Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 21/12/2017

Martyna Majewska

SWC Group sp. z o.o.

Hoza 5/7 apt 28

00-528 Warsaw

POLONIA

Application No:	17 300 203
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Laboratorium Kosmetyczne Joanna Bogusław Górka, Ryszard Korczak Sp. J. ul. Gen. J. Zajączka 11/C2 01-510 Warszawa POLONIA

The Office raised an objection on 20/10/2017 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 the attached letter.

The applicant submitted its observations on 20/12/2017, which may be summarised as follows:

1. Distinctive character/stylized elements of the mark

2. Applicant´s products and the relevant public

3. The verbal element ‘COLOR’ of the sign

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.

1. Distinctive character/stylized elements of the mark

General remarks

Article 7(1)(c) EUTMR

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).

Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Applicant´s remarks

The applicant contended that the graphical side of the sign (the stylized letters) is a dominant element of the trade mark and therefore it has distinctive character.

Office´s remarks

The Office still maintains its position that for the relevant public, the verbal elements of the sign at issue

would be perceived as straightforwardly descriptive of the kind, quality and intended purpose of the goods in question, namely that these are hair spray colorants for dying your hair. The mere ‘addition’ of a single colour, in casu red, to descriptive and non-distinctive word elements/to the letters themselves will not be sufficient to give the mark distinctive character.

2. Applicant´s products and the relevant public

Applicant´s remarks

The applicant contended that its products are well-known and sold in the European Union. The relevant public has the ability to distinguish the applicant´s products from those of its competitors.

Office´s remarks

The Office acknowledges that the applicant´s products may be well-known and may be sold in the European Union. However, the distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods 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).

The goods to which this objection applies are:

Class 3 Hair colourants; hair spray; hair sprays.

In the present case, the objectionable goods covered by the mark applied for are mass consumption goods and are mainly aimed at 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.

Therefore, the Office is of the position that the relevant public will perceive the sign:

as directly descriptive of the kind and quality of the goods applied for in Class 3, namely hair sprays and hair colourants.

3. The verbal element ‘COLOR’ of the sign

Applicant´s remarks

The applicant contended that the word ‘COLOR’ contained in the sign at issue is commonly used in the cosmetic industry as it mainly represents hair products such as hair colorants, shampoos, lotions, etc.

Office´s remarks

The Office does agree with the applicant that the word ‘COLOR‘ may well be commonly used in the cosmetic industry - designating a sub-category, namely the colour cosmetics industry - to represent hair products such as hair colorants. Therefore, the Office also reaches the conclusion that the sign at issue:

• seen as a whole - is descriptive and devoid of any character and therefore not capable of distinguishing the goods to which an objection has been raised under art. 7(1)(b) and (c) and art. 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 300 203 is hereby rejected for all the goods claimed, namely:

Class 3 Hair colourants; hair spray; hair sprays.

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.

Finn PEDERSEN