Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 04/06/2020

Norgine Limited

Geraldine Tahsin

Norgine House

Widewater Place

Moorhall Road

Harefield

Uxbridge, Middlesex UB0 6NS

REINO UNIDO

Application No:	018085323
Your reference:	TM-IRON-MATTERS
Trade mark:	IRON MATTERS
Mark type:	Word mark
Applicant:	Velinor AG c/o Dr. iur. Adrian von Segesser Kapellplatz 1 CH-6004 LUZERN SUIZA

The Office raised an objection on 18/07/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

In summary, the relevant English-speaking part of the public (public at large and professional public) would perceive the sign, IRON MATTERS, as having the following meaning: iron is important, essential, significant. The sign for which protection is sought, would simply be perceived as a promotional laudatory slogan. The relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to communicate that iron is important, essential or good for the human body. The goods and services in question (can) focus on iron which use is essential for our diet and health and could have negative consequences if not used. In the case of goods in class 5, this will be understood as promotion of iron based pharmaceutical preparations. In case of services in classes 41 and 44, the mark will be seen as a laudatory term promoting education, training and medical information services all focusing on iron and its benefits for human health. The sign, with its abstract and banal slogan which conveys a very broad laudatory message will not create in the minds of the relevant public a distinctive character. Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

On 09/09/2019 the applicant requested an extension of the time limit to submit observations. The time limit was extended on 10/09/2019, with the deadline expiring on 23/11/2019. The applicant submitted its observations on 22/11/2019, which can be summarised as follows:

1. The mark ‘IRON MATTERS’ is a creative and playful combination of two meaningful words which requires reflection and is open to interpretation. It is a coined term not used within the common parlance in relation to the goods and services for which registration is sought. Moreover, the Office is obliged to assess the descriptive character of a trade mark in relation to the goods and services for which registration is sought;

2. The mark ‘IRON MATTERS’ is distinctive and therefore, capable of registration. Only a minimum degree of distinctive character is sufficient to overcome the objection of lack of distinctiveness. A distinctiveness test has a low threshold to meet and must look at the ‘best case scenario’. In addition, slogans should not be subject to stricter criteria when assessing their distinctive character;

3. The mark ‘IRON MATTERS’ is not a promotional laudatory slogan;

4. The Office has already accepted similar, comparable marks for registration.

5. The applicant reserves the right to submit further arguments or evidence of use under Article 7(3) EUTMR and/or to amend the specification.

The Office addressed the applicant observations on inherent distinctiveness (which are summarised above) and concluded that the sign ‘IRON MATTERS’ will be perceived as inherently non-distinctive of the goods and services in question. For the reasons set out in both letters of objection, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 18085323 is rejected for all the goods and services claimed (based on inherent distinctiveness).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18085323 is declared to be non-distinctive pursuant to Article 7(1)(b) EUTMR in Ireland, Malta and UK for all goods and services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Laima IVANAUSKIENE