Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 11/02/2016

CHANCERY TRADE MARKS

Chancery House

40a Castle Street

Guildford, Surrey GU1 3UQ

REINO UNIDO

Application No:	014759401
Your reference:	CHEJ/992015
Trade mark:	Hip & Healthy
Mark type:	Word mark
Applicant:	Hip and Healthy Limited Goodwin House, 5 Union Court Richmond TW9 1AA REINO UNIDO

The Office raised an objection on 27/11/2015 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.

The applicant submitted its observations on 28/12/2015, which may be summarised as follows:

1. Other similar marks have been registered by the Office.

2. The mask has been registered in the UK.

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.

Other similar marks have been registered by the Office.

The applicant refers to a number of registrations which it claims to be similar to the case at hand. The applicant refers to the registrations No 600 692 – HEALTHY FEET and No 870 063 – HEALTHY HOLD. The Office holds that these registrations are rather old, in fact the former has been registered in 1999 and the latter has been registered in 2000.

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).

The registrations cited by the applicant have very little in common with the case at hand, except for the word ‘HEALTHY’. It is the word combination of ‘HIP’ and ‘HEALTHY’ and the goods and services applied for which make the mark applied for descriptive and non-distinctive. Moreover one has to bear in mind that the marks cited have been registered more than sixteen years ago. Office practice has changed since then, reflecting evolving case law from the Courts.

The mask has been registered in the UK.

As regards the national decisions referred to by the applicant, according to case-law:

the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

Thus the fact that the registration of the mark has been accepted in the UK does not automatically entitle the applicant to get a registration as a Community trade mark. The two systems are independent from each other.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 759 401 is hereby rejected for the following goods/services:

Class 9 Electronic publications; printed publications in electronically readable form, printed publications in machine readable form and printed publications in optically recorded form; CDs and DVDs and computer software.

Class 16 Books, guides, e-books, booklets, cookbooks, recipe books, printed

publications, periodicals, magazines, printed matter, stationery, journals, photographs, diaries, wall charts and calendars.

Class 35 Retail services, retail on line services all relating to the sale of foodstuffs,

health foods and drinks, all being for sale on-line, via the Internet, by mail order or from databases.

Class 41 Publishing services; on-line publication of books, magazines, booklets, journals and printed matter; education and teaching services; providing teaching and training in nutrition, health, fitness and sports, recreational and cultural activities; production of audio and visual recordings; provision of news, advice and information to teach and promote public awareness of the relationship between nutrition, health, fitness and sport.

The application is accepted for the remaining goods/services.

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.

Alistair BUGEJA