Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/02/2016

SERJEANTS LLP

Dock

75 Exploration Drive

Leicester LE4 5NU

REINO UNIDO

Application No:	014661706
Your reference:	M116.014.00
Trade mark:
Mark type:	Figurative mark
Applicant:	Mirza International Limited 14/6 Civil Lines Kanpur 208001 LA INDIA

1. The Office raised an objection on 17/11/2015, 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.

2. The applicant submitted its observations on 19/01/2016, which may be summarised as follows:

• The mark applied for is a silhouette of an ibex or wild mountain goat, not a commonly known and easily identifiable domestic goat. The distinctive rounded horns on the goat make it clear to the average consumer that the mark is not a domestic goat. The consumers would not expect that an unusual animal like this is used as a source of leather for consumer goods.

• As animals are frequently used as trade marks for goods which fall in classes 18, 25 and 28, it is unlikely that the average consumer would consider such trade marks to be descriptive. Examples of registered CTMs are provided.

• There is an internationally accepted symbol for leather which is known by consumers worldwide which is used on leather goods to inform consumers that the goods are made of leather. When consumers purchase leather goods they will pay attention to this informative symbol, while the trade mark at issue would be seen as an indication of commercial origin, and not as an informative message about the materials the goods are made of.

• Class 18 is limited to read:

Backpacks; Beach bags; Briefcases; Handbags; Luggage; Purses; Satchels; School bags; Shoe bags; Shopping bags; Sports bags; Suitcases; Wallets.

3. 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.

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).

Firstly, the Office takes note of the limitation in class 18, but finds that the mark is descriptive and devoid of any distinctive character for all the goods now covered by classes 18, 25 and 28.

The applicant holds that the mark applied for is a silhouette of a wild mountain goat with its distinctive rounded horns, not a domestic goat. While this may be the case, the average consumer is not familiar with the different species of goats. They will see the shape, the beard and a pair of horns and would simply draw the conclusion that it is a goat.

The consumers are well-acquainted with the fact that all kinds of leather goods, such as bags, clothing, shoes, and sporting equipment such as sports gloves may be made of goatskin. In the selling and advertising of such goods, the type of the leather is very often mentioned, and the goods are also chosen because of the leather as different leathers have different qualities. The qualities of different skins are listed in the website below, where advice on what to choose for e.g. different purposes is given. This particular article refers to gloves:

http://www.olympiagloves.com/blog/which-leather-for-gloves-cowhide-vs-goat-skin-kanagroo-and-more

The international symbol for leather that the applicant refers to is not relevant in this case. It is a symbol that indicates that the skin used in a product is genuine (and to guarantee that the material is not artificial leather). In addition to this symbol, the type of leather is usually indicated, as argued above.

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 the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

Furthermore, the objection is in line with the point 2.3.3 Figurative marks in the Guidelines (Pat B, Examination, Section 4), where it states that:

Signs represented in languages other than Latin, Greek or Cyrillic are considered for formality purposes as figurative trade marks. However, this does not mean that the semantic content of these signs will not be taken into consideration for the purpose of the application of Article 7(1)(c).

Where a figurative mark consists exclusively of a basic natural form that is not significantly different from a true-to-life portrayal that serves to indicate the kind, intended purpose or other characteristic of the goods or services, it should be objected to under Article 7(1)(c) CTMR as descriptive of a characteristic of the goods or services in question. …

Judgment of 08/07/2010, T-386/08, ‘Representation of a horse’

In the second case, (the mark above) the Court held that for clothing, headgear and belts in Class 25, the portrayal of a horse was descriptive of the kind or intended purpose of the goods, namely that they are particularly developed or suitable for horse riding. As the relevant public would make a direct link between a horse and horse riding, the Court maintained that there was an immediate and concrete link between the portrayal of a horse and the goods concerned (paras 35-38).

In this case, the representation of a goat (which is a silhouette like the horse referred to above) does not indicate the intended purpose of the goods, but the kind of the skin/leather the goods are made of, namely goatskin. The mark is therefore considered to be descriptive and non-distinctive of the goods at issue.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 145661706 is hereby rejected for the following goods:

Class 18: Backpacks; Beach bags; Briefcases; Handbags; Luggage; Purses; Satchels; School bags; Shoe bags; Shopping bags; Sports bags; Suitcases; Wallets.

Class 25: Clothing; Footwear; Headgear.

Class 28: Sporting articles and equipment; Games and playthings.

The application is accepted for the remaining goods in class 24.

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.

Anne-Lee KRISTENSEN

Enclosures: A copy of the Notice of grounds for refusal, and a print-out of the Internet reference cited above, 4 pages.