Refusal of application for a European Union trade mark

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

Alicante, 13/07/2017

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ALEMANIA

Application No:	016449407
Your reference:	30404MEM
Trade mark:	4drinks1hand
Mark type:	Word mark
Applicant:	Slattery Family Investments Pty Ltd 116 James Street New Farm Queensland QLD 4005 AUSTRALIA

The Office raised an objection on 16/03/2017 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 08/05/2017, which may be summarised as follows:

1. The applicant amends the list of goods.

2. The expression applied for, ‘4drinks1hand’, is an original, fanciful and concise combination of words which may be evocative but makes no reference to the goods applied for.

3. There is no direct link between the mark applied for and the goods in question and making this connection would require from relevant consumers several mental steps.

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).

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant argues that the expression applied for, ‘4drinks1hand’, is an original, fanciful and concise combination of words which may be evocative but makes no reference to the goods applied for.

The Office has noted applicant’s comments. However, the Office does not consider the applicant’s arguments convincing and asserts that … the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

Furthermore, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The sign is composed of four conjoined elements, namely the number ‘4’, word ‘drinks, number ‘1’ followed by the word ‘hand, or rather of two easily identifiable components, ‘4drinks’ and ‘1hand’, which are clearly descriptive in relation to the objected goods. As in its notice of absolute grounds for refusal of 16/03/2017, the Office is of the opinion that, in relation to the goods in question, the expression at issue informs the consumers without further reflection that the goods applied for allow for sustaining and/or carrying four drinks using one hand only. The applicant admits that the expression may be evocative but argues that it does not describe any characteristics of the goods claimed and its understanding would require from consumers an additional thought process.

This argument of the applicant must be dismissed. The combination of the four descriptive dictionary elements does not automatically confer upon the totality a degree of distinctive character by virtue of it not appearing in a dictionary. The English speaking public will immediately perceive the four elements in the expression ‘4drinks1hand’ and make an instinctive dissection of the whole. 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, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, $ 59).

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, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, § 32).

The expression ‘4drinks1hand’ immediately informs consumers that the contested goods namely beverage, cup and food trays and holders, allow for sustaining and/or carrying four drinks using one hand only. The way in which the four elements are juxtaposed, follows the rules of English grammar and common parlance. The sign is a straightforward combination of its descriptive elements, or more precisely, its two clearly identifiable components ‘4drinks’ and ‘1hand’, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The mark at issue conveys obvious and direct information regarding the character of the goods in question. The expression ‘4drinks1hand’ consists exclusively of a meaningful expression that will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the kind and intended purpose of the goods in question.

As regard the applicant’s argument that there is no direct link between the mark applied for and the goods in question and making this connection would require from relevant consumers several mental steps, the Office has noted the applicant’s comments.

However, the Office asserts 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, emphasis added).

As regards the applicant’s argument that the relevant consumer would need to take several mental steps to derive from the expression any meaning, the Office asserts that the fact that the expression ‘4drinks1hand’ consists of an unusual combination of words does not alter the fact that, when taken as a whole, the meaning of the term will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods for which registration is being sought, as indicated in the Office’s confirmation of amendment of classification of goods and services of 31/05/2017.

Taken as a whole, the meaning of the expression ‘4drinks1hand’ is clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods in respect of which registration is sought. It is, therefore, the Office’s view that the ‘4drinks1hand’ is readily intelligible when taken in conjunction with the goods applied for and viewed by the relevant consumer.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the mark applied for, ‘4drinks1hand’, will be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the sign at hand does not possess any actual distinctive character for the goods applied for, pursuant to Article 7(1)(b) and (c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods of the applicant from those of other undertakings.

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 16 449 407 is hereby rejected for all the goods claimed, namely:

EN-21

Beverage and food holders; beverage and food trays; cup holders; cup trays; disposable beverage and food holders; beverage and food trays formed wholly or principally from paper pulp; beverage and food trays formed wholly or principally from plastic.

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.

Robert KLECUN