Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/09/2018

Giovanni ROSSI

strada Th.Sperantia 98, bl. s28, sc. C,ap. 66 Bucresti, Sector 3

Bucuresti

RUMANIA

Application No:	17 868 901
Your reference:
Trade mark:	LEGAL WEED
Mark type:	Figurative mark
Applicant:	Giovanni ROSSI strada Th.Sperantia 98, bl. s28, sc. C,ap. 66 Bucresti, Sector 3 Bucuresti RUMANIA

The Office raised an objection on 18/05/2018 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

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.

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).

Pursuant to Article 7(2) EUTMR, registration of a trade mark may be refused where an absolute ground for refusal exists in only part of the European Union. Since the word element of the sign applied for consists of a combination of the English words, the assessment of registrability is to be based on the English-speaking part of the relevant public of the European Union, which consists at least of the public in the United Kingdom, Ireland and Malta.

In the present case, the relevant English-speaking consumer would understand the sign, , as having the following meaning: tobacco or marijuana allowed/recognized by law.

The relevant consumers would perceive the sign as providing information with regard the goods, namely that they are tobacco, including in the form of medicines, or medical preparations and dietary supplements used for medical purposes that contain or are flavoured with cannabis and that are legal to use; the remaining goods are to be used in relation thereof. Therefore, the relevant consumer, notwithstanding certain figurative elements consisting of a cannabis leaf and the word combination ‘LEGAL WEED’ on a purple background, would perceive the sign as providing information about the kind, the main ingredient and intended purpose of the goods in question.

The Office maintains its opinion that the figurative trade mark applied for is not able to fulfil the essential function of a mark and that consumers, when encountering the sign applied for in relation to the goods objected to, will not be able to identify the goods as originating from a particular undertaking without prior knowledge and without more than minimal research.

Further, it is clear from Article 7(1) EUTMR that, for a sign to be ineligible for registration as a European Union trade mark, it is sufficient that one of the absolute grounds for refusal applies (26/10/2000, T‑360/99, Investorworld, EU:T:2000:247, § 26). A descriptive trade mark lacks any distinctive character and falls foul of Article 7(1)(b) EUTMR, because a descriptive word mark necessarily also lacks distinctiveness (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

For this reason, the sign applied for also must be refused under Article 7(1)(b) EUTMR.

As mentioned above, although the sign for which protection is sought contains certain figurative elements that confer upon it a degree of stylisation, the nature of these elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding

the way in which they are combined that allows the mark to fulfil its essential function

for the goods for which protection is sought. The sign will immediately be perceived as merely a simple combination of two English words describing characteristics of the goods objected to.

In addition, signs that are commonly used in connection with the marketing of the goods concerned are devoid of distinctive character. In the Notice of grounds for refusal dated 18/05/2018, the Office provided six results of an internet search that has revealed that the words in the mark are commonly used in the relevant market.

The applicant failed to submit observations within the time limit. For the reasons set out in the letter of objection, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for figurative European Union trade mark No 17 868 901 ‘LEGAL WEED’ 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.

Roxana PISLARU