Refusal of application for a European Union trade mark

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

Alicante, 26/04/2016

Thomas Martin Adv.ApS

Att.: Thomas Thorup

Scandinavian Trade Building

Gydevang 39-41

DK-3450 Alleroed

DINAMARCA

Application No:	014883805
Your reference:	1049-0002-EN_FANT
Trade mark:	EN FANT
Mark type:	Figurative mark
Applicant:	Utoft Kids Group A/S Bækgårdsvej 3 DK-7323 Give DINAMARCA

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 11/02/2016, which may be summarised as follows:

1. The mark merely describes the intended users and not the goods themselves.

2. The mark has several features that make it sufficiently distinctive.

3. The Office has preciously registered similar trade marks.

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)(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.

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’, § 25).

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, ‘Wrigley’, § 31.)

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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’, § 34).

1. The mark merely describes the intended users and not the goods themselves

In its letter of 11/02/2016, the applicant submits that the mark does indeed describe the intended users, namely children; however, it does not describe the goods themselves. The applicant argues that the mark does not in itself identify which goods the applicant has applied for, and, without having the applicant’s goods in hand, consumers would not know the kind of the goods. Furthermore, the applicant argues that no present case law states that a direct and specific association with the intended user makes the mark ineligible for registration.

Firstly, when examining a trade mark, the decision must be based on an assessment of the mark in relation to the goods and services applied for. When examining a trade mark, the Office must assess whether the mark is descriptive of the goods and services applied for or is devoid of any distinctiveness for these goods and services. It is therefore irrelevant for the examination whether consumers can identify which goods and services the applicant has applied for. The public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms that other traders might also wish to use; other traders might wish to convey the fact that the clothes they are selling are for children.

Secondly, the list of items in Article 7(1)(c) EUTMR, namely kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, also contains ‘other characteristics’, which shows that the list is not exhaustive, and in principle, any characteristic of the goods and services must lead to a refusal under Article 7(1)(c) EUTMR. It does not matter whether the characteristics of the goods or services are commercially essential or merely ancillary or whether there are synonyms of those characteristics (judgments of 12/02/2004, C-363/99, ‘Postkantoor’, § 102; 24/04/2012, T-328/11, ‘EcoPerfect’, § 41). The Office must therefore object to a trade mark describing the intended user of the goods.

The Office can refer to judgment of 27/02/2002, T-219/00, ‘Ellos’, in which the General Court decided that the word ‘ELLOS’ conveys the fact that the intended users of the clothes applied for are male.

Furthermore, the applicant argues that it is not the intended users (children) who are making the purchase.

There is a clear distinction between clothes, shoes etc. for different groups of people, for example men, women and children, and it is common to target these goods at one particular group. Clothes, shoes, etc. for children obviously have different characteristics from those of the same goods for grown men and women, for example in size.

The Office submits that, even if children are not the ones purchasing the goods, it is still clear from the meaning of the mark that the goods are meant for children.

Moreover, the applicant argues, that consumers who do not speak French will not understand the meaning of the mark.

Pursuant to Article 7(2) EUTMR a trade mark must be refused registration if an absolute ground exists in only part of the European Union. That means that a trade mark should be refused if the trade mark is descriptive, or lacks distinctive character, in any official language of the EU (judgment of 03/07/2013, T-236/12, ‘Neo’, § 57).

The Office recalls that since the mark ‘ENFANT’ is a French word, the relevant public with reference to which the absolute ground for refusal must be examined is the French-speaking consumer in the European Union.

2. The mark has several features that make it sufficiently distinctive.

The applicant argues that the breaking up of the word, the depiction of a star and the special design/font render the mark distinctive.

When a trade mark contains a descriptive word element in combination with a figurative element, the question to be considered is whether or not the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin. A combination of figurative elements and word elements that if considered individually are devoid of distinctive character, does not give rise to a distinctive mark, unless the combination of such elements when considered as a whole could be perceived as a badge of origin due to the presentation and composition of the sign. This will be the case when the combination results in an overall impression that is sufficiently far removed from the descriptive/non-distinctive message conveyed by the word element.

Furthermore, descriptive/non-distinctive word elements in basic/standard typeface lettering - with or without font effects (bold, italics) - are not registrable, unless the standard typeface incorporates elements of graphic design as part of the lettering, that are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark.

The Office is of the firm opinion that the combination of the descriptive word element and the star does not render the mark distinctive. A stylised depiction of a star must be seen as a figurative element of a simple geometric shape, which does not provide distinctiveness, and the fact that it divides the word into two does not affect the consumer’s perception of the meaning of the word. A consumer will, without any mental effort, understand that the word element is ‘enfant’. Furthermore, the font used for the word element does not distract the attention of the consumer from the descriptive meaning of the mark and does not create a lasting impression.

The main function of a trade mark is to enable consumers to distinguish one undertaking from another, and a trade mark must therefore be perceived as indicating the commercial origin of the goods. The mark as a whole will be perceived by consumers not as an indication of commercial origin, but as a description of whom the goods are intended for, namely children.

3. The Office has preciously registered similar trade marks.

The applicant argues that the Office has previously registered similar trade marks and refers to a number of registrations made by the Office. The applicant submits that these registrations support its assertion that the mark applied for is well beyond the requirements for a distinctive trade mark.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, § 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, § 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 Office is therefore not bound by its previous decisions. Furthermore, the marks referred to are all combinations of words, and are therefore not immediately comparable to the mark in question.

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 14 883 805 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(1) EUTMR, 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 720 has been paid.

Cecilie Leth BOCKHOFF