Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/07/2018

APPLEYARD LEES IP LLP

15 Clare Road

Halifax, West Yorkshire HX1 2HY

REINO UNIDO

Application No:	016742603
Your reference:	T35647EM34/DXM
Trade mark:	KIFF
Mark type:	Word mark
Applicant:	Bull Brand Limited 16 Steeton Grove Steeton Keighley BD20 6TT REINO UNIDO

The Office raised an objection on 23/05/2017 pursuant to Article 7(1)(b) and (c) 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 both the attached letters. After receiving a request for extension of the time limit, on 20/07/2017, the Office discovered that the mark should also be objected to under Article 7(1)(f) EUTMR, consequently an additional objection, supplementing the first one, was raised on 11/08/2017 pursuant to Article 7(1)(f) EUTMR because it was found contrary to public policy, for the reasons set out in the second attached letter.

The applicant submitted its observations in relation to Article 7(1)(b) and (c) and Article 7(2) EUTMR on 25/09/2017 and in relation to Article 7(1)(f) EUTMR on 11/10/2017, all these observations may be summarised as follows.

1. The applicants identical trade mark has been registered in the national UK trade mark office (UKIPO), for identical goods in Class 34. As the present objection is made with reference to the English speaking public of the European Union, the UK registration demonstrates that the mark also should be accepted for registration by the EUIPO. The UKIPO has also registered the mark ‘KIFF PURE’ for goods in Class 34, further demonstrating that the word ‘KIFF’ is distinctive in relation to such goods. Furthermore, the US trade mark Office (USPTO) has registered the mark, further strengthening the argument already made. In addition, the USPTO has defined the meaning of ‘KIFF’ as ‘awesome’, and not the meaning claimed by the Office in its objection.

2. The term ‘KIFF’ does not have the meaning claimed by the Office, according to Collins Dictionary it means ‘excellent; cool’. A search performed with Google Translate also confirms that ‘KIFF’ does not have the meaning claimed by the Office.

3. Consequently, the sign will not be perceived as descriptive and/or devoid of distinctive character by the relevant public.

4. According to the Collins Dictionary definition, cited above, the term ‘KIFF’ has a positive meaning and not one that is contrary to public policy. Consequently, the sign will not be perceived as being contrary to public policy by the relevant public.

5. The same arguments as in point 1 applies to the claimed objection under Article 7(1)(f) EUTMR, the registrations in the UK and the USA confirms that the mark is acceptable for registration considering the English speaking consumers in the European Union.

6. If the Office decides to maintain its objections the applicant requests an additional deadline for filing further observations and to submit evidence of acquired distinctiveness.

The Office raised a further objection on 01/12/2017 considering the applicant’s arguments indicated above and granting additional time to submit evidence of acquired distinctiveness, under Article 7(3) EUTMR. The applicant failed to clearly and unambiguously specify its claim. The applicant has not provided any evidence of acquired distinctiveness pursuant to Article 7(3) EUTMR.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

In the present case, the Office does not reintroduce arguments which have already been discussed, but builds on those arguments and, in this refusal, summarises the arguments of the applicant.

Pursuant to Article 94 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.

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).

Article 7(1)(f) EUTMR prohibits the registration of ‘trade marks which are contrary to public policy or to accepted principles of morality’. By virtue of Article 7(2) EUTMR, the grounds of non-registrability set out in Article 7(1) EUTMR do not have to exist throughout the EU; it is sufficient if they ‘obtain in only part of the Community’.

Signs likely to be perceived by the relevant public as being contrary to public policy or to accepted principles of morality are not the same in all Member States, inter alia for linguistic, historic, social and cultural reasons (20/09/2011, case T-232/10, ‘soviet coat of arms’, § 32).

In deciding whether a trade mark should be barred from registration on grounds of public policy or morality, the Office must apply the standards of a reasonable person with normal levels of sensitivity and tolerance (20/09/2011, T-232/10, ‘Coat of arms of the Soviet Union’, § 51).

The purpose of Article 7(1)(f) EUTMR is not to identify and filter out signs whose use in commerce must at all costs be prevented; rather the rationale of the provision is that the privileges of the trade mark registration should not be granted in favour of signs that are contrary to public policy or the accepted principles of morality. In other words, the organs of government and public administration should not positively assist people who wish to further their business aims by means of trade marks that offend against certain basic values of civilised society (06/07/2006, R495/2005 G, ‘Screw you’).

In response to the applicant’s submissions, the Office states the following:

1.

As regards the national decisions referred to by the applicant, 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. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are 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 or in a country belonging to the linguistic area in which the word sign in question originated. (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 47). Furthermore, the Office is not aware of the considerations taken by the cited trade mark offices at the time of registration of those signs.

2.

The Office acknowledges that the term ‘kiff’ means ‘excellent; cool’ in South African English (https://www.collinsdictionary.com/dictionary/english/kiff). However, the distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of 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 (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). Arguments concerning other possible meanings of the word making up the trade mark applied for (that are unrelated to the goods/services concerned) are irrelevant.

The mark ‘KIFF’ is visually highly similar and phonetically nearly identical to the term ‘KIF’, a term that is defined by the Collins Dictionary as: ‘another name for marijuana’ (see also attached letter). The goods in question are all smokers’ articles in Class 34, for example cigarette papers; filter tips and pipes, these goods may be used to facilitate and consume marijuana. Consequently, when the relevant consumer, who is reasonably well-informed and reasonably observant and circumspect, encounters the sign ‘KIFF’ on such goods it is highly likely that it will be perceived as descriptive, regardless of its minor misspelling.

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).

Consequently, the Office maintains that, taken as a whole, the expression ‘KIFF’ immediately informs consumers without further reflection that the goods applied for, being various smokers articles, are intended to be used for smoking marijuana. Therefore, this expression conveys obvious and direct information regarding the intended purpose of the goods in question. It follows that the trade mark applied for is exclusively composed of descriptive indications and must, therefore, be refusedpursuant to Article 7(1)(c) EUTMR.

3.

As the Office maintains that the mark is descriptive under Article 7(1)(c), it also maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

4.

As already established, the word ‘kiff’ has a positive connotation in South African English, nevertheless, as argued in point 2, when the relevant consumers encounter the sign ‘KIFF’ on the goods in question, it is highly likely that they will perceive it as a reference to marijuana.

Article 7(1)(f) EUTMR prohibits the registration of ‘trade marks which are contrary to public policy or to accepted principles of morality’.

It is a well-known fact that the purchase and consumption of marijuana, or products containing marijuana, is prohibited by law in many member states of the EU. Therefore, as the term ‘KIF’ is another word for marijuana, the sign ‘KIFF’ would instantly be perceived by the relevant consumers as a message which encourages an activity forbidden in in many member states of the EU, namely the sale and/or consumption of drugs. In particular as the all goods can be used to consume and facilitate the smoking of such substances. Consequently, the mark falls under the prohibition of Article 7(1)(f) EUTMR since many EU Member States where English is spoken and understood prohibit drug trade, except under license, of many types of drugs through drug prohibition laws.

Consequently, taken as a whole, the mark applied for – ‘KIFF’ – is against public policy in the sense of Article 7(1)(f) EUTMR.

5.

As already argued in point 1, in relation to the national decisions referred to by the applicant, 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. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are 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 or in a country belonging to the linguistic area in which the word sign in question originated. (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 47). Furthermore, the Office is not aware of the considerations taken by the cited trade mark offices at the time of registration of those signs.

6.

The applicant’s request for additional time to submit evidence of acquired distinctiveness, under Article 7(3) EUTMR, had been granted. However, the applicant failed to clearly and unambiguously specify its claim. The claim under Article 7(3)EUTMR received on 11/10/2017 does not clearly and precisely identify whether the claim is intended to be a principal or a subsidiary one pursuant to Article 2(2) EUTMIR.

The Office does not consider that no claim has been made because the applicant did not submit evidence, but because the applicant did not clarify on the nature of the claim. Therefore, the Office considers that no claim under Article 7(3) EUTMR has been made and issues its decision on inherent distinctiveness only.

Outcome

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and (f) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 742 603 is hereby rejected in total.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Frank MANTEY