Refusal of application for a European Union trade mark

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

Alicante, 13/03/2017

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	015686521
Your reference:	T182697.EM.02/WILSONA
Trade mark:	NERIUM AGE DEFYING
Mark type:	Word mark
Applicant:	Nerium Biotechnology, Inc. 11467 Huebner Road, Suite 175 San Antonio, Texas 78230 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/09/2016 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 16/01/2017, which may be summarised as follows:

1. The term ‘NERIUM’ is a distinctive element in the mark applied for because it is a little-known Latin name for a shrub. The relevant consumer is not a botanist but is an average consumer whose degree of attention is average for the goods in question. The full name of the shrub is ‘Nerium oleander’ and ‘Nerium’ is not a typically recognised name for the shrub when used on its own. Since the relevant public would not recognise the Latin name ‘NERIUM’, the mark ‘NERIUM AGE DEFYING’ is not merely descriptive of the goods in question.

2. The Office has not given examples of the term ‘NERIUM’ being used with the expression ‘AGE DEFYING’ or in relation to the goods in question. The relevant consumer is, therefore, not accustomed to seeing the term ‘NERIUM’ in connection with the expression ‘AGE DEFYING’ and will not recognise ‘NERIUM’ as an ingredient of any goods.

3. The Office has accepted several marks containing the term ‘NERIUM’. Therefore, there is no reason why the mark applied for should not be accepted. The Office should be consistent in its approach to accepting marks.

4. The expression ‘AGE DEFYING’ is not used in everyday language because it is not a natural turn of phrase used in everyday parlance. The mark ‘NERIUM AGE DEFYING’ as a whole is distinctive, since it has original and does not inform the relevant consumer about the nature of the goods in question.

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 also 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).

‘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).

Furthermore, 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 applicant argues that the term ‘NERIUM’ is distinctive because it is not well known to the relevant consumer and is not recognised on its own as the name of the shrub Nerium oleander. 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).

As stated in the objection letter, the goods for which the objection has been raised target both average consumers and a professional public, and the awareness of the relevant public will be that of the average consumer who is reasonably well informed and reasonably observant and circumspect, or high in case of a professional public. Therefore, the Office considers that the relevant consumers, both the professional public and average consumers, will understand the term ‘NERIUM’ without difficulty as the name of a plant or an ingredient extracted from the plant, since these goods are pharmaceutical, medicated skincare or sanitary products, and the degree of awareness of the relevant consumers is higher than that of other average consumers.

Although the term ‘NERIUM’ is a Latin word, it is defined as referring to a spices of small shrub, Nerium oleander, in English dictionaries, such as Merriam-Webster.com, Vocabluary.com, wordnik.com, Wikipedia, Free Dictionary and Medicaldictionaryweb.com, etc., and the relevant consumers, who have a higher degree of awareness in relation to the goods at issue, will easily recognise the term ‘NERIUM’ as the name of the shrub or as an ingredient of the goods when this term is used for the goods in question.

The applicant argues that the expression ‘AGE DEFYING’ is not used in everyday language and, therefore, the mark ‘NERIUM AGE DEFYING’, as a whole, is distinctive. The Office notes that the term ‘AGE DEFYING’ is an understandable English expression and the combination of the words ‘AGE’ and ‘DEFYING’ is commonly used in a descriptive way in the relevant markets, such as the cosmetic products market, as demonstrated in the objection letter. Accordingly, the expression ‘AGE DEFYING’ provides obvious and direct information about the goods in question and, therefore, the sign ‘NERIUM AGE DEFYING’, as a whole, describes a characteristic of the goods for which registration is sought and does not qualify as a distinctive trade mark.

As regards the applicant’s argument that the Office has not given examples of the term ‘NERIUM’ being used with the expression ‘AGE DEFYING’ or of ‘NERIUM’ being used in relation to the goods in question, the Court has confirmed that where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It should be also noted that ‘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).

As regards the applicant’s argument that several marks containing the term ‘NERIUM’ have been accepted by the Office, 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).

Furthermore, this argument is not relevant to this case because some of the trade marks cited by the applicant have not yet been registered by the Office. Others have been registered; however, this is not because they contain the term ‘NERIUM’ but because they were considered distinctive as a whole.

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 15 686 521 is hereby rejected for all the goods and services 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.

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