Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2019

LANE IP LIMITED

The Forum, St Paul’s

33 Gutter Lane

London EC2V 8AS

REINO UNIDO

Application No:	018011613
Your reference:	0321.1438
Trade mark:	JEWEL LIPS
Mark type:	Word mark
Applicant:	Islestarr Holdings Limited Unit 5, 50 Brook Green, Hammersmith London W6 7BJ REINO UNIDO

The Office raised an objection on 04/03/2019 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 04/07/2019, within the time limit of the first extension, which may be summarised as follows.

1. Registration of a sign as a trade mark is not subject to a finding of a specific level or linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark.

2. It is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character, as case-law states that advertising slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public perceives them as a mere promotional formula (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460).

3. The mark ‘JEWEL LIPS’ does have the minimum level of distinctiveness required to function as a trade mark in relation to the goods and services for which protection has been sought.

4. The applicant submits that the mark in question could therefore only be descriptive if the application covered ‘jewellery’ or ‘body piercings’ in Class 14. In this case however, the mark only covers Classes 3 and 44.

5. The consumer is more likely to associate jewellery with other parts of the body, for instance bracelets, which are for the wrist, necklaces for the neck and earrings for the ears. The only jewellery specifically made for lips are lip piercings, and these are quite uncommon due to their alternative nature. ‘A piece of jewellery on the lips’ is an ambiguous notion that does not convey a clear and obvious meaning to the consumer, meaning that the mark in question must have the minimum level of distinctiveness required in order to function as a trade mark.

6. The applicant contends that the definition provided by the examiner is entirely unrelated to the goods and services at issue, meaning the mark in question must act as a badge of origin.

7. The applicant contends that breaking the mark down into its component pieces is not what the average consumer would do as the inherent distinctiveness lies in the combination of the words and the mark in its entirety.

8. When the word ‘jewel’ is placed before the word ‘lips’, it can also be interpreted as an adjective that means ‘jewel-like’, rather than a noun that means ‘jewellery’.

9. The applicant’s brand is upmarket and therefore cannot be bought in ordinary high-street makeup retailers; it is only available from boutique shops and high-end department stores such as Selfridges. The relevant public are therefore more circumspect than the average consumer, which is why the applicant has in-house beauty consultants.

10. The applicant submits that the mark at issue must be distinctive in relation to the objected goods and services, as other highly similar terms have been accepted.

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.

General remarks on Article 7(1)(b) and (c) and Article 7(2) EUTMR

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user, by enabling him or her, without any possibility of confusion, to distinguish the product or service from others that have another origin (23/05/1978, C‑102/77, Hoffmann-La Roche v Centrafarm, EU:C:1978:108; 18/06/2002, C‑299/99, Remington, EU:C:2002:377).

The marks referred to in Article 7(1)(c) EUTMR are trade marks that consist exclusively of signs or indications that 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 services, or other characteristics of the goods or services.

The refusal of a trade mark as being descriptive is already justified if, for the relevant public, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services for which protection is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43). Furthermore, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient that they are capable of being used as such.

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign at issue, whether, from the point of view of the relevant public, there is a sufficiently direct and specific association between the sign and the categories of goods for which registration is sought. A sign’s descriptiveness can only be assessed by reference to the goods or services in question, and by the way in which it is understood by a specific, relevant public (20/03/2002, T‑356/00, Carcard, EU:T:2002:80).

Article 7(1)(b) EUTMR precludes registration of trade marks that are devoid of distinctive character, which alone renders them capable of fulfilling that essential function (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

The question that must be asked when applying Article 7(1)(b) EUTMR is how the sign applied for will be perceived by typical consumers in relation to the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301; 09/07/2008, T‑58/07, Substance for success, EU:T:2008:269).

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).

A word mark that is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) must apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

The mark applied for, ‘JEWEL LIPS’, is composed of English words. Therefore, the examination of the absolute grounds for refusal will be based on the English-speaking public in the European Union. The public by reference to whom the absolute ground of refusal must be assessed consists of at least the public in the Member States in which English is the official language, that is Ireland, Malta and the United Kingdom.

As to the applicant’s arguments

With regard to the applicant’s claim that the mark enjoys the minimum degree of distinctive character, the Office would point out that the fact that a sign is, in general, capable of constituting a trade mark within the meaning of Article 4 EUTMR does not mean that this sign necessarily has distinctive character for the purpose of Article 7(1)(b) EUTMR, in relation to a specific product or service (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), EU:C:2004:258, § 32).

A minimum degree of distinctive character of the mark is sufficient, provided that the public perceives a trade mark as an indication of commercial origin, irrespective of whether the trade mark also has other functions. It cannot be interpreted as suggesting that any word/phrase/slogan, however descriptive or banal, can be registered as a trade mark.

When assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

Taking into account the abovementioned principle, the Office provided definitions of both words composing the sign ‘JEWEL LIPS’ in the notice of grounds for refusal of 04/03/2019. Accordingly, it was established that the relevant consumer will understand the sign as having the meaning that the goods in Class 3 are lip makeup products specifically made for lips in order to create an effect of jewelled lips — lips decorated/covered with jewels. Similarly, the services in Class 44 would be perceived as services which provide lip makeup by applying jewels on the lip.

Furthermore, a mark consisting of a neologism remains descriptive if each of the word elements of which it consists is descriptive on its own and if the combination of those elements is not more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41). Merely bringing two descriptive word 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, regardless of whether the word combination as such is also referenced in dictionaries (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 39, 43).

The Office agrees that the sign ‘JEWEL LIPS’ may have several meanings or may be interpreted differently. However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, a sign must 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).

It also follows from the wording of the provision of Article 7 EUTMR that Article 7(1)(c) EUTMR is not limited to indications that inform about the type or kind of the goods or services. Article 7(1)(c) EUTMR also covers the purpose in the sense of what the goods are meant to be used for, or any other characteristics. Article 7(1)(c) EUTMR does not require that these characteristics be commercially essential for the product. In light of the public interest underlying the provision, any undertaking must be able to freely use such signs and indications to describe any characteristic 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).

The applicant claims that the sign in question is ambiguous and does not convey a clear and obvious meaning to the consumer. However, for a mark to fall under the prohibition of Article 7(1)(c) EUTMR, it is not necessary that the characteristics of the goods or services are described in full detail and in a comprehensive way. Therefore, a sign does not become ‘vague’ or ‘merely allusive’, merely because it does not provide a full and comprehensive description of the characteristics of the goods or services or their operating mode. Rather, for a sign to be refused registration under Article 7(1)(c) EUTMR, what is essential is whether or not it contains an unequivocal message serving to identify a characteristic of the goods or services in question and that the sign can be used for descriptive purposes (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 97). The unequivocal message — a piece of jewellery on lips — is clear in the present case. Therefore, the applicant’s arguments that jewellery is not often associated with the lips is not decisive when assessing the sign applied for under Article 7(1)(c) EUTMR.

The applicant further contends that the only jewellery specifically made for lips is lip piercings and these are quite uncommon due to their alternative nature. The Office, however, cannot agree with this argument. In the notice of grounds for refusal, the Office provided the applicant with the internet search that confirmed usage of the term in the relevant beauty market.

Furthermore, the distinctive character of a trade mark must be assessed, first, in relation to the goods and services for which protection is sought, and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods and services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29). It follows that the consumer does not perceive the mark in a void, but rather in relation to the goods and services to which it is applied. As such, the context of the goods and services provides a significant interpretative aid as to how consumers will perceive the contested mark. The main aim of the cosmetic for colouring the lips (the contested goods) is, inter alia, to make the lips brightly coloured. Therefore, when seeing the meaningful phrase ‘JEWEL LIPS’ used in the context of cosmetics, make up; lipsticks; lip gloss; beauty care preparations, body care preparations, preparations and products for removing make-up; adhesives for cosmetic purposes; balms other than for medical purposes; make-up preparations; make-up removing preparations; pencils (cosmetic -), the relevant public will immediately understand that the goods are specifically made for lips in order to create an effect of jewelled lips - lips decorated/covered with jewels or shimmering like jewels.

Similarly, the services in Class 44 would be perceived as services that provide lip makeup by applying jewels on the lip. 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

It follows that the link between the sign ‘JEWEL LIPS’ and the goods and services for which protection is sought is sufficiently close for the sign to fall within the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR.

As regards the relevant public, contrary to the applicant’s view, the goods and services target the average consumer, who is reasonably well informed, observant and circumspect, and would display a normal degree of attention. The description of the goods and services in the application does not indicate that the goods and services would only target consumers of luxury goods (14/09/2009, T‑152/07, Uhr, EU:T:2009:324, § 87). The distinctiveness of the mark at issue must therefore be assessed in respect of all the goods and services for which protection of that mark has been claimed, taking into account the presumed expectations of an average consumer who does not display a particularly high level of attention (29/09/2009, T‑139/08, Smiley, EU:T:2009:364, § 20).

The applicant has further argued that registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. The Office can only agree with this argument. However, a mark that, as in the present case, does not possess any originality or resonance requiring at least some interpretation by the relevant public, and that would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the goods at issue to the consumers or end users by enabling them, without any possibility of confusion, to distinguish these goods from others which have a different origin. The simple juxtaposition of two easily recognisable elements is not capable of creating an overall impression that is sufficiently far removed from that produced by the combination of meanings lent by the elements of which it is composed with the result that the meaning of the overall term created is more than the sum of its parts (15/05/2014, T‑366/12, YoghurT‑Gums (fig.), EU:T:2014:256, § 16; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 96, 104; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37, 43).

The applicant also referred to two cases (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29; 12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460) that state that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character. However, from a close inspection of the notification of provisional refusal of protection it is clear that the Office did not consider the sign to be a slogan. Thus, the Office considers the reference to the abovementioned judgments to be unrelated to the present case.

Lastly, the applicant refers to other highly similar trade marks, but without further specifying those trade marks. The Office notes that those trade marks are not at issue in the present proceedings and the applicant cannot successfully rely on other registered EU trade marks. Every trade mark is assessed on its own merits and the final assessment is based on specific grounds in every particular case.

Moreover, 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).

Therefore, the applicant has not succeeded in convincing the Office that the sign ‘JEWEL LIPS’ will be perceived by consumers as identifying the commercial origin of the goods and services in question. The Office maintains that the relevant public cannot perceive the mark other than in its descriptive sense.

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 18 011 613 is hereby rejected for the following goods and services:

Class 3 Cosmetics, make up; lipsticks; lip gloss; beauty care preparations, body care preparations, preparations and products for removing make-up; adhesives for cosmetic purposes; balms other than for medical purposes; make-up preparations; make-up removing preparations; pencils (cosmetic -).

Class 44 Make up artist services; make-up services; cosmetic make-up services; beauty care services; beauty salon and beauty treatment services; beauty treatment; beauty treatments; advice and consultancy services relating to the above services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, a 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.

Michaela POLJOVKOVA