Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/10/2019

Dr. Magyari-Horváth Ügyvédi Iroda Dr. M-H

Budapest

Árpád fejedelem útja 26-28. 5.emelet

H-1023

HUNGRÍA

Application No:	018081513
Your reference:
Trade mark:	KETO
Mark type:	Word mark
Applicant:	Ferenc Norbert Schóbert Szentendre Berek utca 1 H-2000 HUNGRÍA

The Office raised an objection on 22/08/2018 pursuant to Article 7(1)(b) and Article 7(2) 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.

The applicant submitted his observations on 21/08/2019, which may be summarised as follows:

• The applicant requests to amend the representation of the mark as follows: original version of the trade mark as per the application: ‘KETO’, the amended version: ‘KETO – Norbi Update Lowcarb’. The applicant is the owner of ‘update LOWCARB’ word mark (Trade mark number: No 17 314 543) which represents a lifestyle brand. ‘KETO – Norbi Update Lowcarb’ word mark is also connected to this brand as a distinguished name of the owner’s new product line, which means that the requested amendment does not change substantially the mark as it was filed, it only intends to clarify the connection between the products marketed under ‘KETO – Norbi Update Lowcarb’ mark and the so called ‘Norbi Update’ lifestyle brand.

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, for the reasons set out below.

Preliminary Remarks

According to the Guidelines for Examination of European Union Trade Marks, European Union Intellectual Property Office (EUIPO), Part B, Examination, Section 2, Formalities, 15.1 Amendments to the representation of the mark:

The Office’s practice on amendments to the mark representation is very strict. The two conditions for allowing a change to a mark once filed are cumulative:

• the mistake must be obvious, and

• the amendment must not substantially change the mark as filed.

Even if the amendment is not a substantial one, if the mistake is not obvious, the Office will not accept the amendment.

The request is a substantial one as it would change the outcome of the substantial examination of the mark. Furthermore, it was not requested on the day the application was filed, but only after the Office issued the objection letter. Therefore, the request cannot be granted.

Article 7(1)(b) EUTMR – general remarks

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

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs (3D), EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘KETO’, is devoid of any distinctive character as consumers will fail to perceive it as an indication of trade origin and instead understand that the goods are suitable for following a keto diet.

The mark is composed of the verbal element ‘KETO’ written in standard upper-case letters. The goods to which an objection has been raised and for which registration is sought are both specialised and everyday goods that target mainly average consumers. In view of the nature of the goods in question, the degree of attention of the relevant public will vary from average to high.

A mark that would simply be seen as non-distinctive cannot guarantee the identity of the origin of the goods sold under the mark to consumers or end users by enabling them, without any likelihood of confusion, to distinguish those goods from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, therefore, enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the European Union (EU) who understand the verbal element of the mark will see the mark not as a badge of the trade origin of the goods at issue, but rather as a non-distinctive mark with a clear meaning and message.

Finally, the applicant did not claim that his mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for international registration No 18 081 513 designating the European Union is hereby rejected for the following goods claimed:

Class 29 Processed tomatoes; aloe vera prepared for human consumption; non-alcoholic eggnog; raisins; marmalade; snack foods based on nuts; freeze-dried meat; rice milk for culinary purposes; prawns, not live; fish, preserved; oysters, not live; candied nuts; tofu patties; flavoured nuts; freeze-dried vegetables; nuts, prepared; tuna, not live; meat, preserved; lecithin for culinary purposes; cooked beans; fruit preserved in alcohol; nut-based meal replacement bars; silkworm chrysalis for human consumption; peas, processed; cocoa butter for food; albumin milk; hummus [chickpea paste]; potato crisps in the form of snack foods; spiny lobsters, not live; gherkins; tinned tomatoes; preparations for making soup; potato flakes; falafel; truffles, preserved; game, not live; salted fish; peanut milk; fruit leathers; shellfish, not live; fish mousses; nut-based spreads; buttercream; drinks based on yogurt; cured sausages; vegetables, cooked; soybean oil for cooking; edible birds’ nests; anchovy, not live; vegetable salads; margarine; low-fat potato crisps; ginger jam; canned peanuts; mussels, not live; milk products; tofu; fruit-based snack food; fish, not live; sauerkraut; coconut oil for food; beans; processed dates; whey; shrimps, not live; evaporated milk; hot dog sausages; anchovy fillets; jams; butter; prostokvasha [soured milk]; arrangements of processed fruit; fat-containing mixtures for bread slices; ham; apple purée; hazelnuts, prepared; sesame oil for food; sausages in batter; milk shakes; lard; caviar; onion rings; maize oil for food; herrings, not live; crustaceans, not live; cured meats; meats; frozen fruits; palm kernel oil for food; coconut milk; dates; frozen meat; almond milk for culinary purposes; meat extracts; milk beverages, milk predominating; yoghurt; jellies for food; white of eggs; sardines, not live; artichokes, preserved; olives, [prepared]; soya milk; fish roe, prepared; broth concentrates; vegetables, preserved; fruit preserves; sweetcorn [preserved]; clams, not live; packaged meats; palm oil for food; almond milk-based beverages; almonds, ground; lentils, preserved; guacamole [mashed avocado]; yuba [tofu skin]; olives, preserved; soya patties; fruit, preserved; rape oil for food; vegetable juices for cooking; condensed tomatoes; vegetables, dried; liquid eggs; coconut butter; liver; fish fillets; vegetable-based cream; peas, preserved; milk; koumiss [milk beverage]; lobsters, not live; coconut milk-based beverages; liver pâté; cheese; sunflower seeds, prepared; seeds, prepared; soya bean oil for food; preserved garlic; compotes; cream [dairy products]; powdered eggs; gelatine; fruit pulp; smetana [sour cream]; coconut milk for culinary purposes; galbi [grilled meat dish]; linseed oil for food; fruits, tinned; vegetables, tinned; oat milk; fruit jellies; preparations for making bouillon; soups; mushrooms, preserved; eggs; pickles; cranberry compote; sausage casings, natural or artificial; olive oil for food; klipfish [salted and dried cod]; fruit chips; sausages; sour cream substitutes; walnut kernels; potato-based dumplings; croquettes; nut-based food bars; coconut, desiccated; peanuts, prepared; milk substitutes; rice milk; potato crisps; pectin for culinary purposes; pollen prepared as foodstuff; whipping cream; salted meats; soya beans, preserved, for food; vegetable soup preparations; cottage cheese fritters; laver, preserved; ajvar [preserved peppers]; lemon juice for culinary purposes; fruit salads; potato sticks; peanut milk for culinary purposes; powdered milk; sweet corn, processed; smoked meats; meat jellies; fresh meat; pressed fruit paste; sausage skins [synthetic]; yogurt drinks; suet for food; extra virgin olive oil for food; tahini [sesame seed paste]; fruit peel; sunflower oil for food; cooked meats; edible fats; tomato juice for cooking; oils for food; nut-based snack foods; broth; fritters; edible insects, not live; yolk of eggs; crayfish, not live; aubergine paste; rennet; milk ferments for culinary purposes; fish, tinned; onions, preserved; olive oil; poultry, not live; kimchi [fermented vegetable dish]; vegetable marrow paste; peanut butter; vegetable mousses; salmon, not live; soybean oil; tripe; soups and stocks, meat extracts; fish-based foodstuffs; almond milk; berries, preserved.

Class 30 Coffee; freeze-dried dishes with the main ingredient being pasta; powders for making ice cream; coffee-based beverages; apple sauce [condiment]; honey; mustard meal; nutmegs; yeast; propolis for food purposes; binding agents for ice cream; mustard; popcorn; leaven; chocolate-coated nuts; ferments for pastes; tapioca flour; corn, milled; fondants [confectionery]; chicory [coffee substitute]; cereal-based snack food; gluten additives for culinary purposes; salt for preserving foodstuffs; chocolate; tea-based beverages; pralines; pasta; vegetal preparations for use as coffee substitutes; muesli; thickening agents for cooking foodstuffs; chocolate decorations for cakes; almond confectionery; sausage binding materials; husked barley; saffron [seasoning]; burritos; marzipan; tomato sauce; liquorice [confectionery]; preparations for stiffening whipped cream; rice-based snack food; processed seeds for use as a seasoning; food flavourings, other than essential oils; bulgur; high-protein cereal bars; wheat flour; pastries containing fruit; aromatic preparations for food; cloves [spice]; couscous [semolina]; almond paste; soya bean paste [condiment]; rice pudding; hot dog sandwiches; ice cream; custard; gingerbread; chocolates; spring rolls; ice, natural or artificial; cake powder; baking soda [bicarbonate of soda for cooking purposes]; rice cakes; bread rolls; agave syrup [natural sweetener]; propolis; sea water for cooking; turmeric; petits fours [cakes]; seasonings; peanut confectionery; pounded wheat; ice cubes; coffee flavourings; hominy grits; artificial coffee; crackers; stick liquorice [confectionery]; malt for human consumption; cake frosting [icing]; chocolate-based spreads; groats for human food; sauces [condiments]; macaroni; pelmeni [dumplings stuffed with meat]; cranberry sauce [condiment]; pizzas; corn flakes; mirror icing [mirror glaze]; sago; tarts; crushed barley; pancakes; semolina; flavourings, other than essential oils, for cakes; mint for confectionery; rice pulp for culinary purposes; udon noodles; nut flours; cinnamon [spice]; mayonnaise; tacos; chocolate spreads containing nuts; meat pies; dessert mousses [confectionery]; chow-chow [condiment]; linseed for culinary purposes [seasoning]; tortillas; edible ices; wheat germ for human consumption; buns; frozen yoghurt [confectionery ices]; vinegar; noodle-based prepared meals; royal jelly; tabbouleh; fruit jellies [confectionery]; flowers or leaves for use as tea substitutes; pastry dough; minced garlic [condiment]; cereal bars; tea; glucose for culinary purposes; chamomile-based beverages; crushed oats; corn flour; corn, roasted; ham glaze; chocolate beverages with milk; pepper; edible paper; bean meal; rusks; pasta sauce; cake doughs; marinades; capers; minced garlic; flour; cocoa beverages with milk; gimbap [korean rice dish]; tapioca; buckwheat flour; starch for food; sushi; allspice; pâtés en croûte; bread; peppermint sweets; star aniseed; chutneys [condiments]; aniseed; potato flour; sherbets [ices]; spaghetti; meat tenderizers for household purposes; dough; malt biscuits; flavourings, other than essential oils, for beverages; relish [condiment]; infusions, not medicinal; vanilla flavourings for culinary purposes; zephyr [confectionery]; confectionery for decorating Christmas trees; breadcrumbs; pastila [confectionery]; instant ice cream mixes; unleavened bread; seaweed [condiment]; coffee beverages with milk; curry [spice]; noodles; iced tea; ketchup [sauce]; cereal preparations; soya sauce; instant rice; soya flour; waffles; oat-based food; gluten prepared as foodstuff; celery salt; meat gravies; baking powder; senbei [rice crackers]; chocolate-based beverages; beer vinegar; cooking salt; pies; vanillin [vanilla substitute]; chips [cereal products]; chocolate spreads for use on bread; salad cream; garden herbs, preserved [seasonings]; croûtons; quinoa, processed; ravioli; natural sweeteners; alimentary seasonings; petit-beurre biscuits; vanilla; cheeseburgers [sandwiches]; sesame seeds [seasonings]; chocolate mousses; pesto [sauce]; peppers [seasonings]; freeze-dried dishes with the main ingredient being rice; halvah; treacle; ginger [spice]; buckwheat, processed; shaved ice with sweetened red beans; barley meal; quiches; rice; fruit coulis [sauces]; cocoa; lozenges [confectionery]; flour-based dumplings; cocoa-based beverages.

Class 31 Cocoa beans, raw; almonds [fruits]; garlic, fresh; cucumbers, fresh; grains [cereals]; spinach, fresh; leeks, fresh; oats; lemons, fresh; hazelnuts, fresh; malt; potatoes, fresh; peppers [plants]; quinoa, unprocessed; rhubarb, fresh; sugarcane; copra; vegetable marrows, fresh; citrus fruit, fresh; rice, unprocessed; vegetables, fresh; beans, fresh; beet, fresh; truffles, fresh; chestnuts, fresh; peanuts, fresh; coconuts; kola nuts; grapes, fresh; onions, fresh; unprocessed sweet corn ears [husked or unhusked]; fresh zucchini; oranges, fresh; lettuce, fresh; olives, fresh; berries, fresh; arrangements of fresh fruit; peas, fresh; chicory roots; garden herbs, fresh; seeds for planting; nettles; chicory, fresh; hops; nuts [fruits]; bran; barley; artichokes, fresh; fruit, fresh; juniper berries; wheat; buckwheat, unprocessed; maize; mushrooms, fresh; pollen [raw material]; bagasses of cane [raw material]; edible linseed, unprocessed; edible sesame, unprocessed.

Class 32 Non-alcoholic fruit juice beverages; waters [beverages]; energy drinks; aloe juice beverages; aperitifs, non-alcoholic; aerated water; rice-based beverages, other than milk substitutes; pastilles for effervescing beverages; whey beverages; must; soft drinks; essences for making beverages; non-alcoholic beverages flavoured with coffee; soda water; beer-based cocktails; non-alcoholic beverages flavoured with tea; lemonades; non-alcoholic preparations for making beverages; tomato juice [beverage]; lithia water; syrups for lemonade; barley wine [beer]; juices; non-alcoholic fruit extracts; fruit nectars, non-alcoholic; powders for effervescing beverages; preparations for making aerated water; syrups for beverages; grape must, unfermented; sherbets [beverages]; isotonic beverages; protein-enriched sports beverages; smoothies; vegetable juices [beverages]; mineral enriched water [beverages]; cocktails, non-alcoholic; seltzer water; beer; table waters; orgeat; cider, non-alcoholic; ginger beer.

Class 33 Alcoholic essences; alcoholic beverages containing fruit; brandy; liqueurs; aperitifs; alcoholic extracts; wine; pre-mixed alcoholic beverages, other than beer-based; whisky; fruit extracts, alcoholic; cider; anise [liqueur]; distilled beverages; rum; alcoholic beverages (except beer).

The application may proceed for the remaining services.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 for 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.

SZABOLCS KISS