Total refusal of an application for a EU trade mark under Articles 7 and 37 of the European Union Trade Mark Regulation (EUTMR) no. 2015/2424 and Rule 11(3) of the Implementing Regulation (IR) no. 2868/1995

Alicante, 05/10/2016

Hortis Legal

P.O. Box 1072

2280 CB Rijswijk

The Netherlands

Application No	14605117
Your reference	512328
Trade mark	ELIXIR ULTRADEFENSE
Applicant	Ole Martin Rørdam Fjordgata 50 7010 Trondheim Norway

• Procedure

The Office raised an absolute grounds objection on 22 October 2015, pursuant to article 7(1)(b), (c) and 7(2) CTMR (now EUTMR, the articles have remained the same), because it was found that this sign is descriptive and devoid of any distinctive character for the reasons set out in the attached letter.

On 15 December 2015 the applicant replied with the following counter-arguments:

1. EUIPO registered similar trade marks in the past.

2. Applicant and representative presume that the examiner is prejudiced and not objective.

3. The examiner misinterpreted the dictionary definitions.

4. There is no direct link between the sign and the claimed goods.

• Decision

Pursuant to article 75 EUTMR, it is up to the Office to make a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due and careful consideration to the applicant’s arguments, the Office has decided to maintain the objection and refuse the application for all goods:

3

Cosmetics; Cosmetic preparations; make-up; skin care preparations; toiletries; hair preparations and treatments; perfumery and fragrances; soap; Cosmetic oils; Creams (Cosmetic -); Non-medicated lotions; Gels for cosmetic purposes; Moisturizers; Serums for cosmetic purposes; Sun screen.

• Refutal of counterarguments

The Office comments on this refusal and the applicant’s arguments hereunder:

1. EUIPO registered similar trade marks in the past.

It is irrelevant, whether or not similar signs were registered here in the Office or in other jurisdictions:

“Finally, as to the applicant's arguments on national applications and earlier decisions of the Office, it must be borne in mind that it is settled case-law, first of all, that the Community trade mark system is autonomous and, secondly, that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, and not the Office's practice in earlier decisions (see judgments in Cases T-122/99 Procter & Gamble v OHIM (soap bar shape) [2000] ECR II-265, paragraphs 60 and 61; T-32/00 Messe München v OHIM (electronica) [2000] ECR II-3829, paragraph 47; and T-106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-723, paragraph 66). Accordingly, the Office is bound neither by national registrations nor by its own previous decisions. Furthermore, as the Office rightly argued, neither the reference to a national registration that postdates the examiner's refusal of the application for registration, nor the reference to registrations by the Office that are open to subsequent challenge before the bodies responsible for reviewing their legality, may be accepted as relevant.”

(Judgment of the Court of First Instance in the case T-130/01 REAL PEOPLE, REAL SOLUTIONS, par. 31, dated 5 December 2002)

The Office once more mentions EUTMA 13432026 ULTRADEFENSE by the same applicant, which was refused on absolute grounds for the same goods.

Apart from this the Office wishes to remark that for instance L’ELIXIR D’ORIENT on the one hand and ELIXIR ULTRADEFENSE on the other hand are not “similar trade marks”, simply because they both contain the word ELIXIR.

2. Applicant and representative presume that the examiner is prejudiced and not objective.

The applicant is of the opinion that the reasoning behind the initial objection of 22 October 2015 is not sound and that therefore the examiner must be prejudiced. This notion is too preposterous for words.

3. The examiner misinterpreted the dictionary definitions.

Words usually have an original meaning, from which other meanings are derived in the course of time. The original meaning of “elixir” is: “magic potion that would give a person eternal life”. From this meaning evolved other meanings like any magic solution or potion (Oxford Dictionary) or anything that purports to be a sovereign remedy (Collins).

Nowadays the word “elixir” is commonly used in the field of cosmetics. One of the strongest indications for this statement (apart from common knowledge/experience and a Google search) is the amount of applications received in the Office for classes 3 (and 5) that contain the word “elixir”.

Applicant mentions already some of them. The Office could add a few to those as well:

11825833 INTENSE ELIXIR

11042611 SKINELIXIR

9836982 ELIXIR ESSENTIEL

These applications never made it to registration, because they were refused on absolute grounds. EUTMA 9836982 ELIXIR ESSENTIEL was even the subject of appeal proceedings (R2583/2011-2).

One of the examples mentioned by the applicant (EUTMA 11897915 ELIXIR ECLAT PARFAIT) was also refused on absolute grounds for the relevant goods and services in classes 3 and 44, like cosmetics and beauty salons. It was accepted for other non-related goods and services.

4. There is no direct link between the sign and the claimed goods.

The Office wrote in its objection letter as an explanation for the descriptive character of the sign applied for that the elixirs sold under this sign give an extreme protection (ULTRADEFENSE) to the skin.

Applicant is highly surprised at this and claims that the public is absolutely unable to conclude from the sign that the goods would be skin cosmetics and accuses the Office of making unsubstantiated assumptions about the use of the cosmetics.

However, it was the applicant himself who filed the application for i.a. “skin care preparations”. And since according to case law from Luxembourg¹ the descriptive character of a sign may only be judged in direct connection with the claimed goods and services, the Office must therefore conclude that the elixirs give a very high protection to the skin. Other, more or less general notions like “cosmetic preparations, lotions, moisturizers, make-up, creams, gels and sun screens” can also be applied to the skin and are therefore considered to be skin care preparations or to at least include skin care preparations.

• Conclusion:

• The expression ELIXIR ULTRADEFENSE is an understandable English word combination which tells the relevant consumer that the goods are elixirs that promise a very good protection (against the sun for instance).

• Ergo, ELIXIR ULTRADEFENSE is a descriptive and laudatory notion that highlights the positive effects of the cosmetics.

• Descriptive signs are excluded from registration based on article 7(1)(c) EUTMR.

• Acceptance of similar signs in the past does not guarantee registration of this particular sign.

• Signs that merely describe also lack distinctive character according to article 7(1)(b) EUTMR.

• This sign must be refused for all goods applied for, based on articles 7(1)(b), (c) and 7(2) EUTMR.

• How to appeal this decision

Under Article 59 of the European Union Trade Mark Regulation no. 2015/2424 you have a right to appeal against this decision. Under Article 60 of the Regulation a notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed.

The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720,00 has been paid.

Robert KLIJN BRINKEMA