Refusal of application for a European Union trade mark

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

Alicante, 28/03/2017

FamilyShop Ltd

Eystratiou Pissa 83-87

GR-11744 Athens

GRECIA

Application No:	015928922
Your reference:
Trade mark:	ROLL ME
Mark type:	Figurative mark
Applicant:	FamilyShop Ltd Eystratiou Pissa 83-87 GR-11744 Athens GRECIA DTS trading Ltd Str. Malashevska №1, town Sandanski 2800 2800 Sandanski BULGARIA

The Office raised an objection on 27/10/2017 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 27/10/2017, which may be summarised as follows:

1. The applicant states that the marketed products will be filters, papers and products relating to smoking and list the goods for which he wishes to register the mark. In addition, the applicant attaches a draft picture of packaging as an example of the use of the mark.

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 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).

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

In its submission, the applicant states that the marketed products will be filters, papers and products relating to smoking and lists the goods for which he wishes to register the mark. In addition, the applicant attaches a draft picture of packaging as an example of the future use of the mark.

The Office has noted applicant’s comments. However, the Office asserts its opinion communicated in its letter of 27/10/2016 that taken as a whole, the mark in question immediately informs consumers without further reflection that the goods at issue can be rolled and placed into rolling paper, etc., for the purpose of producing self-made cigarettes, etc. Therefore, the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind and intended purpose, of the goods in question.

It follows that the link between and the contested goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Furthermore, given the mark has a clear descriptive meaning in relation to the contested goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Although the Office recognizes that the mark applied for contains certain figurative elements that confer upon it a degree of stylisation - namely black stylised capital letters, a black asterisk and decoration in the form of two white tobacco leaves, all contained in a black border – the Office asserts that these elements are so minimal in nature that they do not provide the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 74).

With regard to the example of the use of the mark in form of a draft picture of packaging of the products as provided by the applicant, the Office has noted applicant’s comments.

However, given the fact that it only represents one draft picture of a packaging of products which have not been marketed yet, the Office does not consider it to be a sufficient proof to assess that the a mark has become distinctive through use and therefore concludes that the requirement for registering the mark laid down in Article 7(3) EUTMR is not satisfied.

The applicant was contacted by telephone on 24/02/2017 whether more arguments were to be expected. On 06/03/2017, the applicant informed the Office that he would send additional observations by 17/03/2017 and, as a result, the applicant has been granted additional time until 17/03/2017. However, no additional arguments have been received by the Office by 27/03/2017.

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 15 928 922 is hereby rejected for the following goods:

EN-34 Tobacco; Tobacco substitutes; Tobacco substitute; Leaf tobacco; Chewing tobacco; Raw tobacco; Pipe tobacco; Tobacco filters; Rolling tobacco; Cigarette tobacco; Smoking tobacco; Mentholated tobacco; Smokeless tobacco; Flavored tobacco; Hookah tobacco; Manufactured tobacco; Handrolling tobacco; Tobacco and tobacco products (including substitutes); Menthol pipe tobacco; Roll your own tobacco; Absorbent paper for tobacco pipes; Cigarette rolling papers.

The application may proceed for the remaining goods, namely:

EN-34 Tobacco spittoons; Tobacco jars; Tobacco tins; Pouches (Tobacco -); Tobacco cases; Tobacco pouches; Tobacco pipes; Pipes (Tobacco -); Tobacco pipe cleaners; Tobacco storage tins; Tobacco pipe scrapers; Flavourings for tobacco; Pipe racks for tobacco pipes; Pipe cleaners for tobacco pipes; Smoking pipe cleaners; Electronic smoking pipes; Cigarettes, cigars, cigarillos and other ready-for-use smoking articles.

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.

Robert KLECUN