Refusal of application for a European Union trade mark

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

Alicante, 18/08/2016

Hightech development s r.o.

Janovského 979/11

CZ-17000 Praha 7

REPÚBLICA CHECA

Application No:	015441819
Your reference:
Trade mark:	Elektronický Antiperspirant
Mark type:	Word mark
Applicant:	Hightech development s r.o. Janovského 979/11 CZ-17000 Praha 7 REPÚBLICA CHECA

The Office raised an objection on 24/05/2016 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 22/07/2016, which may be summarised as follows:

1. The designation ‘Elektronický Antiperspirant’ is a fictional term.

2. The applicant’s product is well known and has acquired distinctive character.

3. Antiperspirants are solely cosmetic products and electronic antiperspirants do not exist in the class of medical devices.

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.

General remarks on Article 7(1)(c) EUTMR

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(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).

Specific remarks concerning the applicant’s observations

1. The designation ‘Elektronický Antiperspirant’ is a fictional term.

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).

In the case of the subject application, the mark translates as ‘electronic antiperspirant’ which indicates a specific purpose and the means by which this purpose is delivered, ie. antiperspirant which is activated by electronic means.

2. The applicant’s product is well known and has acquired distinctive character.

The Office cannot take this argument into account as evidence of proof of acquired distinctive character has not been submitted.

3. Antiperspirants are solely cosmetic products and electronic antiperspirants do not exist in the class of medical devices.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), ECLI:EU:T:2001:226, § 59).

A definition of ‘antiperspirant’ is “reducing or preventing perspiration” (extracted from Collins Dictionary at http://www.collinsdictionary.com/dictionary/english/antiperspirant ). Therefore, when combined with the term ‘elektronický’, translated as ‘electronic’, the message conveyed to the consumer is that of an electronic device which helps prevent or reduce perspiration. Therefore, it cannot be considered as a cosmetic product but rather a medical device which inhibits a bodily function. As such the mark is descriptive of such a device.

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 015441819 is hereby rejected for all the goods/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.

Lance EGGLETON