Refusal of application for a European Union trade mark

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

Alicante, 23/05/2016

ZIVKO MIJATOVIC & PARTNERS

Avenida Fotógrafo Francisco Cano 91A

E-03540 Alicante

ESPAÑA

Application No:	014879118
Your reference:
Trade mark:
Mark type:	Three-dimensional
Applicant:	ETI GIDA SANAYI VE TICARET ANONIM SIRKETI Organize Sanayi Bolgesi 11 Cadde Eskisehir TURQUÍA

The Office raised an objection on 21/01/2016 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for, , is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/03/2016, which may be summarised as follows:

1. The Office has not proven that the trade mark applied for, taken as a whole, is non-distinctive. The Office has only stated two things: firstly, that the shape derives from the basic shape of the goods, and secondly, that the drawn-on eyes and mouth will be perceived as simple decoration. The combination of the elements of the trade mark applied for, which is the depiction of a personified pastry or a pastry as a mascot, is distinctive. As Exhibit A, three definitions of ‘mascot’ have been submitted and, as Addendum A, an article on the use of personified objects or mascots for marketing purposes has been submitted. The mark is not merely a representation of the goods, as the applicant does not sell pastries with faces on them.

2. The trade mark applied for has acquired distinctiveness through use. The applicant has sold the relevant goods in Class 30 in the European Union at least since 2007. In 2007, the applicant sold 180 tonnes of Class 30 goods in Belgium, Bulgaria, France, Germany, the Netherlands, Romania, Slovakia and the UK. Since 2001, the applicant has sold an annual average of 245 tonnes of Class 30 goods in Belgium, France, the Netherlands, Romania, Slovakia and the UK (Exhibit B). Because the applicant uses the mark applied for on its packaging, in online video adverts to highlight the mark’s numerous ‘personalities’, on the internet in general and on its lorries, which form part of the applicant’s EU-wide distribution network, the general public is well accustomed to recognising the mark applied for as an indication of origin (Exhibit C). The evidence submitted can be extrapolated to the entire European Union.

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.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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.1’, paragraph 25).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

1. Insofar as the applicant claims that the Office has not proven that the trade mark applied for, taken as a whole, is non-distinctive, notwithstanding the Office’s analysis based on practical experience acquired generally from the marketing of popular consumer goods, the onus is on the applicant to provide specific and substantiated evidence that the trade mark applied for has distinctive character, since it is much better placed to do so, given its thorough knowledge of the market (16/01/2014, T‑433/12, Knopf im Stofftierohr, EU:T:2014:8, § 22 and the case law cited therein).

The applicant’s argument that the trade mark applied for is a mascot and therefore an excellent indicator of origin, and the evidence submitted to support this, is irrelevant. Even if the trade mark applied for is used by the applicant as a mascot for marketing purposes, it must be distinctive to be registered as a trade mark.

Furthermore, the applicant argues that the Office has not considered the trade mark as a whole but has based its assessment on an analysis of individual elements.

In this respect, it should be noted that although the overall impression given by the mark must be considered, this does not mean that one may not first examine each of the individual features of the get-up of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (11/04/2014, T‑209/13, Olive line, EU:T:2014:216, § 30 and the case law cited therein).

The mark consists of two elements, namely a depiction of a pastry or confectionery product and a face consisting of eyes and a mouth.

In order to ascertain whether the shape of the pastry or confectionery product in question may be perceived by the public as an indication of origin, the overall impression created by the appearance of that pastry or confectionery product must be analysed (judgment of 24/11/2004, T‑393/02, ‘Henkel’, paragraph 37).

The shape in question is not so materially different from basic, common or expected shapes of pastry/confectionery products that it would enable the consumer to identify the goods by their shape alone and to buy the same item again if they had had a positive experience with the goods.

The face consisting of eyes and a mouth in the depiction of the goods in question will be seen as a mere decorative element fulfilling ornamental or aesthetic purposes. It could also be intended to convey positive feelings or affection where such goods are offered, or, to communicate a positive message about the goods in question or to arouse favourable opinion regarding their properties and qualities (07/10/2015, T‑656/13, Shape of a smiley, ECLI:EU:T:2015:758, §37). Therefore, the element consisting of eyes and a mouth is not distinctive.

Non-distinctive elements combined with a standard shape will not confer distinctiveness upon that shape (judgment of 18/01/2013, T‑137/12, Vibrator, EU:T:2013:26, § 34-36). Therefore, the applicant’s argument that the mark is not merely a depiction of the goods, as the applicant does not sell pastries with faces on them , must be set aside.

Consumers who are used to a very wide variety of goods in Class 30 and the shapes and decorations of such goods will not perceive such shape/decoration as an indicator of origin (11/04/2014, T‑209/13, Olive line, EU:T:2014:216, §21).

Therefore, the constituent elements of the mark applied for taken individually, and the shape created taken as a whole, will be perceived by the relevant consumers as possible — or even common — variants of the presentation and decoration of the goods in question.

Accordingly, the mark applied for does not enable the average consumer, who is reasonably well-informed and reasonably observant and circumspect, to identify the goods in question and distinguish them from those of another commercial origin. Therefore, it is devoid of distinctive character for those goods.

2. The applicant argues that the trade mark applied for has acquired distinctiveness through use and submits some evidence in support of this argument.

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.

(See judgment of 10/11/2004, T‑396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63.)

Having examined the evidence submitted by the applicant, it is concluded that the trade mark applied for has not acquired distinctiveness though use.

Exhibit B provides an overview of the quantities of the relevant goods (in tons) sold in various European countries by the applicant. However, this evidence is a mere spreadsheet created by the applicant which is not supported by objective evidence. Moreover, the spreadsheet does not indicate which of the products were sold (e.g. whether all the goods in Class 30 for which registration is sought or rather specific goods) or if all the sales were under the trade mark applied for.

Exhibit C includes various printouts from the website www.etietieti.com displaying a biscuit and packaging showing the trade mark applied for, and various advertising videos showing images similar to the trade mark applied for. The evidence also includes some advertisements and a photograph of two lorries with variations of the trade mark applied for. Firstly, it is not clear from this evidence how many people have visited the website or watched the videos. The advertisements are not dated nor is there any indication of the extent to which they were used. Furthermore, the evidence relates in some cases to depictions that are not entirely the same as the trade mark applied for.

Consequently, the evidence submitted is too general and too limited to enable the Office to determine if a significant proportion of the relevant section of the public identifies the products as originating from a particular undertaking because of the mark.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 14 879 118 is hereby rejected for all the goods 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.

Saida CRABBE