Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 18/05/2017

PAGE WHITE & FARRER

Bedford House, John Street

London WC1N 2BF

REINO UNIDO

Application No:	014586002
Your reference:	402309/TJB/mm
Trade mark:	GOLD COLLAGEN
Mark type:	Word mark
Applicant:	Minerva Research Labs ltd 1-6 Yarmouth Place, Mayfair London, Middlesex W1J 7BU REINO UNIDO

The Office raised an objection on 14/10/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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.

After two extensions granted, on 15/02/2016, the applicant submitted a request to limit the list of goods and services of the above trade mark application and its observations.

On 02/09/2016 and after giving due consideration to these arguments, the Office decided to maintain the objection and gave a new deadline to submit evidence of acquired distinctiveness under the provisions of Article 7(3).

On 08/11/2016 the applicant requested an extension of time to submit his observations which was granted by the Office.

On 30/12/2016 the Applicant submitted the evidence of acquired distinctiveness under the provisions of Article 7(3) which may be summarised as follows:

Witness Statement of Tony Sanguinetti as President and CEO of Minerva Research Labs Ltd ("my company")

Annex TSF1: shows the packaging of the GOLD COLLAGEN products.

Annex TSF2: Webpages displaying my company’s products including GOLD COLLAGEN FORTE are attached hereto as by conducting a search for GOLD COLLAGEN.

Sales of the products have been through high street retail chains such as Boots, where GOLD COLLAGEN is one of the top selling products, Holland &. Barrett and Superdrug

Annex TSF3: extracts from nternational websites www.lookfantastic.com and www .Beautyexpert.com delivering GOLD COLLAGEN products to many countries outside of the UK including the Republic of reland and Malta

Annex TSF4: screen shots obtained from the Internet archive website https://archive.org web for the years 2012, 2013 and 20141 showing the products

Annex TSF5: is a table showing the approximate breakdown of sales between the UK, ROI and Malta for the GOLD COLLAGEN products with sales

Annex TSF6: amounts on marketing and promoting its GOLD COLLAGEN products

Annex TSF7: overview of my company's marketing activities and materials in relation to GOLD COLLAGEN FORTE and breakdown of my company’s key advertising and promotional activities for GOLD COLLAGEN FORTE products in the years 2014 and 2015.

Annex TSF8: copies of advertisements and features in magazines and beauty blogs

Annex TSF9: printouts of pages showing products on social media including on its facebook page

Pursuant to Article 75 EUTMR, 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. As regards the lack of inherent distinctiveness under Article 7(1)(b) EUTMR and (c), the Office refers to the arguments, facts and evidence included in the notifications of 02/09/2016 (see attachment).

1. Acquired distinctiveness.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The Witness Statement of Tony Sanguinetti as President and CEO of Minerva Research Labs and materials thereto annexed are not sufficient to establish that the sign has acquired distinctiveness. The affidavit contains some references concerning the use of the mark applied for in the relevant territories, and also global and annual sales figures, and global figures of promotional and marketing expenditure. The materials consist of printout of pages from webs where the products are made available.

Acquired distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data, such as specific percentages (see, by analogy, Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee [1999] ECR I-2779, paragraph 52, and Philips, paragraphs 61 and 62, and Shape of a beer bottle, paragraph 42).

In the case at hand, the lists of Sales and Subscriptions in exhibits A and B only show global figures concerning the activities of the organisation but not related to the market share held by the sign GOLD COLLAGEN and GOLD COLLAGEN FORTE, the intensity, geographical scope and duration of the use of the mark and the amount invested by the undertaking in promoting the sign GOLD COLLAGEN.

As examples of the proposed mark in use, the applicant has enclosed examples of publications bearing the word combinations GOLD COLLAGEN and GOLD COLLAGEN FORTE and a gold and white figurative elements.

However, the the word combinations GOLD COLLAGEN and GOLD COLLAGEN FORTE have not been found to be used as an isolated sign on any of the publications nor the extracts.

It must therefore be concluded that the sign will not enable the relevant consumers to recognise it as distinctive because of the use which has been made under the sign in the meaning of Article 7(3) CTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 586 002 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.

Agueda MAS PASTOR