Refusal of application for a European Union trade mark

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

Alicante, 29/04/2016

LANE IP LIMITED

2 Throgmorton Avenue

London, EC2N 2DG

REINO UNIDO

Application No:	014824718
Your reference:	0572.0007EM
Trade mark:	ECOGROWN
Mark type:	Figurative mark
Applicant:	IIA Technologies Pte. Ltd 65 Chulia Street, #38-02/03 OCBC Centre Singapore 049513 SINGAPUR

The Office raised an objection on 16/12/2015 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.

The applicant submitted its observations on 16/02/2015, which may be summarised as follows:

1. The terms ‘ECO’ and ‘GROWN’ are not used together in common parlance by the relevant consumers in relation to the goods in question.

2. The terms ‘ECO’ and ‘GROWN’ have no obvious meaning and would not be used or referred to in any descriptive way for the goods at issue or for their characteristics. The Office has not provided the required reasoning to demonstrate how the terms ‘ECO’ and ‘GROWN’ describe the claimed goods.

3. The fact that ‘ECO’ and ‘GROWN’ are recognized dictionary terms does not lead to a conclusion that the use of the terms in connection with the disputed goods is descriptive and devoid of any distinctive character. The term does have the minimum level of distinctiveness required in order to function as a trade mark.

4. The term is not descriptive; therefore, it should be accepted under article 7(1)(b).

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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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) EUTMR, 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, ‘ECOGROWN’, immediately informs consumers without further reflection that the goods applied for are artificially produced diamonds or jewellery containing diamonds that are produced in such a way, that it causes minimal damage to the environment.

Therefore, the mark conveys obvious and direct information regarding the kind and

quality of the goods in question.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR 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, Doublemint, 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 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 – ‘ECOGROWN’– 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) EUTMR.

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

1. The terms ‘ECO’ and ‘GROWN’ are not used together in common parlance by the relevant category of consumers in relation to the goods in question.

In the present case, the fact that the term is not commonly used is irrelevant. The question of the actual use of the trade mark could only be relevant if the Office had raised an objection based on EUTMR Article 7(1)(d). Currently the Office has established the fact that the expression ‘ECOGROWN’ describes the goods at issue. EUTMR Articles 7(1) (b) and (c) do not include an additional requirement for the Office to prove the common use of descriptive words. It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1) (b) actually be in use at the time of the application for registration in a way that is descriptive of the goods or services such as those in relation to which the application is filed, or of the characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. The distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 88). Therefore the Office must refuse to give legal protection to a descriptive term even if any actual use of the claimed mark has not been demonstrated or even if there is some other word that is used more frequently for describing the claimed goods.

2. The terms ‘ECO’ and ‘GROWN’ have no obvious meaning and would not be used or referred to in any descriptive way for the goods at issue or their characteristics. The Office has not provided the required reasoning to demonstrate how the terms ‘ECO’ and ‘GROWN’ describe the claimed goods.

The combination of the word ‘ECO’ with the word ‘CROWN’ as referring to the goods and services applied for is directly descriptive. The trade mark ‘ECOGROWN’ as a whole would immediately inform consumers without further reflection that the goods are artificially produced diamonds or jewellery containing diamonds that are produced in such a way, that it causes minimal damage to the environment. It is a well-known fact that nowadays many manufacturers produce diamonds artificially (The Morgan Crucible Company plc; Scio Diamond Technology Corporation; Sumitomo Electric Industries, Ltd. etc); also, it is a well-known fact that growing and/or producing diamonds in an artificial way causes less damage to the environment than extracting the diamonds by mining. Therefore it is reasonable to deduce that relevant public would understand the applied for trade mark same way as it is claimed by the Office. The Office considers that, there is no need for an additional mental step to understand the connection between the mark and goods. Therefore the Office cannot agree with the applicant that there is no obvious or direct link between the trade mark and the objected goods and services.

3. The fact that ‘ECO’ and ‘GROWN’ are recognized dictionary terms does not lead to a conclusion that the use of the mark as a whole in connection with the disputed goods is descriptive and devoid of any distinctive character. The term does have the minimum level of distinctiveness required in order to function as a trade mark.

The claimed sign contains the words ‘ECO’ and ‘GROWN’ conjoined, 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 mere writing together of two words without a space and their capitalisation do not make the combination unusual. Furthermore, there is nothing unusual about the combination of terms “ECO” and “GROWN” as it is widely used and the relevant public will perceive it as a descriptive term rather than a memorable and distinctive trade mark.

The relevant consumer will understand the word in the context of the claimed goods as a meaningful expression: a diamond that has been grown or created by causing minimal damage to the environment.

Therefore taking into account on the one hand the meaning of the claimed trade mark (a product that has been grown by causing minimal damage to environment), and on the other hand, the claimed goods, the Office considers there to be a direct connection between the mark and the goods (diamonds, jewelry incorporating diamonds), as the applied for trade mark describes directly the kind, and quality of the goods in question.

The mark applied for ‘ECOGROWN’ 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) EUTMR.

4. The term is not descriptive; therefore, it should be accepted under article 7(1)(b).

The Office agrees with the applicant in that, if the objection under Article 7(1)(c) EUTMR is waived, there would be no grounds for the objection under Article 7(1)(b) EUTMR. However, in the present case, the Office has not decided to waive the objection under Article 7(1)(b) EUTMR and therefore finds the argument irrelevant.

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 14 824 718 is hereby rejected.

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.

Liina PUU