Refusal of application for a European Union trade mark

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

Alicante, 05/04/2017

Mihaela Teodorescu

51 Viorele Str., Bl 31 entrance 2 ap.63, Sector 4

040425 Bucharest

RUMANIA

Application No:	15 978 612
Your reference:	2016PR2
Trade mark:	HO High Oleic 75% Omega 9
Mark type:	Figurative mark
Applicant:	Prutul S.A. str.Ana Ipatescu nr.12 Galati, Jud.Galati RUMANIA

The Office raised an objection on 07/12/2016 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 07/02/2017, which may be summarised as follows:

1. The mark applied for is a compound mark, in colour, consisting in a dominant figurative element in the form of a ‘smiley drop face’ that contains the letter sequence ‘HO’, with a logo consisting of a reversed letter ‘V’ above the letters and a semi-circular curve beneath the letters, all inside a blue circular outline with the word elements ‘High Oleic 75% Omega 9’ placed within the blue outline.

2. Owing to its design characteristics, the EUTMA will be perceived by the public as a distinctive logo, regardless of the fact that the word elements ‘High Oleic 75% Omega 9’ are devoid of distinctive character.

3. A search conducted on 07/02/2017 in the Collins Dictionary online revealed no definition that could uphold the examiner’s reasoning that ‘HO’ is the acronym for ‘High Oleic’ (exhibit A).

4. Even though ‘HO’ could be deemed to be an acronym of ‘High Oleic’, the consumers of the goods and services for which registration is sought will perceive the sign as a whole (a ‘smiley drop face’ inside a circular outline containing the word elements ‘High Oleic 75% Omega 9’). Moreover, when the mark is first perceived, most of the consumers will not know that ‘HO’ is the acronym of ‘High Oleic’, as these consumers are average people interested in acquiring goods for general consumption, such as the goods in Class 29 for which registration is sought. Therefore, for the consumers of such products, the word element ‘HO’ has no meaning.

5. The examiner erred in finding that the relevant consumers would understand the words as a meaningful expression, namely as ‘omega 9 fatty acid that includes a large amount of oleic acid, namely 75%’ and that, consequently, the sign applied for would be devoid of distinctive character. By contrast, the trade mark will be perceived as a whole by the relevant consumers, with a particular focus on its distinctive and dominant element.

6. The only non-distinctive lexical constructions in the trade mark applied for (‘High Oleic’ and ‘75% omega 9’) cannot per se result in a lack of distinctive character of the EUTMA as a whole.

7. The findings of the decision of 15/09/2005, C‑37/03, BioID, EU:C:2005:547, in which the mark in question consisted exclusively of the non-distinctive word elements ‘Bio’ and ‘ID’, depicted in standard letters, cannot be applicable to the present case, as the sign in question is a completely different mark that is not exclusively formed by words devoid of distinctive character, but is rather a compound mark, in colour, containing a special logo and a dominant figurative element.

8. The provisions of Article 7(1)(c) EUTMR very clearly state that a trade mark must be refused registration if it consists ‘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’ (emphasis added). The mark applied for does not consist exclusively of those elements described in Article 7(1)(c) EUTMR.

9. According to settled case-law, Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive. Even if the word element ‘HO’ of the ‘smiley drop face’ were suggestive/allusive of the characteristics of the goods and services in question, which it is not, it would not enable the public concerned to perceive immediately and without further reflection a description of one of the characteristics of the goods and services in question for the purposes of Article 7(1)(c) EUTMR.

10. According to EUIPO’s Guidelines for examination, terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b) and (c) EUTMR if combined with other elements that make the sign as a whole distinctive.

11. Within the framework of the European Trade Mark and Design Network (ETMDN), a common practice was agreed that establishes criteria to determine if the threshold of distinctiveness is met due to the figurative features in the mark. In this respect, the applicant attached several examples that have been considered distinctive and argued that the figurative element in the mark in the present case was distinctive on its own, and, due to its central placement and large size, was thus clearly recognisable and perceived as a badge of origin because of the presentation and composition of the sign.

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 Office cannot agree with the applicant’s argument that, owing to its design characteristics, the EUTMA will be perceived by the public as a distinctive logo, regardless of the fact that the word elements ‘High Oleic 75% Omega 9’ are devoid of distinctive character.

As regards the applicant’s argument that the Collins Dictionary online reveals no definition that could uphold the examiner’s reasoning that ‘HO’ is the acronym for ‘High Oleic’ (exhibit A), according to the case-law, signs consisting of an independently non-descriptive acronym that precedes or follows a descriptive word combination should be objected to on the grounds of it being descriptive if it is perceived by the relevant public as merely a word combined with an abbreviation of that word combination. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, C‑90/11 & C‑91/11, Natur-Aktien-Index / Multi Markets Fund, EU:C:2012:147, § 32 and 40).

The applicant submitted that, even though ‘HO’ could be deemed to be an acronym of ‘High Oleic’, the consumers of the goods and services for which registration is sought will perceive the sign as a whole (a ‘smiley drop face’ inside a circular outline containing the word elements ‘High Oleic 75% Omega 9’) and, moreover, will perceive the word element ‘HO’ as having no meaning. Furthermore, the applicant argued that the trade mark would be perceived as a whole, with a particular focus on its distinctive and dominant element, and that the only non-distinctive lexical constructions in the trade mark applied for (‘High Oleic’ and ‘75% omega 9’) could not per se result in a lack of distinctive character of the EUTMA as a whole.

As correctly pointed out by the applicant, since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

The mark applied for is a figurative mark that contains the verbal elements ‘HO High Oleic 75% Omega 9’.

Since the verbal elements of the sign, ‘HO High Oleic 75% Omega 9’, consist of an abbreviation, English words and numerals, the relevant public is English-speaking consumers in the European Union. In addition, in the light of the nature and purpose of the goods and services in question, the relevant public consists of general consumers, whose awareness will be that of the average consumer who is reasonably well informed and reasonably observant and circumspect.

The applicant did not dispute this finding and agrees that the sign applied for includes the non-distinctive lexical constructions ‘High Oleic’ and ‘75% omega 9’ and that the element ‘HO’ could be deemed an acronym of ‘High Oleic’.

The list of goods and services in the application is the following: edible oils, soybean oil, sunflower oil for food, rape oil for food, olive oil for food, edible fats in Class 29 and publicity, marketing, commercial information and advice for consumers [consumer advice shop] in Class 35.

The Office maintains its opinion that the words in the mark will be perceived by the relevant consumers as a meaningful expression, namely as ‘omega 9 fatty acid that includes a large amount of oleic acid, namely 75%’.

The applicant argues that the decision of 15/09/2005, C‑37/03, BioID, EU:C:2005:547, is not applicable to the present case, as the sign in question is completely different from that in the case cited and is not exclusively formed by words devoid of distinctive character, but rather is a compound mark, in colour, consisting of a dominant figurative element in the form of a ‘smiley drop face’ that contains the letter sequence ‘HO’, with a logo consisting of a reversed letter ‘V’ above the letters and a circular curve beneath the letters, all inside a blue circular outline with the word elements ‘High Oleic 75% Omega 9’ placed within the blue outline.

The Office finds that the figurative elements consist of two circles, namely one large blue circle with a small white circle inside it. The words in the mark, written in hardly stylised standard letters, appear inside those circles, with a white font used on the blue background and a blue font used on the white background. In the figurative element, the abbreviation ‘HO’ is written inside the small circle, while the rest of the verbal elements are inside the larger circle. Even if the Office were to take into account the applicant’s argument that the element ‘HO’ is accompanied by a reversed letter ‘V’ placed above the letters and a circular curve beneath the letters, it fails to see how this combination could depict a ‘smiley drop face’ that could endow the sign applied for with a minimum degree of distinctive character.

Furthermore, the applicant’s submission that, according to EUIPO’s Guidelines for examination, terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b) and (c) EUTMR if combined with other elements that make the sign as a whole distinctive, is accurate.

In addition, as correctly pointed out by the applicant, within the framework of the European Trade Mark and Design Network (ETMDN), the Office and a number of trade mark offices in the European Union agreed on a common practice in relation to when a figurative mark containing purely descriptive/non-distinctive words should pass the absolute grounds examination because the figurative element results in the sign having sufficient distinctive character.

In accordance with the abovementioned common practice, the criteria to determine if the threshold of distinctiveness is met due to the figurative features in the mark are related to the word elements in the mark, the figurative elements in the mark and the combination of the word and figurative elements, including how combinations of the criteria affect distinctiveness.

In the present case, the descriptive and non-distinctive word elements appear in a basic/standard typeface in a white font on a blue background and in a blue font on a white background. The figurative elements comprise two concentric circles, the inner circle in white and the outer circle in blue.

While colours in combination with words may be registrable if the sign as a whole is distinctive, this is not applicable in the present case. The mere ‘addition’ of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, will not be sufficient to give the mark distinctive character. The use of colours is common in trade and would not be seen as a badge of origin. In the Office’s opinion, in the present case, the combination of the words written in blue and white standard typefaces on backgrounds of the opposing colour, namely a white background with a blue font and a blue background with a white font, is not sufficient to allow the mark to be easily remembered by the relevant consumer and to give the mark distinctive character.

In addition, it is clear that, within the market for the goods and services in question, it is common practice to employ a variety of simple graphical elements, such as those present in the contested mark, as mere decorative features.

Therefore, the Office maintains its opinion that, although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow 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).

Furthermore, case-law confirms that, when the graphic element cannot divert the relevant public’s attention away from the descriptive message, the word remains the dominant element of the sign (12/04/2016, T‑361/15, Choice chocolate & ice cream, EU:T:2016:214, § 29 and case-law cited therein; 14/01/2016, T‑318/15, TRIPLE BONUS, EU:T:2016:1, § 31 and case-law cited therein; 10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 20 and case-law cited therein; 20/11/2015, T‑02/15, WORLD OF BINGO, EU:T:2015:914, § 22; 15/05/2014, T‑366/12, YoghurT-gums, EU:T:2014:256, § 31-32; 11/07/2012, T‑559/10, Natural beauty, EU:T:2012:362, § 26-27; 15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27; and 15/09/2005, C‑7/03 P, BioID, EU:C:2005:547, § 70-74).

With regard to the applicant’s argument that the provisions of Article 7(1)(c) EUTMR very clearly state that a trade mark must be refused registration if it consists ‘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’ (emphasis added) and that the mark applied for does not consist exclusively of those elements described in Article 7(1)(c) EUTMR, it must be noted that the word ‘EXCLUSIVELY’ must be understood in combination with the words ‘indications which may serve, in trade’. In addition:

The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102.)

As noted above, the sign applied for comprises word elements that designate characteristics of the goods and services for which registration is sought and some decorative figurative elements that cannot divert the relevant public’s attention away from the descriptive message. Consequently, in the Office’s opinion, the sign applied for is neither suggestive nor allusive and, in accordance with the settled case-law, the trade mark should be refused registration under Article 7(1)(c) EUTMR.

With regard to the provisions of Article 7(1)(b) EUTMR, the Office points out that it is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Office is of the opinion that the sign applied for also lacks distinctiveness with respect to the goods and services concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

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 marked goods and services to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish the said goods and services from others of a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, 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).

English speakers will see the mark not as a badge of a particular trade origin for the goods and services at issue, but as a descriptive expression combined with some non-distinctive figurative elements.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for figurative European Union trade mark No 15 978 612 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.

Roxana PISLARU