Refusal of application for a European Union trade mark

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

Alicante, 21/04/2017

Beiersdorf AG

Birgit Grube

Unnastr. 48

D-20253 Hamburg

ALEMANIA

Application No:	016182801
Your reference:	8670-gru-21068/EM
Trade mark:	Deep Moisture Serum
Mark type:	Figurative mark
Applicant:	Beiersdorf AG Unnastr. 48 D-20253 Hamburg ALEMANIA

The Office raised an objection on 09/01/2017 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 01/03/2017, which may be summarised as follows:

1. The mark is not descriptive.

2. The mark has distinctive character.

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.

Descriptiveness

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 applicant argues that there is not a sufficiently direct and specific relationship between the mark and the goods for which registration is sought. The mark constitutes an unusual combination of words and must be considered as a whole. The relevant consumer would not immediately perceive the mark ‘DEEP MOISTURE SERUM’ as a description of the kind, intended purpose and property of the goods in question.

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).

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.)

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 Office agrees with the applicant that, 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).

The Office has assessed the individual components of the mark, but the objection is based on an assessment of the mark as a whole.

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).

However, the Office maintains its position and finds that the combination of the three components is descriptive; it notes that:

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.)

It is the Office’s clear and unambiguous position that the combination of the words ‘DEEP’, ‘MOISTURE’ and ‘SERUM’ is not unusual and does not result in the impression conveyed being sufficiently far removed from a description of the goods for which registration is sought. Consumers would merely perceive the expression ‘DEEP MOISTURE SERUM’ as meaning a very intense moisturising substance, and would, in relation to the goods, perceive the mark merely as indicating that the goods are cosmetic products that consist of or contain a very intense moisturising substance.

The applicant argues that the mark ‘DEEP MOISTURE SERUM’, as a whole, is not descriptive of the goods for which registration is sought. According to the applicant, the definitions of the word elements used by the Office, in particular with regard to the words ‘DEEP’ and ‘SERUM’, neither refer to the direct use of the words nor constitute the first perception a consumer would have of the words.

The Office disagrees with the applicant’s interpretation of the mark’s word elements. The meaning of the mark must be assessed according to the goods in question, namely, cosmetics and cosmetic skincare preparations.

The definition of ‘DEEP’, used in the Office’s objection is a well-known definition, namely ‘very intense or extreme’, (Oxford English Dictionary (information extracted from Oxford Dictionaries on 18/04/2017 at https://en.oxforddictionaries.com/definition/us/deep ). The use of the word ‘DEEP’, with the meaning of ‘(very) intense’ or ‘extreme’, is commonly used in marketing cosmetic products. See the following examples:

(http://www.vaseline.us/product/intensive-care/lotions/deep-moisture-jelly-cream.html );

(http://www.kiehls.com/ultra-facial-deep-moisture-balm/KHL901.html ; Internet search performed on 18/04/2017).

Furthermore, contrary to the applicant’s arguments, the examples show that the combination ‘DEEP MOISTURE’ is a commonly used expression in marketing cosmetic products.

In the assessment of the mark, the Office considers the word elements in relation to the goods for which registration is sought and how the words would be perceived by the relevant public in relation to these goods.

The meaning attributed to the word ‘deep’ by the Office is analogous to the meaning attributed to the word by the applicant. According to the applicant, the direct meaning of the word ‘DEEP’ is ‘extending very far, usually down’. In the context of cosmetic products, for example serums and creams, the relevant consumer would perceive deep as referring to moisture that penetrates far into the skin, that is, a moisturiser that penetrates the outer layers of the skin and moisturises the skin from within rather than just the outer layer of the skin. The Office prefers to use the definition ‘intense’ or ‘extreme’, but the understanding of the word ‘DEEP’ in the context of cosmetic products is the same.

The applicant argues that the synonyms for ‘DEEP’, for example, ‘broad’, ‘far’ and ‘wide’, do not have a clear and specific meaning in relation to cosmetic products. ‘DEEP’ has different meanings in different contexts and a synonym used in one context may not be suitable for use in another. In the thesaurus used by the applicant, synonyms of ‘DEEP’ include ‘extreme’, ‘strong’ and ‘rich’, with ‘rich’ in particular pointed out by the applicant as a word used to describe the characteristics of cosmetics. The Office therefore maintains that the word elements would immediately be understood as descriptive by the relevant consumers in relation to the goods in question.

Based on the fact that a high percentage of skincare product manufacturers have a ‘SERUM’ in their skincare line(s) and that the word ‘SERUM’ is widely used to refer to this type of skincare product, the relevant consumer is well aware of the word ‘SERUM’ and its properties. See the following examples:

(http://www.elle.com/beauty/makeup-skin-care/tips/g8091/face-serum/ );

(http://www.huffingtonpost.com/2015/03/03/what-is-face-serum_n_6761412.html );

(http://www.sephora.com/search/search.jsp?keyword=serum%20&mode=all ; internet search performed on 18/04/2017).

The Office does not exclude that the word ‘formula’ may be used as a synonym for ‘SERUM’ but maintains that ‘SERUM’ is a known expression for ‘a substance in beauty products that is designed to improve the hair or skin and make it less dry’.

In addition, and contrary to the applicant’s arguments, the meaning of the expression ‘MOISTURE SERUM’ has a clear link to cosmetic products and would immediately be understood by the relevant consumer. The definition provided by the Office of the word ‘SERUM’ specifies that it is something that makes the skin or hair less dry, in other words, that moistens it. Furthermore, it is a combination of words that are widely used and known by the relevant consumers. See the following examples:

(https://www.rituals.com/en-us/intense-moisture-serum-6340.html );

(https://www.thebodyshop.com/en-gb/face/moisturisers/vitamin-e-moisture-serum/p/p000878 ; internet search performed on 18/04/2017).

Therefore, and contrary to the applicant’s arguments, the expression ‘DEEP MOISTURE SERUM’ as a whole would immediately and without further reflection be perceived by the relevant consumers as descriptive of the goods and their characteristics, as it would convey obvious and direct information regarding the kind and intended purpose of the goods, as well as a property of them. The words are commonly used in the marketing of cosmetic products and there are no elements that would make the relevant consumers believe that they are an indication of commercial origin.

Distinctiveness

The applicant argues that the mark is distinctive, first, because the Office has mistakenly assumed that the mark is descriptive and, second, because the figurative elements add sufficient distinctive character to the mark. The applicant finds that the figurative elements do not support the descriptive meaning of the words, as the main figurative element is a white pearl that has no association with the goods in question.

First, the Office maintains that the word elements are descriptive for the goods in question and, therefore, that they lack distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). Second, with regard to the figurative elements, the Office maintains that, in relation to the goods, the figurative element will be perceived as a droplet that merely reinforces the descriptive message of moisture.

The applicant argues that a water droplet is not usually as round-bellied as in the illustration, and that the bright shiny white colour makes it a pearl, rather than a droplet.

The Office is referring not to a water droplet, as assumed by the applicant, but to a droplet of moisturiser or something moisturising. It is not unlikely that a droplet of serum or cream would have a shiny white colour as in the illustration. However, the illustration does not need to be a true-to-life illustration of the product, as long as the message conveyed, namely something moistening, is immediately perceived by the relevant consumer.

In relation to the goods for which registration is sought and the word elements of the mark ‘DEEP MOISTURE SERUM’, the relevant consumer would obviously associate the central white element as a droplet of moisture rather than a pearl.

First, the Office apologises for the spelling mistake in its previous letter; it should obviously have stated that the colour of the background is blue. A blue colour gives an impression of something clean, cool, and wet (information extracted from colormatters.com on 18/04/2017 at https://www.colormatters.com/the-meanings-of-colors/blue ) and is a colour commonly used in the marketing of skincare products. Although the applicant argues that the blue colour provides a contrast to the white colours and that the horizontal line provides a good balance in the mark, these elements are not sufficient to render the mark distinctive. Therefore, the Office maintains that the mark as a whole is not sufficiently distinctive to be perceived immediately as an indication of commercial origin for the goods for which registration is sought.

Further proceedings

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 16 182 801 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.

Anja Pernille LIGUNA