Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/11/2017

WÜRTENBERGERKUNZE

Maximiliansplatz 12b

D-80333 München

ALEMANIA

Application No:	016515413
Your reference:	GW-201709
Trade mark:	SAMSMAK Z przyjemnoscia
Mark type:	Figurative mark
Applicant:	Ajinomoto Co., Inc. 15-1, Kyobashi 1-Chome, Chuo-ku Tokyo 104 JAPÓN

The Office raised an objection on 30/13/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that this trade mark is devoid of any distinctive character, for the reasons set out in the attached letter.

Following a two-month extension of the period allowed for the applicant to submit its observations, the time limit set by the Office was 30/07/2017.

The applicant submitted its observations on 20/06/2017, which may be summarised as follows:

1. The mark has to be analysed as a whole.

2. The average consumer will not perceive the mark as having a clear and immediately perceptible meaning, as it needs several mental steps to reach the meaning provided by the Office.

3. The Office has to take into account the CP3 principles set out in a Common Communication of the European Union Trade Mark Offices. According to these principles the mark is distinctive when taken as a whole.

4. Taking into account the way in which the word elements are positioned, as well as the particular graphic design, not only of the lettering but also of the shape of the mark, these elements create a lasting impression in the mind of the average consumer and make the mark distinctive.

5. The Office failed to provide any explanation why the sign applied for is descriptive in relation to all the goods.

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)(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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

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 carried out by the examiner was based entirely on the mark as a whole and not on the individual meanings of each word in the expression ‘SAM SMAK Z przyjemnoscia’. 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.

Furthermore, the Office has not based its objection on Article 7(1)(c) EUTMR; therefore, it was not necessary to provide any argumentation on this ground.

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, , is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin. Instead, it will be understood by the relevant public as a promotional message that merely serves to highlight positive aspects of the goods concerned, namely that they have excellent taste.

The mark is composed of the expression ‘SAM SMAK Z przyjemnoscia’ in slightly stylised black letters on three lines, with a horizontal line under the word ‘SMAK’. There is no figurative element that could add any distinctive character to this expression. It will be immediately obvious to any Polish speaker that the mark applied for is composed of the Polish words ‘SAM’, ‘SMAK’, ‘Z’ and ‘przyjemnoscia’. Accordingly, the examination of its registrability must be based on these words and their combination as a whole.

The trade mark contains the words ‘SAM’, ‘SMAK’, ‘Z’ and ‘przyjemnoscia’, with the following meaning(s):

Sam ‘alone, by yourself, on your own, itself’;

Smak ‘flavour, taste’;

Z ‘with’;

Przyjemnoscia basic word: ‘przyjemność’; ‘joy, pleasure, enjoyment’.

(All meanings extracted from DIKI Polish-English Dictionary on 30/03/2017 at www.diki.pl .)

The relevant consumer will understand the words as a meaningful expression: just a taste with pleasure.

The combination of words follows linguistic rules. This grammatically correct and normal combination of words, in the context of the goods for which registration is sought, will have a direct and immediate meaning for the relevant Polish-speaking public, in that it will be perceived as a laudatory message stating that the goods have an excellent taste.

The goods to which an objection has been raised and which are covered by the mark applied for are soups; preparations for making soups; bouillon; broth; preparations for making soups with noodles, instant soups with noodles, instant noodles; noodles; fried noodles; dried noodles; noodle-based prepared meals; dried and fresh pastas, noodles and dumplings; meals consisting primarily of noodles; noodles for soups.

These are goods for everyday consumption/mass consumption and mainly target average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well‑informed and reasonably observant and circumspect.

The sign for which registration is sought, without any additional or graphic element that would result in the sign significantly deviating from being, as a whole, a mere promotional message, is incapable of performing the essential function of a trade mark and does not enable the consumer who purchased the goods and services in question 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 target public will perceive the sign applied for as a general promotional message without regarding it as containing an indication of commercial origin that refers to the specific undertaking behind that indication.

The Office also maintains that the elements of the mark do not endow the trade mark applied for, as a whole, with the necessary degree of distinctive character. The only figurative element of the mark is the horizontal line under the word ‘SMAK’, which, together with the stylisation of the words, does not give the mark distinctive character. In addition, when taking into account the principles of the CP3 project, the examination of the mark cannot lead to a different conclusion; the mark is devoid of distinctive character.

The sign cannot be perceived as anything other than an indication of the characteristics of the goods in question. The message expressed by the sign for which registration is sought will be clear, direct and immediate for the relevant public. It is not vague in any way, does not lend itself to different interpretations and is not imprecise or akin to an ‘evocative’ sign. The expression ‘SAM SMAK Z przyjemnoscia’ is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant Polish-speaking consumer.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which protection 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, § 19; 12/02/2004, C‑363/99, Postkantoor, § 86).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 16 515 413 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.

SZABOLCS KISS