rejected for the 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.

Martin EBERL