Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/01/2020

NOERR ALICANTE IP, S.L.

Avenida México 20

E-03008 Alicante

ESPAÑA

Application No:	18 080 921
Your reference:	ALC-0513-2019LDE/BKO
Trade mark:
Mark type:	Figurative mark
Applicant:	Right Livelihood Award Stiftelsen Stockholmsvägen 23 SE-122 62 Enskede SUECIA

The Office raised an objection on 04/07/2019 pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

On 04/11/2019, the applicant requested by separate communication a limitation of the list of goods and services. On 28/01/2020, the Office confirmed by separate communication/L167 letter the requested restriction of the list of goods and services, set out in the attached letter.

The applicant submitted its observations on 04/11/2019, which may be summarised as follows:

1. Limitation of the list of goods and services

2. Distinctive character/figurative elements of the sign/relevant public and its’ level of attention/no practically significant use of flower devices on the relevant market

3. Similar marks registered by the Office

The applicant requested that the submitted observations with enclosures to be treated with confidentiality (in particular with respect of the applicant´s 2019 award ceremonies and the design of the diplomas). Therefore, the Office will refer to the submitted material in more general terms.

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 waive the objection for the following goods and services:

Class 16 Printed awards; brochures, manuals.

Class 41 Publication of brochures.

The objection is maintained for the remaining goods and services.

1. Limitation of the list of goods and services

Applicant´s remarks

The applicant requested a limitation of the list of goods and services as follows:

Class 16 Printed matter; printed awards; books; brochures,

catalogues, instructional and teaching material (except apparatus), handbooks, manuals; printed publications, newspapers, periodicals.

Class 41 Publications of printed matter and printed publications; publication of newspapers, periodicals, catalogues and brochures; publication of books, magazines, almanacs and journals; publication of electronic books and journals online.

Office´s comments

The Office has implemented the requested limitation of the list of goods and

Services in conformity with the L167 letter of 27/01/2020 attached to this

communication.

2. Distinctive character/figurative elements of the sign/relevant public and its’ level of attention/no practically significant use of flower devices on the relevant market

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive

character’ are not to be registered.

The general interest underlying Article 7(1)(b) EUTMR is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of origin of the marked product or service to the consumer or end-user by enabling him/her, without the possibility of confusion, to distinguish the product or service from others which have a different origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).

Article 7(1)(b) EUTMR precludes the registration of trade marks which are devoid of distinctive character which alone renders them incapable of fulfilling that essential function (16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532, § 23).

Since the EUTM applied for consists exclusively of figurative elements lacking any word elements, it will be perceived in the same way throughout the European Union irrespective of any linguistic differences between the different Member States (30/09/2009, T-75/08, !, EU:T:2009:374, § 26; 12/09/2007, T-141/06, Texture of glass surface, § 36).

The signs 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- 9/00, Lite, EU:T:2002:42, § 26; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

Applicant´s remarks

“Printed awards” are given rather occasionally and to very few recipients in recognition of excellence (in the field of sports, arts, etc.) only. These goods are therefore not of mass consumption, and the relevant public will also pay a particular high degree of attention when being confronted with the sign for “printed awards”.

The figurative elements of the EU trade mark will be perceived as a meaningful and highly distinctive symbol and badge of origin. These figurative elements show a high degree of creativity or artistic imagination, allowing the relevant public to easily and immediately identify the origin of the goods and services at issue.

The assessment of the distinctiveness of the sign at issue must be based on the use of the sign which is practically significant in the economic sector (books, brochures, manuals and/or the publication hereof). The evidence from the economic sectors concerned clearly shows that there is no use of stylized flowers as purely decorative elements for the goods and services to which the objection allegedly applies. “Printed awards” are predominantly given in the form of titles, diplomas or certificates containing the following information: (1) Who is given the award (2) What is given (diploma, title, etc.) and (3) By whom is the award given. Figurative elements on “printed awards” usually also only consist of seals, badges or other distinctive devices at the most which allow to distinguish the awards of one undertaking from those of another one without any problem.

The assessment in the case at hand is based on the incorrect assumption that all objected goods and services form a homogeneous group. The mere fact that “printed awards, books, brochures and manuals” can be printed or published on paper, is not sufficient to conclude that all these goods and services form a homogeneous group, including goods and services of a totally different nature and purpose, such as, for example, “printed matter” (which are mass consumption goods), on the one hand, and “printed awards” or “books”, on the other.

Overall, the examiner’s´ assessment of the distinctive character of the sign at issue relies on the single and erroneous assumption that the sign at issue consists of the depiction of a decorative feature which is allegedly commonplace in the sector concerned, and that it does not contain aspects that would cause consumers to perceive it as an indicator of the commercial origin. These allegations are vitiated by errors.

The examiner did not distinguish between the different goods and services, and it is clearly wrong that all objected goods and services in classes 16 and 41 can simply be classified for mass consumption. Particularly reference is made to “printed awards” which certify that a person has done something well. Awards are given occasionally and to very few recipients only (f.ex. in recognition of excellence in the fields of sports, arts, etc.). “Printed awards” are not of mass consumption (like, f.ex., “blank paper sheets”), and the relevant public will also pay a particular high degree of attention when being confronted with the contested sign on a “printed award”.

The composition of the figurative elements of the sign are evidently not supposed to simply decorate, embellish or personalize the goods and services at issue and do not have any direct link to the goods and services to which the objection allegedly applies after the limitation made. The figurative elements of the sign show a high degree of creativity or artistic imagination

The figurative elements of the sign at issue are highly distinctive. The examiner’s assessment that consumers will regard the elements of the sign as a plain decorative element is vitiated by errors.

The sign consists of two stylized flowers facing each other in a roundel and shows a striking and meaningful variation of the logo of one of the world’s leading awards, namely the applicant’s “RIGHT LIVELIHOOD AWARD”.

Contrary to the examiner’s assertions, the sign at issue does therefore not merely consist of randomly embellishing flower elements which are commonplace as decorative features for the goods and services at issue. The sign is rather fanciful and consists of floral and geometrical elements with their own personality, and can therefore easily and instantly be memorised.

As mentioned above, the assessment of the distinctive character of a sign must be based on its use which is practically significant in the economic sector. The evidence submitted shows that there is no practically significant use of flower devices as purely decorative elements in the economic sector.

Flower devices are not commonplace as decorative features for “printed awards” like seals and badges are, but they are a particularly striking and distinctive element of the applicant’s “printed award”.

Furthermore, there is no practically significant use of flower devices as purely decorative elements on “books, brochures and manuals” in class 16 or corresponding publication services hereof.

The applicant submits that the figurative elements of the sign are not descriptive for the goods in class 16 to which the objection applies, namely “Printed awards; Books; Brochures, manuals” or the contested services in class 41. Particular reference is made to decision of 30/01/2019 from Board of Appeal, R1977/2018-4, (fig.)

where the Board held that the afore sign/floral representation is distinctive and not descriptive. There is no practically significant use of stylized flower devices for the goods and services at issue, and any potentially descriptive and non-distinctive use of flowers for books, etc. is limited to true-to-life portrayals of flowers on books related to flowers.

Office´s comments

Preliminarily, the Office refers to the waivering of the objection for the goods printed awards; brochures, manuals¹ in class 16 and for the waivering of the services publication of brochures in class 41 as stated in the preliminary sections of this communication.

Subsequently, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product or service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by

reference, first, to the goods or services in respect of which registration is sought and, second, in to the relevant public’s perception of that sign’ (09/10/2002, T-360/00, UltraPlus, EU:T:2002:244, § 43; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).

According to case law, the level of attention of the relevant public is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26). The Office considered in its notice of grounds for refusal of 04/07/2019 that the goods objected to in class 16 and the services objected to in class 41 are everyday consumption/mass-consumption goods that were mainly aimed at average consumers. The Office maintains that the awareness of the relevant public would be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Therefore, in the context of the goods and services now objected to by the Office:

Class 16 Books.

Class 41 Publication of books; publication of electronic books and journals online.

the Office maintains its’ position that the sign at issue

in relation to the above-cited goods and services will be perceived as a decorative element in the form of flower ornaments on book covers, such as the use of a vintage flower embellishment motive to recreate the vintage book cover look on paperback covers which can equally be created electronically for digital publication as opposed to craftsman or handmade bookbinding technique.

With all respect for the applicant´s highlight of the symbolic meanings of the elements of the sign at issue asserting that the sign would be perceived as a meaningful and distinctive symbol and badge of origin, the Office is still of the position that the disputed sign merely consists of two stylised flowers with petals which will be perceived as a typical retro or vintage graphic representation connected to book bindings and book cover decoration. In the market reality, such figurative elements are quite common and similar to other graphical representations of the same kind.

Therefore, the Office maintains its’ position that the sign at issue does not contain any aspect that would allow it to catch the relevant public´s attention and cause the consumer to perceive the mark as an indicator of the commercial origin of the goods and services in question.

3. Similar marks registered by the Office

Applicant´s remarks

The objection to the current sign should also be withdrawn in view of the principle of equal treatment and sound administration. There are numerous comparable marks which have been registered without any problem. Particular reference is made to the applicant’s EU trade mark 14 775 118 -

registered on 07/03/2016 by the Office for the same goods and services, applied for under the current sign.

Moreover, the following decisions, confirmed by the Board of Appeal, confirm that plant symbols are distinctive:

• 13 226 411 R3299/2014-1/decision of 15/10/2015

• 17 777 004 R1977/2018-4/decision of 30/01/2019

• 2 535 813 R1235/2009-1/decision of 09/09/2010

• 17 842 006 R1438/2018-4/decision of 12/12/2018

The Office is kindly requested to take all the above previous registrations and Decision into account and to consider with special care whether there are any reasons to decide differently in the case at hand.

Office´s comments

Firstly, the Office would like to point out that regarding the above-cited cases by the applicant, in which the figurative signs have been confirmed as distinctive by the Board of Appeal, three out of the four cases

[with the exception of EUTM 226 411 R3299/2014-1/decision of 15/10/2015]

are related to goods and services other than these at issue with the current

sign at issue, i.e. goods in class 16 and services class 41. Therefore, the Office does not find the three last cases cited above with the applicant´s remarks are comparable with the current case.

Moreover, as regards the applicant´s argument that a number of similar registrations have been accepted by the EUIPO/confirmed by the Board of Appeal, 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).

In addition it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during that

period. The Court of Justice is also aware of this market and practice

evolution and have stated 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for European Union trade mark No 18 080 921 is hereby rejected in part for the following goods and services:

Class 16 Books.

Class 41 Publication of books; publication of electronic books and journals online.

The application may proceed for the remaining goods and services, namely:

Class 9 Magnetic data carriers, recording discs; compact discs, DVDs and

other digital recording media; electronic publications, downloadable;

publications in electronic format; computer software (recorded or

downloadable).

Class 16 Printed awards; brochures, manuals.

Class 35 Advertising; business management; business administration; office

functions; public relations services; business consultancy services

relating to management of fund raising campaigns; business

consultancy services relating to the promotion of fund raising

campaigns; business consultancy services relating to the marketing of

fund raising campaigns; advertising in periodicals, brochures and

newspapers; promotion [advertising] of concerts.

Class 36 Financial affairs; monetary affairs; fundraising and sponsorship;

arranging charitable collections for others; arranging of funds for

overseas aid projects; benevolent fund services; charitable fund

raising; charitable collections; charitable services, namely financial

services; eleemosynary services in the field of monetary donations;

financial sponsorship; fund sponsorship; financing services for

sponsoring businesses; organising of charitable collections;

organisation of financial collections; political fund-raising services;

providing educational scholarships; providing college scholarships;

Philanthropic services concerning monetary donations.

Class 41 Education; providing of training; entertainment; sporting and cultural

activities; publishing and reporting; education, entertainment and

sports; audio and video production, and photography; hosting awards;

arranging and conducting award ceremonies; arranging of award

ceremonies to recognise achievement; arranging of award

ceremonies to recognise bravery; arranging and conducting conferences; organisation of meetings and conferences; arranging

and conducting of symposiums; arranging and conducting of concerts;

university services; educating at university or colleges; university

education services; arranging teaching programmes; organisation of

ceremonial events; organising events for cultural purposes;

entertainment services in the nature of arranging social entertainment

events; organisation of shows; publication of documents in the field of

training, science, public law and social affairs; publication of brochures; providing online publications; publication of educational materials; arranging of exhibitions for cultural purposes; arranging of exhibitions for educations purposes; organization of exhibitions for cultural or educational purposes; arranging and conducting competitions.

Class 42 Scientific and technological services and research and design relating

thereto; industrial analysis and research services; design and

development of computer hardware and software; design services;

science and technology services; research in the area of

environmental protection; natural science 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.

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