Refusal of application for a European Union trade mark

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

Alicante, 09/03/2017

Elea Vertriebs- und Vermarktungsgesellschaft mbH

Professor-von-Klitzing-Str. 9

D-49610 Quakenbrueck

ALEMANIA

Application No:	016002016
Your reference:
Trade mark:	SmoothCut
Mark type:	Word mark
Applicant:	Elea Vertriebs- und Vermarktungsgesellschaft mbH Professor-von-Klitzing-Str. 9 D-49610 Quakenbrueck ALEMANIA

The Office raised an objection on 11/11/2016 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 10/01/2017, which may be summarised as follows:

1. The applicant requested to limit the list of goods and services; to delete all goods in Class 29 and specify goods in Class 7.

2. The term ‘SmoothCut’ will not immediately inform the consumers that the goods applied for are machines for cutting vegetables. The mark does not convey obvious and direct information regarding the quality and/or the intended purpose of the goods applied for. The mark ‘SmoothCut’ has no relation whatsoever with the goods claimed; none of them is capable of or intended for cutting vegetables or for processing vegetables such that edges or slices are formed.

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.

The applicant requested an opportunity to make further submissions in the event that the Office decides to maintain the objection. The Office has already raised all its arguments in the previous communication and the applicant had an opportunity to submit its observations. The Office does not raise any new arguments in this communication and, therefore, the Office does not see any reason for granting additional time to the applicant to submit further observations.

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.

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).

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.

‘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).

1. Regarding the limitation of goods that the applicant requested, the Office accepted the change to the application in relation to the goods in Class 29, as the limitation reduces the scope of the goods applied for. However, the Office did not accept the change to the application in relation to the goods in Class 7, as the limitation broadens the scope of the goods applied for. The goods applied for in Class 7 were machines for processing vegetables. The applicant requested to specify this term as machines for pre-treatment of fruits, vegetables and tubers prior to cutting, dicing or slicing; machines for hardness conditioning of fruits and vegetables; machines for texture modification of fruits and vegetables; machines to induce cell disruption prior to soaking, infusion or extraction for fruit and vegetable products, tubers and leafs. The goods applied for included merely machines for processing vegetable and not any machines processing fruits, tubers, etc.

2. As regards the applicant’s final argument, the Office notes that the distinctive character and descriptiveness of the trade mark have to be assessed in relation to the goods applied for and in relation to the perception of the relevant public. Furthermore, the Office states that the consumers will not perceive the mark alone but in relation to the goods applied for; machines for processing vegetable. Therefore, the relevant public will not perceive the mark ‘SmoothCut’ as a badge of commercial origin but as obvious and direct information that the goods are machines for processing vegetables that are cutting vegetable with no roughness on their edges.

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 16 002 016 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.

Klara BOUSKOVA