Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 22/12/2017

Pierre-Yves Thoumsin

Place Stéphanie 6

B-1050 Bruxelles

BÉLGICA

Application No:	017182007
Your reference:
Trade mark:	Optim D3 Vegan
Mark type:	Word mark
Applicant:	Bionoto Rue du Canada 9 B-1190 Bruxelles BÉLGICA

The Office raised an objection on 12/09/2017 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 13/10/2017, which may be summarised as follows:

1. This combination of words is unusual and original; it is a striking expression. The applicant refers to the Audi case, in which the Court ruled that a laudatory slogan was eligible for trade mark registration.

2. The mark applied for is also easily remembered because it uses non-standard typefaces for the letter ‘O’. This letter appears throughout the applicant’s marketing material. Therefore, the mark applied for has distinctive character.

3. The applicant argues that goods in Class 5 are nutritional supplements to which the relevant public pays a relatively high degree of attention, insofar as these products affect health.

4. Several EUTMs containing similar names have been registered and some allowed by decisions of the Boards of Appeal or the Court, namely EUTM No 857 441, EUTM No 10 841 385, EUTM No 8 145 633 and may others. The applicant mentions the decision of the General Court (30/11/2011, T-123/10, Paul Hartman AG/EUIPO) in which the sign ‘COMPLETE’ was deemed eligible as a trade mark for goods in Class 5.

5. The applicant submits a list of 390 local points of sale of its goods in Class 5. Furthermore, the applicant mentions two websites, specifically in Romania, where the products are sold, and mentions a rapidly growing market for them.

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.

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

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).

In response to point 1) The Office has examined the list of goods in relation to the mark applied for and its meaning. 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, Tabs (3D), EU:T:2001:226, § 59). There is no element of fancifulness or any unusual combination of words in the mark applied for that might require some effort, such as linguistic analysis, on the part of consumers to enable them to understand its meaning in relation to the goods in question. In the present case, although it might be uncommon to use the expression ‘Optim D3 Vegan’ as a whole in relation to the goods for which registration is sought, the individual elements that constitute the mark ‘Optim D3 Vegan’ are connected to the goods for which registration is sought. Furthermore, as regarding the Audi case the trade mark is different and is for a different list of goods; therefore the comparison cannot be made.

In response to point 2) The sign for which registration is sought has been applied for as the individual word mark ‘Optim D3 Vegan’ and has to be assessed as such. In word marks there are no special characters and letters, or special typfaces. Therefore, the applicant’s argument is not relevant.

In response to point 3) In view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24). It must be held that the fact that the relevant public is a specialist one 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).

In response to point 4) 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 to the mark applied for.

As regards the trade mark ‘COMPLETE’, there are several similar marks that have been refused by the Office. Furthermore, each assessment has to be made individually and in relation to the list of goods and services and the current practice of the Office. In this case, the trade marks and the lists of goods are different; therefore, the comparison cannot be made.

In response to point 5) In addition to the abovementioned arguments, in the reply to the Office’s objection letter of 13/10/2017, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. In your claim, the applicant indicates that the trade mark applied for has acquired distinctiveness through use in relation to goods for which registration is sought. In support of your claim, the applicant submitted evidence of use, in particular, a list of 390 local points of sale in Belgium, Spain, the Netherlands, Romania, Italy and Greece. Furthermore, the applicant submitted links to two websites in Romania where the products in Class 5 can be found.

The Office carefully studied the information submitted such as the websites cited and the list of local points of sale where the goods for which registration is sought are sold. The Office has concluded that the applicant did not provide sufficient information to show the extent of exposure of the mark applied for in the European Union and did not prove that the mark has become distinctive. The final outcome depends on the overall assessment of the evidence in the particular case. The Office cannot accept that the mark has acquired distinctiveness through use. The Office highlights that, according to the General Court (12/09/2007, T-141/06, Glaverbel SA, §  41), a distinction must be made between ‘direct proof’ of acquisition of distinctive character (surveys, evidence of the market share held by the mark, statements from Chambers of Commerce and Industry or other trade and professional associations) and ‘secondary evidence’ (sales volumes and advertising material, duration of use) that are merely indicative of the mark’s recognition on the market. Although secondary evidence may serve to corroborate direct proof, it cannot substitute it. The Office is of the opinion that the applicant did not provide any direct proof of use in the Romanian- speaking territory of the European Union.

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 182 007 is hereby rejected for all the goods claimed:

Class 5 Dietary supplements and dietetic preparations; Dietary supplements for humans not for medical purposes; Dietary supplements for humans; Dietary supplements consisting of vitamins; Dietary and nutritional supplements; Dietary supplements for infants; Food supplements; Liquid herbal supplements; Liquid vitamin supplements; Neutraceutical preparations for humans; Nutraceuticals for use as a dietary supplement; Nutritional supplements; Vitamin D preparations; Vitamin and mineral supplements; Vitamin drops; Vitamin preparations; Vitamin preparations in the nature of food supplements; Vitamin supplements; Vitamin tablets; Vitamins and vitamin preparations.

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.

Petra CHARUZOVÁ

Enclosure: 3 pages