Refusal of application for a European Union trade mark

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

Alicante, 12/09/2017

KROHER • STROBEL RECHTS- UND PATENTANWÄLTE PARTMBB

Bavariaring 20

D-80336 München

ALEMANIA

Application No:	016723207
Your reference:	11188M1321EM
Trade mark:	DEEP GREEN
Mark type:	Word mark
Applicant:	GDC, Inc. 815 Logan Street Goshen Indiana 46526 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/05/2017 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 11/07/2017, which may be summarised as follows:

1. The applicant disagrees with the finding that the mark is not registrable. The English-speaking consumer would refer to dark green and not to deep green.

2. Even if it were recognised as a colour, the link between the goods in question and the mark is insufficiently close for the mark to fall within the scope of the prohibition laid down by Article 7(1) EUTMR. The words ‘DEEP GREEN’ do not have a descriptive meaning as they describe only one possible characteristic of the goods. Consumers are aware that the goods may be offered in different colours but the consumers will not see the mark in question as describing a characteristic of plastics.

3. Several EUTMs containing the name of the colour have been registered and some allowed by the decisions of the Boards of Appeal, namely EUTM No 14 397 764, EUTM No 14 511 414, EUTM No 56 524, EUTM No 3 004 199.

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.

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).

In response to point 1) For a trade mark to be refused 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).

The Office maintains its opinion that the word is clearly understandable by English -speaking consumers in the European Union. There is nothing about the expression ‘DEEP GREEN’ that might, beyond its obvious meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question.

In response to point 2) The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services for which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services. 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. Therefore, given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in kind and intended purpose, thus eclipsing any impression that the mark could indicate a trade origin.

Therefore, the Office maintains its position that the mark applied for is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought. The mark simply refers to the colour of the goods.

In response to point 3) As regards the applicant’s argument that a number of similar registrations have been accepted by the 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; 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).

As regards the earlier marks, the Office notes that the EUTMs cited are figurative, were registered for different goods and services, were accepted on the basis of acquired distinctiveness or were accepted many years ago when the Office practice was different. Therefore, they are not comparable with the mark applied for.

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 16 723 207 is hereby rejected for the following goods:

Class 17 Plastics containing fiber material for use in manufacturing of articles, profiles, sheets, and blocks; plastics reinforced with biological, renewable, and recyclable fiber.

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.

Petra CHARUZOVÁ

Enclosure: 3 pages