Refusal of application for a European Union trade mark

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

Alicante, 29/03/2017

MARKS & CLERK (LUXEMBOURG) LLP

B.P. 1775

L-1017 Luxembourg

LUXEMBURGO

Application No:	016013617
Your reference:	T140093EM
Trade mark:	INCENSE OF INDIA ESSENCE OF INDIA
Mark type:	Figurative mark
Applicant:	HEM CORPORATION PRIVATE LIMITED G-5 Riddhi - Siddhi Apartments, Mithagar 'X' Road Mulund (East), Mumbai 400 081 LA INDIA

The Office raised an objection on 08/12/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 25/01/2017, which may be summarised as follows:

1. The examiner should not analyse the meaning of each component of the mark applied for, but should consider the mark as a whole.

2. The mark, taken as a whole, is capable of serving as a trade mark. The combination of words is uncommon and therefore is a lexical invention. The juxtaposition of the words is unusual and original. The fact that the words are displayed on two lines adds to the originality of the mark applied for and will attract the consumer’s attention.

3. Generally, the word ‘essence’, or the adjective ‘essential’, is used to refer to ‘the most important indispensable quality or constituent element of anything’. The word ‘essence’ as a noun is not used to describe goods. The mark is ambiguous and suggestive.

4. Any use of the mark applied for on the market relates to the applicant’s own goods.

5. The almost identical mark ‘ESSENCE OF INDIA INCENSE OF INDIA’ has been registered by the USPTO (No 3 607 625) for identical goods.

6. EUIPO has registered similar trade marks: ‘INCENSE OF AUROVILLE’ (No 11 670 874), ‘ESSENCE OF THE NORTH’ (No 6 161 954) and ‘THE ESSENCE OF VENICE’ (No 15 297 914).

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

In relation to the applicant’s first point, the Office does not agree that the examiner has not considered the mark as a whole. In the communication sent by the Office, the examiner refers to the mark as ‘the expression’. This term means ‘a word or group of words forming a unit and conveying meaning’. Therefore the evaluation made by the examiner was made entirely on the basis of the mark as a whole and not on the basis of the individual meanings of each word in the expression ‘INCENSE OF INDIA ESSENCE OF INDIA’. The examiner did define the meaning of each word, but the purpose of that exercise was to better understand the sense of the mark as a whole.

The trade mark applied for consists of the words ‘INCENSE OF INDIA ESSENCE OF INDIA’, which means an aromatic gum that produces a sweet smell when burned, a scent, a fragrance or an essential oil from a country in South Asia. Although this expression is not found in dictionaries, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘INCENSE’, ‘ESSENCE’, ‘OF’ and ‘INDIA’. The first word means ‘an aromatic gum or other vegetable product, or a mixture of fragrant gums and spices, used for producing a sweet smell when burned; any pleasant perfume or fragrance, as of flowers’. The second word, ‘ESSENCE’, means ‘The most important indispensable quality or constituent element of anything; the specific difference; an extract obtained by distillation or otherwise from a plant, or from a medicinal, odoriferous or alimentary substance, and containing its characteristic properties in a concentrated form. In pharmacy chiefly applied to alcoholic solutions containing the volatile elements or “essential oil” to which the perfume, flavour, or therapeutic virtues of the substance are due; a fragrant essence; a perfume, scent’. The word ‘OF’ is a preposition. The word INDIA’ means ‘The name of a country in South Asia; any of various products made in, associated with, or imported from India or the East Indies’. All the above information was extracted from Oxford English Dictionary on 07/12/2016 at www.oed.com. The structure of this expression, ‘INCENSE OF INDIA ESSENCE OF INDIA’, does not diverge from English grammar rules but rather complies with them. Therefore, the relevant consumer will perceive it not as unusual but rather as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as unusual but, rather, as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely incense and incense sticks; incense cones; dhoop; perfumes and perfumery compounds; scented body sprays; incense oils; essential oils; scented oils; aromatic oils; aroma therapy oils; aroma therapy bath oils; massage oils; bath salts; room fragrancing preparations; room scenting sprays; cosmetics; hair lotions; hair oils; shampoos; soaps; shower gel; colognes; eau de colognes; deodorants for personal use; lip balm; talcum powder; body lotions; hand washes; non-medicated face washes; hand and body scrubs; potpourris (fragrances); perfumed sachets; skin care preparations; shaving creams, are incense products, cosmetics and cosmetic products with the scent of India. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their nature and quality.

The goods for which registration is sought target the average consumer. It is clear that, in relation to the goods in question, the relevant consumer will understand the words, or the combination of words, as a meaningful expression referring to incense products, cosmetics and cosmetic products with the scent of India.

The mark applied for, , thus clearly conveys obvious and direct information about the kind of products provided by the applicant. Although the combination as such might be new, the words that make up the mark applied for are very common words in the field of cosmetics; the expression ‘INCENSE OF INDIA ESSENCE OF INDIA’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of four immediately identifiable words. The combination of words does not contain, in relation to the separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods in question.

The Office also maintains that the stylisation of the mark – namely the fact that the words are written on two lines – does not endow the trade mark applied for, as a whole, with the necessary degree of distinctive character. The use of two lines does not add anything to the mark that would allow it to fulfil its essential function in relation to the goods for which registration is sought.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin that distinguishes the applicant’s goods from those of its competitors.

Article 7(1)(b) EUTMR – general remarks

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).

Assessment of the distinctive character of the mark

As set out in the notice of absolute grounds for refusal, the sign at issue, , is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are incense products, cosmetics and cosmetic products with the scent of India.

The mark is composed of the words ‘INCENSE OF INDIA ESSENCE OF INDIA’, written in standard upper case characters. The goods to which an objection has been raised and which are covered by the mark applied for are incense and incense sticks; incense cones; dhoop; perfumes and perfumery compounds; scented body sprays; incense oils; essential oils; scented oils; aromatic oils; aroma therapy oils; aroma therapy bath oils; massage oils; bath salts; room fragrancing preparations; room scenting sprays; cosmetics; hair lotions; hair oils; shampoos; soaps; shower gel; colognes; eau de colognes; deodorants for personal use; lip balm; talcum powder; body lotions; hand washes; non-medicated face washes; hand and body scrubs; potpourris (fragrances); perfumed sachets; skin care preparations; shaving creams, which are everyday goods for mass consumption, and they target average consumers. In view of the nature of the goods in question, the degree of awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

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 goods under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those goods from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, 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).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of a particular trade origin for the goods in question, but rather as a descriptive expression with an obvious meaning.

The applicant argues that the mark is suggestive

The Office agrees with the applicant that trade marks that are merely allusive or suggestive or that require further interpretation should not be refused registration. However, the sign cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message conveyed by the sign applied for to the relevant public is clear, direct and immediate. It is not vague in any way, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The mark is not sufficiently unusual to require a significant measure of interpretation, thought or analysis on the part of the relevant consumer.

Furthermore, there is nothing in the expression that might, beyond its obvious direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods in question. The relevant public cannot, in the absence of prior knowledge, perceive it in any other way than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication with a descriptive meaning and, when it is applied to a variety of goods, the relevant consumer will immediately be given an indication of a characteristic of such goods (e.g. their nature or quality).

The applicant argues that the word is a neologism

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.)

The applicant argues that none of its competitors makes use of the same combination

As regards the applicant’s argument that none of its competitors makes use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

As regards the applicant’s argument that a number of similar registrations have been accepted by 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).

The applicant argues that the mark has been accepted in the United States of America

As regards the USPTO decision referred to by the applicant (No 3 607 625), 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 (12/02/2009, C‑39/08 and C‑43/08, Volks.Handy, EU:C:2009:91, § 17-19; 13/02/2008, C‑212/07 P, Hairtransfer, EU:C:2008:83, § 44; and 05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant European Union rules. Accordingly, the Office is 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43 § 47).

In the present case, the decision cited originates not from a national office in a Member State, but from outside the European Union, in a jurisdiction with different conditions for the registration of trade marks.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which registration is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; and 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 16 013 617 is hereby rejected for all the goods for which registration is sought.

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.

Szabolcs KISS