Refusal of application for a European Union trade mark

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

Alicante, 02/09/2016

KOLSTER OY AB

PL 148

FIN-00121 Helsinki

FINLANDIA

Application No:	015141708
Your reference:	3160294EU/Hie/sil
Trade mark:	TEVA
Mark type:	Word mark
Applicant:	DECKERS OUTDOOR CORPORATION 250 COROMAR DRIVE GOLETA, CALIFORNIA 93117 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/03/2016 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 06/05/2016, which may be summarised as follows:

1. The services for which registration is sought are not services of the textile and garment industry, but are retail store services, business intermediary services, sales promotion services, etc. The fact that the services are related to the fashion field does not make the mark descriptive. Therefore, the mark applied for does not convey obvious and direct information regarding the intended purpose and subject matter of the services in question.

2. The applicant referred to the registered EUTMs No 2 034 486 and No 1 202 589 for the mark ‘TEVA’.

3. The word ‘TEVA’ is not commonly used in Finnish. The majority of Finnish-speaking people have never heard the word ‘TEVA’ used as an abbreviation for a ‘textile and garment branch’ or the ‘textile and garment industry’. The relevant public of the services for which registration is sought does not understand the abbreviation as a meaningful expression. Therefore, the mark applied for cannot be regarded as descriptive.

4. Most dictionaries do not include the word ‘TEVA’. The applicant submitted entries from some dictionaries. Furthermore, according to an internet search, the abbreviation ‘TEVA’ is not commonly used in Finland in relation to the textile and garment industry or a textile and garment branch. Nor is the abbreviation used in public administration or within the textile and garment industry. The applicant submitted some entries from Internet.

5. Finnish-speaking people do not see the word ‘TEVA’ as an abbreviation because it is not generally known as an abbreviation for a ‘textile and garment branch’ or the ‘textile and garment industry’ and because the word ‘TEVA’ grammatically resembles several common Finnish words and, therefore, will automatically be pronounced as one word and not letter by letter. Consequently, there is not a direct link between the mark ‘TEVA’ and the services for which registration is sought.

6. The Office referred to two dictionaries that recognise the word ‘TEVA’ as an abbreviation for a ‘textile and garment branch’ or the ‘textile and garment industry’. These dictionaries do not represent what is commonly known and understood by Finnish-speaking persons. The Office has not established any evidence that the word ‘TEVA’ is actually used in the meaning provided by the Office.

7. The word ‘TEVA’ is a Hebrew word meaning ‘nature’.

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. The Office disagrees with the applicant’s first argument. The Office maintains its opinion that the mark conveys obvious and direct information regarding the intended purpose and subject matter of the services in question. The mark ‘TEVA’, in relation to retail services, advertising services and retail department stores, merely conveys information that the subject matter of the services in question is goods of the textile and garment industry. Furthermore the Office notes that the services provided in retail stores and online retail store services in relation to footwear, clothing and headwear are related to the textile and garment industry, as can be seen from the specification of services provided by the applicant in the application.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

2. As regards the applicant’s second 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).

‘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).

3. Regarding the applicant’s third argument, the Office notes that it provided, in its notice of 16/03/2016, a dictionary definition of the abbreviation ‘TEVA’. This extract defines this abbreviation as ‘textile and garment industry’. Furthermore, the Office does not dispute that there is a part of a relevant public that may not understand the abbreviation ‘TEVA’ in this meaning; however, the Office points out that the relevant public is also a professional public. The Office is of the opinion that at least this part of the relevant public will understand the abbreviation ‘TEVA’ in the meaning provided by the Office.

4. Regarding the applicant’s fourth argument, the Office notes that it submitted, in its notice of 16/03/2016, a dictionary definition of the abbreviation ‘TEVA’; therefore, the Office considers the abbreviation as a known term that would be understood by the relevant public without any additional mental effort. Furthermore, the Office provides some internet entries to support its argument that the mark ‘TEVA’ would be understood by the relevant public in the meaning provided by the Office in its notice of 16/03/2016.

https://www.stjm.fi/uutiset/teva-teollisuuden-suhdanne-haastava-myos-loppuvuodesta/

https://www.tekes.fi/globalassets/julkaisut/teva_raportti.pdf

https://www.ely-keskus.fi/documents/10191/141406/Tevallako+tulevaisuuteen/1eeec21a-6118-4e84-8d0c-39f4ca3b28e6

https://www.researchgate.net/publication/27784660_Tekstiili-_ja_vaatetusteollisuuden_tuotantoprosessi

https://tuhat.halvi.helsinki.fi/portal/fi/activities/teva-tekstiili-ja-v%281c64ab28-e43d-461e-bf50-02c657fc9a43%29.html

5. Regarding the applicant’s fifth argument, the Office provided, in its notice of 16/03/2016, a dictionary definition of the abbreviation ‘TEVA’. Furthermore, the Office is of the opinion that the fact that the abbreviation ‘TEVA’ grammatically resembles some common Finnish words is irrelevant, because the abbreviation has its own meaning. Furthermore, whether the abbreviation ‘TEVA’ is pronounced as one word or letter by letter is irrelevant for its meaning.

6. As regards the applicant’s sixth argument, the Office reiterates its response to points 3 and 4.

7. As regards the applicant’s final argument, the Office does not dispute that the word ‘TEVA’ means ‘nature’ in Hebrew; 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.)

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 15 141 708 is hereby rejected for all the services 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