Refusal of application for a European Union trade mark

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

Alicante, 05/05/2017

FORAL PATENT LAW OFFICES

P.O.Box 98

Riga, LV-1050

LETONIA

Application No:	015947815
Your reference:
Trade mark:	Ромашка
Mark type:	Figurative mark
Applicant:	Open-Type Joint Stock Company "ROT-FRONT" 2-oy Novokuznetskiy pereulok, d. 13/15 Moscow 115184 FEDERACIÓN DE RUSIA

The Office raised an objection on 18.11.2016 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 02.12.2016, 06.12.2016 and 13.12.2016, which may be summarised as follows:

1. Producers do not use camomile for the production of confectionary and other goods applied for in class 30. Therefore, the relevant public will not consider the designation applied for as the indication to the composition of the goods or to particular characteristics of the goods.

2. Various similar previous registrations of “flower marks” by EUIPO as well as registration of an identical mark for similar goods. Moreover, the same word has been registered for the same or similar goods in the Baltic States (e.g. Latvia and Estonia) and Russia.

3. The mark has been extensively used, so that the relevant public is aware of the mark and does not perceive it as descriptive or non-distinctive.

4. If the examiner so prefers, the applicant is ready to limit the list of goods applied for by adding a disclaimer (“the above goods not containing camomile and do not have a camomile flavour”).

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.

As to 1.: The applicant argues that producers do not use camomile for the production of confectionary and other goods applied for in class 30 and that, therefore, the relevant public will not consider the designation applied for as the indication to the composition of the goods or to particular characteristics of the goods. However, the Office argues that 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; accentuation added). Consequently, it is irrelevant that maybe nowadays there does not exist confectionery (etc.) containing camomile or camomile flavour. What is relevant, however, is that camomile could be used (in the future) as an ingredient for confectionery and other edible goods. Not only does the food industry evolve and always try to find and include new flavours in their products but it is also common knowledge that confectionary, for example, may contain salt, honey, herbs, flowers (e.g. violets), etc. Therefore, the Office maintains its view that the relevant public will not perceive the mark as in indicator of origin but rather as a descriptive expression.

As to 2.: 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).

As regards the national decisions referred to by the applicant, according to case-law: ‘the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 47). Therefore, also this argument of the applicant has to be set aside.

As to 3.: The applicant alleges that the mark has been extensively used, so that the relevant public is aware of the mark and does not perceive it as descriptive or non-distinctive. However, at the same time, the applicant declares (13.12.2016) that he does not invoke Article 7(3). This argument has also to be set aside because the applicant did not file the corresponding evidence in order to prove his argument. It is true that the applicant filed some evidence but mainly as regards Germany, which is not the relevant territory. One table the applicant files does mention some sales of confectionery in the Baltic States. However, this alone does not prove that the relevant public identifies the products or services as originating from a particular undertaking because of the mark.

As to 4.: As regards requests by an alternative method – like the present limitation of the goods specification - it has to be noted that they have to be made expressly and unconditionally (see judgement of 10/11/2044, T-396/02, ‘Three-dimensional mark – shape of a sweet’). A request (for limitation, withdrawal, etc.) by an alternative, that means a request subject to procedural conditions, which is made only in case the original request cannot be granted, is not admissible.

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 15 947 815 is hereby rejected for all the goods 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.

Swetlana BRAUN