Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/04/2018

LINCOLN IP LIMITED

9 Victoria Street

Aberdeen, Aberdeenshire AB10 1XB

REINO UNIDO

Application No:	017565011
Your reference:	T1863EM
Trade mark:	MILKMASTER
Mark type:	Word mark
Applicant:	Kent Foods Limited Titanium 1, King's Inch Road Renfew Renfrewshire PA4 8WF REINO UNIDO

The Office raised an objection on January 10^th of 2018, 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 February 21th of 2018, which may be summarised as follows.

1. The expression ‘MASTER’, in the context of the dairy products for which protection was sought, is not commonly used, as they are not crafted goods.

2. The use of ‘MASTER’ as a suffix does not describe any quantifiable quality of the aforementioned goods. Moreover, it does not have a laudatory character, and, even if it did, that would not necessarily be a bar to registration.

3. The construction of the mark differs grammatically from what a member of the relevant public would normally expect indications of quality to be presented as. The construction of ‘noun pertaining to good + noun connoting a quality of the good’ represents a sharp deviation from the much more widely seen ‘adjective connoting quality of the good + noun pertaining to good’. Therefore, the expression ‘MILKMASTER’ would be seen as unusual by the relevant public.

4. The Office has approved marks with similar constructions, such as ‘SLOTMASTER’, ‘NEWS MASTER’ and ‘BOOKMASTER’. It is also pointed out the present mark was registered in the UKIPO.

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).

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; and 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 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

As for the first argument provided, the Office respectfully disagrees with the applicant. The dairy goods in question are not directly provided from the farm to the relevant consumer. A dairy chain is complex and involves production, transport, processing, packaging and storage, before purchase. All of these steps can be performed with a lesser or increased degree of expertise. For instance, the breed of cows milked has impact on the fat content of the milk, which, in turn, can affect the goods produced from that milk. Therefore, the Office holds that milk and dairy-based goods production and supply can be perfected or ‘mastered’. A brief internet search demonstrates that the concept of mastery is also applied to the listed goods:

1. Article “Understanding The Master of Milk – Willi Schmid” from the webpage Arrowine (information extracted on 09/03/2018 at https://www.arrowine.com/latest-offerings/cheese/understanding-the-master-of-milk-willi-schmid/ )

“Just like the different wine varietals, each breed’s milk tastes different and, therefore, some of his cheeses are only made with a certain breed’s milk, and often only a particular herd of that breed. This kind of attention to detail reminds me of great winemakers but, in the world of cheese, this practice is almost unheard of”.

2. Article “Chasing A Dream Built On Dairy, This Master Of Milk Came Home” from the webpage NPR (information extracted on 09/03/2018 at https://www.npr.org/sections/thesalt/2017/02/04/513091341/chasing-a-dream-built-on-dairy-this-emperor-of-milk-came-home )

“(…) McCloskey pushed the boundaries of milk quality, reducing levels of bacteria in milk far below what federal standards required. "We believed that the consumer really cared about that," he says.

“He did it by keeping cows healthier, and by chilling the milk immediately after it comes from the cows”.

It is also of importance that the concept of ‘artisanal’ is used to describe and advertise more and more foodstuff recently. Consuming ‘artisanal goods’ is an unmistakable trend, as they are believed to be tastier, fresher, healthier and saner than its industrialised counterparts, due to being handmade using traditional methods. This renewed interest goes hand in hand with the Slow Food movement, which is dedicated to supporting and celebrating food traditions, which requires skills from a maker/master with a combination of science and art derived from experience.

Therefore, the Office sustains its arguments based on the laudatory character transmitted by the use of the expression ‘MASTER’.

In regards to the second argument, the Office respectfully holds that it is irrelevant to the issues raised on the objection if ‘the expression ’MASTER’ does or does not indicate any quantifiable character of the goods in question. The objection clearly states that the issue at hand is that the aforementioned goods will be regarded as of a higher quality that those offered by competing outlets because they would be provided by an expert of the field, i.e., the ‘MILKMASTER’. Additionally, it must be stated that any laudatory statement made in relation to the any provider of goods and services is likely to be carried to the goods and services themselves, especially when that assessment communicates the concept of expertise in regards to that provider. We refer to a similar decision issued by the Board of Appeal:

“It is not necessary, in the Board’s opinion, to look for dictionary definitions in order to find out what the word ‘master’ brings to mind to the relevant consumer. The word immediately brings to mind to any reasonably observant consumer, even if he/she has only basic familiarity with the English language, positive notions of expertise and profound knowledge. This is not seriously disputed by the applicant and is confirmed, in any case, by the dictionary entries considered by the examiner”.

“It follows that each of the elements of the mark conveys, separately, specific information to the relevant consumer. The term ‘BIKE’ informs the consumer that the goods concern bikes and the term ‘MASTER’ indicates expertise. In the mind of a reasonably observant consumer, the notion of expertise and knowledge is immediately associated with that of professionalism: being a master in a specific field means being an expert, that is, having professional knowledge or capabilities in that field, as opposed to, say, an amateur. Being a master is, in everyday language, being the best. It may not be seriously disputed, therefore that the notions of expertise and professionalism that the word ‘master’ transmits will be immediately interpreted by reasonably observant consumers as a promotional message about high quality.

(09/02/2017, R 706/2016-1, BIKEMASTER)

As for the applicant’s considerations in regard to the alleged unusualness of the expression ‘MILKMASTER’, the Office again begs to differ. The message conveyed by the expression MILKMASTER is very clear, and does not require any mental effort from the relevant consumer to be understood without any misinterpretations. While it is true that the Vorsprung durch Technik judgment did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because of the fact that they are promotional formulas. In paragraph 45 of that judgment, the ECJ stated that:

“in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character” (Emphasis added).

(21/01/2010, C 398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45).

This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive, which the Office reaffirms it will not be the case, as the sign in question merely informs of its grand standing due to its making by a ‘MILKMASTER’.

As for the affirmation that the Office has registered other similar marks, like ‘SLOTMASTER’, ‘NEWS MASTER’ and ‘BOOKMASTER’, 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; and 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).

Finally, regarding the applicant’s registered trade marks before the US Patents and Trademarks Office, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 565 011 is hereby rejected for all the goods claimed.

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.

Christiano DOS SANTOS TIMBO