Refusal of application for a European Union trade mark

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

Alicante, 30/08/2017

Sun Pharmaceutical Industries Europe B.V.

Juliette Omtzigt

Polaris Avenue 87

NL-2132 JH Hoofddorp

PAÍSES BAJOS

Application No:	016476202
Your reference:	garlicpearls
Trade mark:	GARLIC PEARLS
Mark type:	Word mark
Applicant:	Sun Pharmaceutical Industries Limited 17-B, Mahal Industrial Estate mahakali caves road, andheri (east) Mumbai, Maharashtra 400093 LA INDIA

The Office raised an objection on 22/03/2017 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 22/05/2017, which may be summarised as follows:

1. The same mark has been registered by the applicant in various countries (Bangladesh, India, Jordan, Nigeria, Oman, Pakistan, the Philippines, Singapore, Sri Lanka, Thailand, the United Arab Emirates and Vietnam).

2. The mark has been used widely and extensively, and the applicant has made tremendous efforts to popularise its goods and has spent sizeable amounts of money on promotional activities.

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 the present case, the trade mark applied for consists of the expression ‘GARLIC PEARLS’, which means ‘having the shape of a pearl and the content of an Asian alliaceous plant, Allium sativum’. The first word means ‘the small, white, round bulb of a plant that is related to the onion plant. Garlic has a very strong smell and taste and is used in cooking; a hardy widely cultivated Asian alliaceous plant, Allium sativum, having a stem bearing whitish flowers and bulbils’ (information extracted from Collins English Dictionary on 22/03/2017 at www.collinsdictionary.com ). The second word is ‘used to describe something which looks like a pearl; having the shape or colour of a pearl’ (information extracted from Collins English Dictionary on 22/03/2017 at www.collinsdictionary.com). The structure of the expression ‘GARLIC PEARLS’ does not diverge from the rules of English grammar; rather, it complies with them. Therefore, the relevant consumer will perceive the mark ‘GARLIC PEARLS’ not as unusual but 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 in question has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, namely food supplements; dietary food supplements; pharmaceutical preparations, are goods that have the shape of a pearl and contain garlic or garlic extract. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their nature and shape.

The goods for which registration is sought target the average consumer and a professional public. It is clear that the relevant consumers will perceive the combination of words ‘GARLIC PEARLS’, in relation to the contested goods, as a meaningful expression referring to the fact that the goods are pearl-shaped products containing garlic extract.

The mark applied for, ‘GARLIC PEARLS’, thus clearly conveys obvious and direct information about the nature and shape of the contested goods. The words that make up the mark applied for will be understood by the relevant English-speaking public; the mark ‘GARLIC PEARLS’ 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 two immediately identifiable words. The combination of words does not contain 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 at issue.

The Office considers that it is highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing 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

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘GARLIC PEARLS’, 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 have the shape of a pearl and contain garlic extract.

The mark is composed of the verbal elements ‘GARLIC PEARLS’, written in standard upper case characters. The goods to which an objection has been raised and for which registration is sought, namely food supplements; dietary food supplements; pharmaceutical preparations, are goods for mass consumption and also specialised goods, and they are aimed at average consumers and a professional public. In view of the nature of the goods in question, the degree of attention of the relevant public will vary from average to high.

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, 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 the trade origin of the goods at issue but, rather, as a descriptive expression with a clear meaning.

It must be held that the fact that the relevant public is specialist cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

There is nothing in the mark 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 concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other 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 of a descriptive meaning and, when it is applied to a variety of goods, the relevant consumer will immediately be given an indication of the characteristics of such goods (i.e. their nature and shape).

As regards the national decisions referred to by the applicant (Bangladesh, India, Jordan, Nigeria, Oman, Pakistan, the Philippines, Singapore, Sri Lanka, Thailand, the United Arab Emirates and Vietnam), 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; 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 decisions cited originate not from a national office in a Member State but from outside the European Union, in jurisdictions 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 applied for will be perceived by the relevant public as purely descriptive and non-distinctive, 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; 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 16 476 202 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.

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