Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/10/2018

Fieldfisher (Germany) LLP

Am Sandtorkai 68

D-20457 Hamburg

ALEMANIA

Application No:	17 911 821
Your reference:	67429.00003
Trade mark:	WOOL CREAM
Mark type:	Word mark
Applicant:	LanEsters GmbH Parkallee 22 D-21521 Wohltorf ALEMANIA

The Office raised an objection on 04/07/2018 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 30/08/2018, which may be summarised as follows:

1. The mark applied for does not fall under the grounds for refusal of Article 7 EUTMR, in particular not of Article 7(1)(b) and (c) or Article 7(2) EUTMR. The word combination ‘WOOL CREAM’ has relevant distinctiveness per se and is not purely descriptive for the goods of the application. The term ‘WOOL CREAM’ is sufficiently distinctive, not purely descriptive, and thus does not need to be kept freely available in trade. In addition, this word combination is used in different fields and for different types of products.

2. The applicant does not contest that the relevant consumer in this case is the English-speaking consumer, but disagrees that the relevant consumer will clearly understand the word combination ‘WOOL CREAM’ in relation to the goods and services of the application as purely descriptive and as a product descriptor.

3. The applicant doubts that the average consumer will immediately be able to understand the meaning of ‘WOOL CREAM’ in relation to the various goods in Class 3 and argues that, hearing the word ‘WOOL’, the average consumer will instead think of products made of wool or even cashmere, for example clothing and knitwear, but also pillows and blankets or even bath rugs, etc.

4. Further, the applicant argues that, even if the meaning of the word ‘CREAM’ may be quite clear to the consumer, its combination with the word ‘WOOL’ is very unusual, and only a very small percentage of consumers might understand that wool wax or lanolin from sheep can be used as an ingredient in cream. The applicant questions whether a high percentage or even the majority of average consumers buying goods in Class 3 would immediately and clearly understand that ‘WOOL CREAM’ describes a cream product produced with or containing wool.

5. The applicant submits also that, conducting an internet search via Google and searching for ‘WOOL CREAM’, the first hits refer to wool products (clothing), wool and cashmere articles and wool in general. Additionally, an Amazon search for ‘WOOL CREAM’ links to a page with pillows, and not with cosmetic products, soaps, or hair care preparations (Annex 1). A Bing image search shows photos of different kinds of rugs, and not of Class 3 goods (Annex 2).

6. The applicant also submitted that, before filing the present application, it had searched against the name ‘WOOL’ and ‘WOOL CREAM’, and found German trade mark No 302 016 018 554 ‘Wool’, registered on 15 September 2016, also for goods in Class 3 (Annex 3), and German trade mark No 302 011 022 631 ‘WOOLMARK’ (Annex 4), registered, inter alia, for goods in Class 3. It argued that this showed that the word ‘wool’ was registrable, for example for cosmetics in Class 3.

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).

The Office does not agree that the mark applied for does not fall under the grounds for refusal of Article 7(1)(b) and (c) and Article 7(2) EUTMR, or that the word combination ‘WOOL CREAM’ is distinctive and not purely descriptive for the goods claimed.

As regards the statement that, since the term ‘WOOL CREAM’ is sufficiently distinctive and not purely descriptive and thus does not need to be kept freely available in trade, it should be pointed out that only indications that are directly descriptive are excluded from registration pursuant to Article 7(1)(c) EUTMR. In this respect, the sign in question does not necessarily need to be known already as a descriptive indication; it is instead enough for this to be reasonably expected in the future. Therefore, the examiner does not have to demonstrate that the sign applied for is commonly used in business communications and, in particular, in advertising (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46).

The applicant argues that the word combination claimed is used in different fields and for different types of products. Further, the applicant does not contest that the relevant consumer in this case is the English-speaking consumer. However, it disagrees that the relevant consumer will clearly understand the word combination ‘WOOL CREAM’ in relation to the goods and services of the application as purely descriptive and as a product descriptor.

The Office partially concurs with the above statements because, as shown in the notice of grounds for refusal of 04/07/2017, the words ‘WOOL CREAM’ or ‘wool’ in connection with the goods for which protection is sought are commonly used in the relevant market (6 internet hits). In addition, a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 30-31; 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32), which is clearly applicable in this case.

As regards the applicant’s arguments that the average consumer would not be immediately able to understand the meaning of ‘WOOL CREAM’ in relation to the various goods in Class 3; that, when hearing the word ‘WOOL’, the average consumer would instead think of products made of wool or even cashmere, for example clothing and knitwear, but also pillows and blankets or even bath rugs, etc.; that, even if the meaning of the word ‘CREAM’ might be quite clear to the consumer, the combination with the word ‘WOOL’ was very unusual and only a very small percentage of consumers might understand that wool wax or lanolin from sheep can be used as an ingredient in cream, the Office points out that the examination has been based on the overall perception of the trade mark by the relevant public.

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications that may serve, in trade, to designate characteristics of the goods or services concerned. However, such a combination may not be descriptive within the meaning of Article 7(1)(c) EUTMR, provided that it creates an impression that is sufficiently far removed from that produced by the simple combination of those elements. Indeed, the mere fact that each of those elements, considered separately, is descriptive of characteristics of the goods and services does not mean that their combination cannot present such character (12.02.2004, C‑265/00, Biomild, EU:C:2004:87, § 40-41; 12.02.2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99-100; 16.09.2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 28; 15.09.2005, C‑37/03 P, BioID, EU:C:2005:547, § 29).

The goods and services concerned are mainly non-medicated toiletry preparations (body cleaning and beauty care preparations, including cosmetics, make-up, soaps and gels, bath preparations, skin, eye, lip and nail care preparations, hair preparations and treatments, toiletries) and retail and wholesale services including online in relation [there]to, as well as advertising, marketing and promotional services for all aforementioned services.

As the trade mark ‘WOOL CREAM’ applied for is made up of two English words, ‘WOOL’ and ‘CREAM’, it is to be assumed that the relevant public consists of consumers who speak English or at least have sufficient knowledge of English, namely, in the present case, knowledge of the basic English technical vocabulary (11/06/2009, T‑132/08, MaxiBridge, EU:T:2009:200, § 34).

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).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

The trade mark applied for consists of two English words, combined in a grammatically correct manner.

The applicant did not contest the definitions given in the notice of grounds for refusal from the Collins English Dictionary for the words ‘CREAM’ (‘a substance that you rub into your skin, for example to keep it soft or to heal or protect it’) and ‘WOOL’ (‘the hair that grows on sheep and on some other animals’), but argued that, when hearing the word ‘WOOL’, the average consumer would be inclined to think of products made of wool or even cashmere, for example clothing, knitwear, but also pillows and blankets or even bath rugs, etc. It further argued that, even if the meaning of the word ‘CREAM’ might be quite clear to the consumer, the combination with the word ‘WOOL’ was very unusual and only a very small percentage of consumers might understand that wool wax or lanolin from sheep can be used as an ingredient in cream.

The words are presented in a sequence that is intellectually meaningful. Therefore, based on the dictionary definitions, there is no doubt that English-speaking consumers will perceive it not as unusual, but rather as a meaningful sign, namely a cream produced from a by-product of wool or using wool. Furthermore, in connection with the goods and services for which protection is sought, the relevant consumers would perceive the sign as providing information that the goods have a creamy texture or are obtained from wool, and that the services are in connection therewith. Therefore, the sign describes the kind of the goods and retail of such goods.

Based on the above and on the internet search results presented in the notice of grounds for refusal, while it might be true that, when hearing the word ‘WOOL’, the average consumer will be inclined to think of products made of wool or even cashmere, for example clothing and knitwear, but also pillows and blankets, or even bath rugs, etc., the Office refutes the applicant’s argument that the combination of ‘CREAM’ and ‘WOOL’ is very unusual and that only a very small percentage of consumers might understand that wool wax or lanolin from sheep can be used as an ingredient in cream. Given this, the message expressed by the sign will be clear, direct and immediate to the relevant English-speaking public and, in relation to the goods and services to which an objection has been raised, is not vague or ambiguous in any way, does not lend itself to different interpretations, and will not be perceived as unusual or akin to an allusive fanciful sign.

With regard to the applicant’s doubt that a high percentage or even the majority of average consumers buying goods in Class 3 would immediately and clearly understand that ‘WOOL CREAM’ described a cream product produced with or containing wool, it should be pointed out that a mark can be refused registration on the basis of Article 7(1)(c) EUTMR if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of the characteristics of the goods or services.

However, the Office cannot concur with the argument that, when buying goods in Class 3, the relevant consumers will not immediately and clearly understand that ‘WOOL CREAM’ describes a cream product produced with or containing wool; that the sign applied for does not have any precise content or any direct association with the goods and services to which an objection has been raised; and that, encountering it placed on such goods, the relevant consumer would perceive it as designating their commercial origin.

The Office maintains its opinion that, in relation to the goods and services to which an objection has been raised, English-speaking consumers will perceive the mark not as unusual, but rather as a meaningful sign. It considers that ‘WOOL CREAM’ is sufficiently descriptive to enable the relevant consumer to immediately understand the mark as referring to goods with a creamy texture, goods obtained from wool or services in connection therewith.

In addition, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

Consequently, the Office fails to see why the mark ‘WOOL CREAM’ would be a neologism or why it would otherwise be more than the sum of its parts. The mark is not striking, as it simply combines the meanings of the elements of which it is composed.

As regards the applicant’s argument that, when conducting an internet search via Google and searching for ‘WOOL CREAM’, the first hits refer to wool products (clothing), wool and cashmere articles and wool in general, the Amazon search for ‘WOOL CREAM’ links to a page with pillows, but not cosmetic products, soaps or hair care preparations, and a Bing image search shows photos of different kinds of rugs, but not of Class 3 goods, the Office reiterates that 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).

In addition, in the notice of grounds for refusal of 04/07/2017, the Office has proved that the words ‘WOOL CREAM’ or ‘wool’ in connection with the goods applied for are already commonly used in the relevant market.

With regard to the applicant’s submission that, before filing the present application, the applicant searched for the name ‘WOOL’ and ‘WOOL CREAM’, and found German trade mark No 302 016 018 554 ‘Wool’, registered on 15 September 2016, also for goods in Class 3, and German trade mark No 302 011 022 631 ‘WOOLMARK’, registered, inter alia, for goods in Class 3, it should be noted that 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).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

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 17 911 821 ‘WOOL CREAM’ is hereby rejected for all the goods and services 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