Refusal of application for a European Union trade mark

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

Alicante, 13/07/2016

DREYFUS & ASSOCIES

78, avenue Raymond Poincaré

F-75116 Paris

FRANCIA

Application No:	015082704
Your reference:	C2325TMAK/ND/MA
Trade mark:
Mark type:	Figurative mark
Applicant:	Chau Lai Ching Flat E, 4/F., Block 15, Parc Oasis, Tat Chee Avenue, Kowloon Tong Kowloon REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 26/02/2016 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 25/04/2016, which may be summarised as follows:

1. The goods applied for in Classes 14, 18 and 25 are not everyday/mass consumption goods; namely because of their average price they are bought by a very specific group of consumers. The awareness of the relevant public is likely to be increased regarding certain products covered by the mark .

2. It is more likely that the relevant consumers will think of the flower lavender in relation to the goods covered by the mark applied for. At least, consumers will see it as a double reference, with a dominant reference to the flower. The meaning of the word ‘LAVANDA’ cannot be reduced to a colour.

3. The word ‘LAVANDA’ does not appear to be a necessary word to describe the goods applied for.

4. The applicant referred to the decision of the Bundespatentgericht in the case ‘MIRACLEBODY’.

5. The mark in question does not provide direct information to consumers, especially since no consumer would believe that that undertaking would be specialized in commercializing purple goods. It would be unusual for an undertaking to wish that consumers believe that the clothes, bags and jewellery it sells are all purple.

6. The applicant referred to different decisions regarding other EUTMa (‘ANIMAL’, ‘EVER BLACK’, ‘BLUE’).

7. The applicant reminds that the trademark was filed in black and white and not in a purple/lavender colour.

8. The Office defined the word ‘LAVANDA’ as ‘a pale tint of purple’. Thus, the most of consumers would rather refer to this colour as to ‘purple’ and not ‘lavender’.

9. The applicant referred to similar registered EUMTs and French trademarks.

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.

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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

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.

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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

1. As regards the applicant’s first argument, the Office maintains its opinion that the goods in question are everyday/mass consumption goods. The Office does not contest that some of the goods in question can be of a high price and, therefore, be purchased only by a specific group of the relevant public. Nevertheless, the Office maintains its opinion that all goods applied for include also goods that are not of such high price and, therefore, are everyday/mass consumption goods.

Anyway, a higher than average level of attention and awareness of the relevant public does not automatically endow the mark with distinctive character. It merely supposes that the consumer will be attentive when purchasing goods.

2. Regarding the applicant’s second argument, the Office does not contest that the word ‘LAVANDA’ (translated into English as ‘lavender’) has more meanings.

However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of 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. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

3. Regarding the applicant’s third argument, the Office provided, in its notice of 26/02/2016, a dictionary definition of the word ‘lavender’ that has in English same meaning as has word ‘lavanda’ in Spanish, Croatian, Italian, Latvian and Portuguese. The said extract defines it as ‘a pale or light bluish-purple to a very pale violet colour’. The Office maintains its opinion that the mark in question is descriptive in relation to the goods in question because it conveys obvious and direct information regarding the quality and appearance of the goods in question.

4. As regards applicant’s fourth argument, according to case-law:

the European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

‘In addition … references to national decisions conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

5. As regards the applicant’s fifth argument, the Office reiterates its response to point 3.

Furthermore, the Office notes that the mark applied for covers merely for goods and not services.

6. As regards the applicant’s sixth argument, 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

7. As regards the applicant’s seventh argument, the Office examined the mark as it was applied for.

8. Regarding the applicant’s eight argument, the Office considers existence of a dictionary definition sufficient to conclude that the relevant consumers will understand the mark with no additional mental effort. The fact that the same colour can be described in more ways does not alter the finding of the Office that the mark in question is descriptive and devoid of any distinctive character.

Furthermore, ‘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.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

9. As regards the applicant’s argument that 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

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

the European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 15 082 704 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.

Klara BOUSKOVA