Refusal of application for a European Union trade mark

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

Alicante, 21/02/2017

HGF LIMITED

Cavendish House 39-41 Waterloo Street

Birmingham B2 5PP

REINO UNIDO

Application No:	015773807
Your reference:	RJF/T236741EP
Trade mark:	CANADA BUDS
Mark type:	Word mark
Applicant:	Mettrum Limited 1100 Bennett Road Bowmanville Ontario L1C 3K5 CANADÁ

The Office raised an objection on 06/09/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

After a two-month extension of the period allowed for the applicant to submit its observations, the time limit set by the Office was 06/01/2017.

The applicant submitted its observations on 04/01/2017, which may be summarised as follows:

1. The mark applied for is not exclusively descriptive and is distinctive for the goods. The mark must be assessed as a whole.

2. The use of country names in trade marks is widespread and consumers have become accustomed to it. The use of a country name in a trade mark is very common and does not denote to the consumer that a product either comes from that country or is associated with that country.

3. The word ‘BUD’ has a variety of definitions. Only one of these applies to marijuana and the word is not commonly used in that sense.

4. The mark has to be assessed for each of the goods individually. The mark is allusive only for goods relating to marijuana.

5. Canada is not widely associated with marijuana and the consumers of the goods in question would see the mark purely as a badge of origin.

6. Consumers with a high degree of attention would view the mark as acting as a badge of origin.

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

In relation to the applicant’s first point, the Office does not agree that ‘the examiner has not considered the mark as a whole’. In the communication sent by the Office, the examiner refers to the mark as ‘the expression’. This term means ‘a word or group of words forming a unit and conveying meaning’ .Therefore the evaluation made by the examiner was made entirely on the basis of the mark as a whole and not on the basis of the individual meanings of each word in the expression ‘CANADA BUDS’. The examiner did define the meaning of each word, but the purpose of that exercise was to better understand the sense of the mark as a whole.

In the present case, the trade mark applied for consists of the expression ‘CANADA BUDS’, which means ‘marijuana from Canada’. The first word means ‘a country in North America’ (information extracted from Collins English Dictionary on 06/09/2016 at http://www.collinsdictionary.com/dictionary/english/canada ).The second word is ‘a slang word for marijuana’ (information extracted from Collins English Dictionary on 06/09/2016 at http://www.collinsdictionary.com/dictionary/english/bud ). The structure of the expression ‘CANADA BUDS’ does not diverge from the rules of English grammar; rather, it complies with them. Therefore, the relevant consumer will perceive the mark ‘CANADA BUDS’ not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the goods and services for which registration is sought, namely marijuana, hemp, cannabis; cannabis extracts, namely, hashish, resins and oils; cannabis products, namely, oils, salves, concentrated pastes and tinctures containing cannabinoids; educational and information services regarding marijuana, hemp and cannabis products and the operation of a website providing information about marijuana, hemp and cannabis products, are marijuana and cannabis products and related services. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their nature and geographical origin.

The goods for which registration is sought target the average consumer and a professional public. It is clear that the relevant consumers, in particular specialists but probably also a large part of the general public, will understand, in relation to the contested goods and services, the combination of words ‘CANADA BUDS’ as a meaningful expression referring to marijuana from Canada. The majority of the relevant consumers will immediately understand that the goods for which registration is sought are marijuana and cannabis products and related services from Canada.

The mark applied for, ‘CANADA BUDS’, thus clearly conveys obvious and direct information about the nature and the geographical origin of the contested goods and services. The words that make up the mark applied for will be understood by the relevant English-speaking public; the mark ‘CANADA BUDS’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. As regards the combination of the two words, it does not contain any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods and services at issue.

The applicant argues that the Office has not provided, for each of the goods and services, the required specific reasoning to demonstrate that the expression ‘CANADA BUDS’ is descriptive.

The Office explained in its letter of 06/09/2016 why the word ‘CANADA BUDS’ is descriptive of the goods and services for which registration is sought. The goods and services to which the objection maintained by the Office has been raised are marijuana and cannabis products and related services.

The abovementioned reasoning provided by the Office applies to the entire list of goods and services to which the objection has been raised; therefore, it is not necessary to give a separate explanation in relation to each of the goods and services. This statement is also supported by the European Court of Justice. According to case-law, it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services which have a sufficiently direct and specific link to each other (02/04/2009, T‑118/06, Ultimate Fighting Championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 38).

The applicant argues that the word ‘BUD’ has several meanings

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.)

Article 7(1)(b) EUTMR – general remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘CANADA BUDS’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods and services are marijuana and cannabis products and related services.

The mark is composed of the verbal element ‘CANADA BUDS’, written in standard characters. The goods and services to which an objection has been raised and for which registration is sought are marijuana, hemp, cannabis; cannabis extracts, namely, hashish, resins and oils; cannabis products, namely, oils, salves, concentrated pastes and tinctures containing cannabinoids; educational and information services regarding marijuana, hemp and cannabis products and the operation of a website providing information about marijuana, hemp and cannabis products, which are specialised goods and services that target the average consumer and a professional public. In view of the nature of the goods and services in question, the degree of attention of the relevant public will be high.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods and services under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods and services from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the goods and services at issue but, rather, as a descriptive expression with a clear meaning.

Furthermore, it is not necessary to establish that the name actually designates the true geographical origin of the goods or services. It is enough to demonstrate that the connection between the name of the place and the goods may enable the relevant public to perceive the contested sign as an indication of the origin of those goods (15/10/2003, T‑295/01, Oldenburger, EU:T:2003:267, § 43).

In light of the foregoing, the word ‘CANADA’ immediately informs the relevant public without further reflection of an essential characteristic of the contested goods and services, namely of their origin. Therefore, the expression ‘CANADA BUDS’ is descriptive for the goods and services at issue.

The Office agrees with the applicant that trade marks that are merely allusive or suggestive or that require further interpretation must not be refused registration. However, the sign ‘CANADA BUDS’ cannot be perceived as anything other than an indication of the characteristics of the goods and services in question. The message expressed by the sign applied for is clear, direct and immediately obvious to the relevant public. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The expression ‘CANADA BUDS’ is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication of a descriptive meaning and, when it is applied to a variety of goods and services, the relevant consumer will immediately be given an indication of the characteristics of such goods (i.e. their nature and geographical origin).

As stated in the Office’s objection letter, the goods and services in question are aimed at both average consumers and a professional public. The degree of awareness is high. A higher degree of attention and awareness does not imply that a sign is subject to absolute grounds of refusal to a lesser extent. In fact, a more attentive and knowledgeable consumer may be able to grasp a descriptive or otherwise non-distinctive meaning more quickly than a consumer who is less attentive and knowledgeable.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 15 773 807 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 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.

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