Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/07/2018

ANTINGHAMS SOLICITORS

First Floor Offices

54-56 Bell Street

Henley-On-Thames Oxfordshire RG9 2BG

REINO UNIDO

Application No:	017867818
Your reference:	MAA/02968
Trade mark:	HYDRA FORMULA
Mark type:	Word mark
Applicant:	Migros-Genossenschafts-Bund Postfach 1766 CH-8005 Zürich SUIZA

The Office raised an objection on 26/03/2018 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 25/05/2018 which may be summarised as follows.

• The applicant does not agree that the word ‘HYDRA’ would automatically have the meaning provided by the Office, even to a Greek speaking person. The applicant points out different meanings of the term from the Merriam-Webster dictionary and affirms that it is most likely (if the term was understood at all by the relevant consumer) that the term might be taken to refer to the mythical monster of the Greek mythology.

• In most European languages ‘Hydro’ would be taken to refer to water. There is nothing to suggest that relevant consumers for the purposes of considering distinctiveness would understand the word ‘HYDRA’ as being immediately o even obviously referring to water – or that they would accordingly understand that the product to which the word was applied would contain water. As such, it cannot be said that the relevant consumer (which are consumers in the EU) would reach the conclusion that the mark was descriptive.

• As the term ‘HYDRA FORMULA’ is not descriptive of the goods applied for, it does not fail for being devoid of distinctive character.

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, namely for the following goods:

Class 3 Non-medicated preparations and products for use on and in connection with hair; preparations and lotions for protecting hair from heat; hair bleaching preparations; shampoos; conditioners; preparations for the care and beauty of the hair; hair waving and hair setting preparations; hair mousse; hair putty; hair gel; hair spray; hair wax; hair balm; preparations and lotions for colouring hair; preparations and lotions for dyeing and tinting the hair; preparations and lotions for bleaching the hair; shampoos and styling putties all having a colouring effect; hair sprays all having a colouring effect for use in styling the hair; dry shampoos; beauty care products; cosmetics; make-up; cosmetic preparations for the skin scalp and body; cosmetic creams; cosmetic lotions; cosmetic balms; cosmetic gels; solid powder for compacts; lipsticks; lip gloss; cotton wool balls and sticks for use in removing and applying cosmetics; preparations and products for removing make-up; make-up pads; make-up powder and foundation; facial wipes impregnated with cosmetics; paper hand towels impregnated with cosmetics; paper hand towels impregnated with cleaning agents; moist paper hand towels impregnated with a cosmetic lotion; moist paper hand towels impregnated with a cleaning agent; moisturisers; essential oils; ethereal essences; ethereal oils; after shave lotions; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; aromatherapy oils and preparations; cosmetic colorants; cosmetic kits; cosmetic and skin whitening creams; hair decolorants; hair colouring cosmetics; degreasing preparations; cosmetic dyes; lotions for cosmetic purposes; petroleum jelly for cosmetic purposes; eye make-up; paper guides for eye make-up; eyebrow cosmetics; eyebrow pencils; eyelashes; eyelash adhesives and cosmetic preparations for eyelashes; mascara; nail care preparations; nail enamel; nail polish; nail polish base coat; nail polish top coat; nail strengtheners; nail varnish; nail varnish remover; nail cream; cuticle cream; cuticle removal preparations; non-medicated toilet preparations; preparations for use in the shower and bath; bath creams; bath oils; bath lotions; bubble baths; bath salts; bubble bath; bath bombs; bath milks; soaps for personal use; soaps namely bars of soap and liquid soap; shower gels; shower creams; shower mousses; body butters; body creams; shower and bath foams; cleansing milk for toilet purposes; antiperspirants; deodorants for personal care; deodorant soap; face cream; face masks; body oil; body powder and facial scrubs; hand cream; hand and body lotions; shaving preparations; shaving foams; shaving gels; after shaves; cosmetic preparations for baths; depilatories; depilatory preparations; exfoliators; body scrubs; skin clarifier; wrinkle removing skin care preparations; dentifrices; breath freshening sprays; breath freshening strips; dental bleaching gels; non-medicated mouthwashes; artificial tanning preparations; sun care and sun tanning preparations; exfoliate gels; moisturising lotions; skin scrubs; tanning gels; tanning foams; tanning oils; sun screen; lip balms; bronzing powders; fade creams; instant self-tanning oils; tanning creams; tanning lotions; tanning mousse; tanning powders; gels and sprays creams for tanning the skin; after-sun preparations; after sun moisturisers; after sun milk; after sun creams; after sun lotions; sun block preparations; sun block sprays; sun block oils; sun block lotions; sun block cosmetics; sun block lipsticks; false hair (adhesives for affixing -); massage gels and oils other than for medical purposes; jasmine oil; lavender oil; lavender water.

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).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially. (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

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).

The mark at issue is composed of two terms, namely ‘HYDRA’ and ‘FORMULA’. The applicant has not submitted any observations about the definition of the term ‘FORMULA’ provided by the Office in the notification dated 26/03/2018. In relation to the term ‘HYDRA’, the Office defined it as follows:

Hydra is the transliteration in the Latin alphabet of the term ύδρα. Moreover,

Υδρ- is a prefix connotating water.

υδρ- [iδr], α. αναφέρεται στο νερό ( referring to water ); έχει ως κύριο

συστατικό του το νερό ( having water as main ingredient).

This information was extracted from the online Dictionary of Modern Greek. Therefore, the Office does not agree with the applicant’s assertion that the term ‘hydra’ is not related to water. Moreover, the objection was based on the perception of the expression ‘HYDRA FORMULA’ of the relevant consumer, in the present case, the Greek-speaking consumers. For these consumers, the expression applied for has a clear meaning in relation to the goods applied for.

Moreover, 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, emphasis added.). This is the case at issue, as it has been explained in the previous paragraph.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). This is not the case at issue, since the term ‘HYDRA’ preceeding the term ‘FORMULA’ simply reinforces and clarifies the meaning of the whole expression. In relation to the different kind of goods applied for in Class 3, it is difficult to conceive what impression the combination ‘HYDRA FORMULA’ would give to the Greek-speaking consumer of the contested goods other than goods contain a hydrating/moistening formula/substance. There is no element of fancifulness or any unusual combination of words that might require something of consumers, such as a grammatical analysis, before they would understand the meaning of the mark applied for in relation to the goods in question. Consequently, even if the expression ‘HYDRA FORMULA’ were grammatically or linguistically incorrect and could be considered novel – which is not the case – all the elements composing the mark would be understood by the relevant public. Therefore, the trade mark is not considered an unusual combination of words. Consequently, it would be difficult to conceive that the Greek-speaking public in the European Union would regard such a simple, meaningful combination as a trade mark rather than a word combination that describes the goods at issue.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

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 86 7818 is hereby rejected for the following goods:

Class 3 Non-medicated preparations and products for use on and in connection with hair; preparations and lotions for protecting hair from heat; hair bleaching preparations; shampoos; conditioners; preparations for the care and beauty of the hair; hair waving and hair setting preparations; hair mousse; hair putty; hair gel; hair spray; hair wax; hair balm; preparations and lotions for colouring hair; preparations and lotions for dyeing and tinting the hair; preparations and lotions for bleaching the hair; shampoos and styling putties all having a colouring effect; hair sprays all having a colouring effect for use in styling the hair; dry shampoos; beauty care products; cosmetics; make-up; cosmetic preparations for the skin scalp and body; cosmetic creams; cosmetic lotions; cosmetic balms; cosmetic gels; solid powder for compacts; lipsticks; lip gloss; cotton wool balls and sticks for use in removing and applying cosmetics; preparations and products for removing make-up; make-up pads; make-up powder and foundation; facial wipes impregnated with cosmetics; paper hand towels impregnated with cosmetics; paper hand towels impregnated with cleaning agents; moist paper hand towels impregnated with a cosmetic lotion; moist paper hand towels impregnated with a cleaning agent; moisturisers; essential oils; ethereal essences; ethereal oils; after shave lotions; beauty masks; bergamot oil; bleaching preparations [decolorants] for cosmetic purposes; aromatherapy oils and preparations; cosmetic colorants; cosmetic kits; cosmetic and skin whitening creams; hair decolorants; hair colouring cosmetics; degreasing preparations; cosmetic dyes; lotions for cosmetic purposes; petroleum jelly for cosmetic purposes; eye make-up; paper guides for eye make-up; eyebrow cosmetics; eyebrow pencils; eyelashes; eyelash adhesives and cosmetic preparations for eyelashes; mascara; nail care preparations; nail enamel; nail polish; nail polish base coat; nail polish top coat; nail strengtheners; nail varnish; nail varnish remover; nail cream; cuticle cream; cuticle removal preparations; non-medicated toilet preparations; preparations for use in the shower and bath; bath creams; bath oils; bath lotions; bubble baths; bath salts; bubble bath; bath bombs; bath milks; soaps for personal use; soaps namely bars of soap and liquid soap; shower gels; shower creams; shower mousses; body butters; body creams; shower and bath foams; cleansing milk for toilet purposes; antiperspirants; deodorants for personal care; deodorant soap; face cream; face masks; body oil; body powder and facial scrubs; hand cream; hand and body lotions; shaving preparations; shaving foams; shaving gels; after shaves; cosmetic preparations for baths; depilatories; depilatory preparations; exfoliators; body scrubs; skin clarifier; wrinkle removing skin care preparations; dentifrices; breath freshening sprays; breath freshening strips; dental bleaching gels; non-medicated mouthwashes; artificial tanning preparations; sun care and sun tanning preparations; exfoliate gels; moisturising lotions; skin scrubs; tanning gels; tanning foams; tanning oils; sun screen; lip balms; bronzing powders; fade creams; instant self-tanning oils; tanning creams; tanning lotions; tanning mousse; tanning powders; gels and sprays creams for tanning the skin; after-sun preparations; after sun moisturisers; after sun milk; after sun creams; after sun lotions; sun block preparations; sun block sprays; sun block oils; sun block lotions; sun block cosmetics; sun block lipsticks; false hair (adhesives for affixing -); massage gels and oils other than for medical purposes; jasmine oil; lavender oil; lavender water.

The application may proceed for the remaining goods.

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.

Ignacio IGLESIAS ARROYO