Refusal of application for a European Union trade mark

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

Alicante, 15/02/2017

Terence Leslie Johnson

Hurst Cottage,

Sutton, West Sussex RH20 1PL

REINO UNIDO

Application No:	015892813
Your reference:	lead
Trade mark:
Mark type:	Figurative mark
Applicant:	Ryton Feeds Limited Bawtry Road Tickhill Doncaster DN11 9EX REINO UNIDO

The Office raised an objection on 28/10/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 18/12/2016, which may be summarised as follows:

1. Article 7(2) EUTMR can be ignored, as it is the European Union and not another part of the community that is under consideration.

2. The examiner has cherry-picked court decisions that suit the reasoning of the objection.

3. Article 7(1)(b) EUTMR states that a mark must be devoid of any distinctive character to be denied registration. No mark can be devoid of any distinctive character; this can only be the case if it is highly similar or identical to an existing mark, which is not the case for the mark in question.

4. The mark is not descriptive, as defined under Article 7(1)(c) EUTMR, unlike the court decision referred to (27/11/2003, T‑348/02, Quick, EU:T:2003:318).

5. The mark must be considered as a whole and, as it depicts a dog, it has a clear relation to the goods in question without being descriptive; therefore, it is clearly acceptable for registration.

6. The reference to 19/09/2001, T‑335/99, T‑336/99 & T‑337/99, Tabs (3D.), EU:T:2001:219 is not relevant, as that judgment related to a 3D mark, which the present mark is not.

7. The Office is incorrect in claiming that the relevant consumer does not have a high degree of attentiveness in relation to the goods in question. Dog owners are very concerned about their pets and have a high degree of attentiveness when it comes to selecting products; this enables them to distinguish between different brands when making their purchases. The goods themselves are not mundane or ‘everyday’, but are very important for the consumer and the dog.

8. The Office has already accepted for registration a wide variety of marks that depict dogs for goods in Class 31; 19 examples of such marks are listed.

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.

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).

In response to the applicant’s submissions, the Office states the following:

1.

The Office agrees that it is only the European Union that is considered and Article 7(2) EUTMR (‘Paragraph 1 shall apply notwithstanding that the grounds of non‑registrability obtain in only part of the Union’) does not contradict this, as it explains that EUTM applications can be rejected even if an objection can be raised to them only in parts of the European Union.

2.

The decisions referred to are all well-known court decisions that have helped establish practice and proper law interoperation for the Office, and the Office always picks out the most relevant decisions when making an objection, based on the grounds of the objection.

3.

Article 7(1)(b) EUTMR is used to prevent marks from being registered when the sign only identifies or provides information about the goods and/or services for which registration is sought; see the following explanation from the EUIPO Guidelines, Part B, Examination, Section 4, Absolute grounds for refusal and European Union collective mark marks, Chapter 3, Non-Distinctive trademarks (Article 7(1)(b) EUTMR), Point 1:

According to settled case-law, distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29/04/2004, joined cases C-468/01 P to C-472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33). According to settled case-law, such 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 (judgment of 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 24 and case-law cited).

…

even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, it would still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin. This was the case with the term ‘medi’, which was considered as merely providing information to the relevant public about the medical or therapeutic purpose of the goods or of their general reference to the medical field (judgment of 12/07/2012, T-470/09, Medi, EU:T:2012:369, § 22).

A mark that is identical or similar to an earlier mark may be refused registration under Article 8(1)(a) or (b) EUTMR. (For more information, see https://euipo.europa.eu/ohimportal/en/trade-mark-guidelines .)

Therefore, the Office disagrees and maintains that the mark in question is devoid of distinctive character for the goods for which registration is sought under Article 7(1)(b) EUTMR. The combination of the shapes and black and white colours in the mark are not distinctive in relation to the goods in question: the mark depicts a sitting dog on a leash seen from the side. Taken as a whole, the mark consists of a combination of features that are typical in relation to the goods in question. The mark as depicted is not markedly different from various basic dog symbols commonly used in trade for the goods at issue, but is simply a variation thereof. It is highly likely that the consumer would perceive the mark as a basic symbol indicating a dog, and perceive it as an indication that the dog food is intended for dogs and not as a sign that, with certainty, would identify the mark as a badge of origin for a specific undertaking.

Therefore, the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods/services and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods and services for which registration is sought.

4.

The Office agrees that the mark is not descriptive, but, as argued, it is non‑distinctive under Article 7(1)(b) EUTMR.

5.

The Office agrees that the mark must be considered as a whole and, as pointed out by the applicant, it has a clear relation to the goods in question, without being descriptive. However, the Office maintains that the mark is non-distinctive under Article 7(1)(b) EUTMR, as argued above.

6.

The decision in question was used to show why the Office has its current practice of examination and, although there are differences between 3D marks and figurative marks, this decision has created a precedent that the Office is following, whereby individual features, as well as the overall impression, are considered when examining trade mark applications.

For clarification it should be mentioned that Article 7(1)(b) EUTMR does not distinguish between different categories of trade marks in determining whether a trade mark is capable of distinguishing the goods or services of one undertaking from those of other undertakings (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 44).

7.

The office does not contest the idea that dog owners are aware and concerned when purchasing goods for their pets, or that these goods are important. The point is that these goods are goods for everyday consumption that are purchased routinely, unlike specialised goods purchased by a professional, for example a surgeon acquiring surgical instrument. Therefore, the Office maintains that the goods mainly target average consumers who are reasonably well-informed, reasonably observant and circumspect.

8.

As regards the applicant’s argument that a number of 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).

In addition, it is the opinion of the Office that the cited marks are of a different character from the present one; for example, EUTM No 15 166 804 contains the depiction of a dog with a hunched back and a sad expression on its face; EUTM No 15 166 788 contains the depiction of a dog with an abnormally long body that is depicted with shadowing and cartoon-like features. All the purely figurative marks have distinctive and fanciful features that endow them with the necessary distinctive character. The most comparable marks, EUTM No 12 820 718 ‘MACED’ and EUTM No 9 509 365 ‘DOGSWELL’, which are made up of simple shapes depicting a standard dog symbol, are combined with verbal elements that make them distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 892 813 is hereby rejected for all the goods.

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.

Lars Paalgard SOYLAND