Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 29/01/2016

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	014515902
Your reference:	TMU/RW2/4613340
Trade mark:	PLAQUESEEK
Mark type:	Word mark
Applicant:	CHURCH & DWIGHT CO., INC. 500 Charles Ewing Boulevard Ewing, New Jersey 08628 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 15/09/2015 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 13/11/2015, which may be summarised as follows:

1. The combination of the words “PLAQUE and SEEK” creates an unusual and fanciful mark, as “PLAQUESEEK” does not conform to normal English grammar and is a syntactically unusual juxtaposition of words.

2. The mark “PLAQUESEEK” may be considered allusive of the qualities of the products, but it is not directly descriptive. The mark does not inform the public of the characteristics of the goods.

3. The Office has previously accepted several marks including the words "Plaque" and/or "Seek" in respect of a range of goods and/or services.

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.

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.2 EU:C:2004:532’, § 25).

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 sign which has been applied for “PLAQUESEEK” immediately informs consumers without further reflection that the goods applied for are various kind of hygiene products, including agents designed to detect, highlight and remove plaque.

Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods.

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’, EU:C:2003:579, § 31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § ‘21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

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

As regards the applicant's observations, the Office replies as follows:

1. The combination of the words “PLAQUE” and “SEEK” creates an unusual and fanciful mark, as PLAQUESEEK does not conform to normal English grammar and is a syntactically unusual juxtaposition of words.

In response to the Applicant’s statement, the Office explains that in the present case both words presented in the trade mark in combination are directly descriptive; the word „PLAQUE“, as previously explained, refers to filmy deposit on the surface of a tooth consisting of a mixture of mucus, bacteria, food, etc.; and the word „SEEK“ has the definition “to try to find by searching; look for”. These meanings are attributed to these words on the basis of information found in Collins’ English Dictionary. The goods in the present case are Oral care and hygiene products, namely, dentifrices, mouthwashes, a component ingredient of dentifrices and a component ingredient of mouthwashes in Class 3. It is a known fact that oral care products enable one to avoid and prevent damage caused by plaque; therefore, it is reasonable to assume that the relevant consumer is able to attribute to the words the same meaning as is claimed by the Office. Therefore taking into account on the one hand the meaning of the claimed trade mark, and on the other hand, the claimed goods, the Office considers there to be a direct connection between the mark and the goods, as the applied for trade mark describes directly the kind and intended purpose of the goods in question.

The claimed sign contains the words "PLAQUE" and "SEEK", which, when viewed as a whole, create an overall impression which is not sufficiently far from that produced by the combination of meanings of the elements of which it is composed, and the result is just the sum of its parts. The mark does not possess the minimum level of distinctiveness, originality or resonance required.

The mark applied for – “PLAQUESEEK” – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

2. The mark “PLAQUESEEK” may be considered allusive of the qualities of the products, but it is not directly descriptive. The mark does not inform the public of the characteristics of the goods.

The term “PLAQUESEEK” as referring to the goods applied for are directly descriptive as it immediately informs consumers without further reflection that the goods applied for are various kinds of hygiene products, including agents designed to detect, highlight and remove plaque. The Office considers there to be no need for an additional mental step to understand the connection between the mark and the goods and services.

In the context of the claimed goods the trade mark has a directly descriptive meaning. Therefore the Office cannot agree with the Applicant that there is no obvious or direct link between the sign and the objected goods.

3. The Office has previously accepted several marks including the words "Plaque" and/or "Seek" in respect of a range of goods and/or services.

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 that regulation, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15 September 2005, C-37/03P, ‘BioID’, EU:C:2005:547, § 47 and judgment of 9 October 2002, T-36/01, ‘Glass-sheet surface, EU:T:2002:245, § 35).

Moreover, it is not appropriate to compare the mark applied for and the registrations quoted by the applicant. This is mainly because any given mark should be assessed as a whole and not by comparing its individual elements with other registrations.

Further, 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 (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 519 902 is hereby rejected.

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.

Liina PUU