Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/04/2019

WHITE LOTUS ANTI AGING Ltd

483 Green Lanes

London London, City of N13 4BS

REINO UNIDO

Application No:	017899908
Your reference:
Trade mark:	white lotus
Mark type:	Word mark
Applicant:	WHITE LOTUS ANTI AGING Ltd 483 Green Lanes London London, City of N13 4BS REINO UNIDO

The Office raised an objection on 23/05/2019 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 20/07/2018, which may be summarised as follows.

1. The trademark WHITE LOTUS ANTI AGING was registered on 26/09/2011 by the EUIPO.

2. The Applicant highlights that the main element of the logo design is the phrase “White Lotus”

3. The Applicant does not agree with the examiner’s statement that “…the relevant consumers would perceive the sign as providing information that the objected goods have the extract of the white lotus flowers as its ingredients and/or that they have scent of white lotus flower. Therefore, the sign describes the kind, quality and intended purpose of the objected goods”

4. The Applicant claims that labelling of cosmetic products is regulated at European level to ensure consumer safety and to secure an internal market for cosmetics.

5. The Applicant argues that International Nomenclature Cosmetic Ingredients are names internationally recognized to identify cosmetic ingredients which are developed by the International Nomenclature Committee (INC) and published in the International Cosmetic Ingredient Dictionary and Handbook.

6. The Applicant claims that Article 7(1)(c) EUTMR does not apply to the case at hand as the terms “WHITE LOTUS” are allusive, suggestive and/or vague, as regards certain characteristics of the goods in question.

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)(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).

As regards the applicant’s first line of argument that the trademark WHITE LOTUS ANTI AGING has been registered by the EUIPO on 26/09/2011, 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).

As regards the Applicant’s argument that the main element of the logo design is the phrase “White Lotus”, the Office does not dispute this argument, but recalls that the sign that falls under the grounds for refusal established under Article 7 EUTMR, is the word mark “White Lotus” and not a figurative mark, which may contain sufficient figurative and/or stylised elements to enable the mark to fulfil its principal function of commercial origin. Therefore, in the Office’s view, this argument is not relevant for the case at hand.

As regards the Applicant’s argument that he does not agree with the examiner’s statement that:

“…the relevant consumers would perceive the sign as providing information that the objected goods have the extract of the white lotus flowers as its ingredients and/or that they have scent of white lotus flower. Therefore, the sign describes the kind, quality and intended purpose of the objected goods”

it must be noted that the Office has demonstrated in its notification of 23/05/2018, that the relevant consumer, in this case the English-speaking consumer in the European Union would understand the sign as having the following meaning : any of several water lilies of the genus Nymphaea. In relation to the objected goods, the Office is convinced that the relevant consumer would perceive the sign as providing information that they have all the extract of the white lotus flower as its ingredient and/or that they have the scent of white lotus flowers. It follows that the sign describe certain characteristics of the goods in question, namely the kind, the quality and intended purpose of the goods in question.

Furthermore, it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

As regards the Applicant’s further arguments regarding the labelling of cosmetic products and the reference to the International Nomenclature Committee (INC), the Office does not dispute these arguments. The Office is aware that labelling of cosmetic products is regulated at European level to ensure consumer safety and to secure and internal market for cosmetics. Nevertheless, these arguments are in the Office’s view not relevant for the case at hand.

As regards the Applicant’s argument that Article 7(1)(c) EUTMR is not applicable to the case at issue as the terms “White Lotus” are allusive, suggestive and/or vague as regards certain characteristics of the goods in question, the Office respectfully does not share this argument. Indeed, the Office has demonstrated in its first notification of grounds for refusal of 23/05/2018 and in the current decision that the sign “white lotus” is ineligible for registration under Article 7(1)(b) and (c) and Article 7(2) EUTMR, because it describes certain characteristics of the goods for which protection is sought and that it is also devoid of any distinctive character. Therefore the Office is in view, that the sign is not allusive, neither suggestive nor vague as regards certain characteristics of the objected goods in question.

Therefore, the trade mark applied for is, prima facie, devoid of any distinctive character to distinguish the goods for which registration is sought within the meaning of article 7 (1)(b) and (c) EUTMR.

In addition to the abovementioned arguments, in the reply to the Office’s objection letter of 23/05/2018, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. You also indicated that this claim was meant as a primary claim.

It is therefore necessary to establish whether in this case, Article 7(3) of the EUTMR is applicable.

In this regard, the Office underlines that under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

In your claim, you indicate that the trade mark applied for has acquired distinctiveness and began to have additional value because of the use of the “white lotus” logo throughout 2009-2018 in relation to the objected goods. The Office points out that the evidence should show the acquired distinctiveness of the sign at issue and not the assumption of acquired distinctiveness based on the use of other figurative marks, even if these marks include the phrase “white lotus”. Therefore, the Office cannot take this argument into consideration for the case at hand.

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 017899908 is hereby rejected for the following goods:

Class 3 Anti-aging creams; Anti-aging creams [for cosmetic use]; Anti-wrinkle creams; Cosmetic products for the shower; Beauty creams; Skin care mousse; Skin care preparations; Skin care oils [cosmetic]; Essences for skin care; Skin care creams [cosmetic]; Skin care lotions [cosmetic]; Skin care oils [non-medicated]; Perfumed oils for skin care; Hand masks for skin care; Foot masks for skin care; Hair sprays; Beauty serums; Non-medicated soaps; Synthetic perfumery; Natural perfumery; Perfumery and fragrances; Perfumery, essential oils; Body deodorants [perfumery]; Essential oils; Terpenes [essential oils]; Aromatics [essential oils]; Essential vegetable oils; Essential oils for aromatherapy; Essential oils for personal use; Essential oils for household use; Non-medicated hair lotions; Non-medicated dentifrices.

Class 5 Herbal supplements; Nutritional supplements; Dietary supplements; Homeopathic supplements; Vitamin supplements.

The application will proceed for the remaining goods and services.

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.

Soledad PALACIO MONTILLA