Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/11/2019

HARBER IP S.R.O.

Dukelských hrdinů 567/52

CZ-170 00 Prague 7 - Holešovice

REPÚBLICA CHECA

Application No:	018120520
Your reference:	TM1354EU00
Trade mark:	JUVENIL
Mark type:	Word mark
Applicant:	IMUREGEN Pitterova 2855/7 CZ-13000 Praha 3 REPÚBLICA CHECA

The Office raised an objection on 11/09/2019 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 03/11/2019, which may be summarised as follows.

1. The Application is not completely devoid of any distinctive character. It bears a sufficiently high degree of distinctiveness in relation to the goods in Classes 5 and 32; a low degree of distinctive character is not a priori a reason for refusing an application.

2. The Application has to be examined from the point of view of the average consumer of Class 5 goods and Class 32 goods in the entire European Union, not in a particular EU Member State (i.e. in Spanish-speaking countries). The average consumer throughout the EU is not automatically a Spanish speaker and would therefore be unable to perceive the meaning of the word “JUVENIL”.

3. There are no objective reasons to consider the sign 'JUVENIL' as descriptive in relation to a number of goods in Classes 5 and 32 as no average consumer in the EU would, when coming across with the sign “JUVENIL”, come to a conclusion that it describes these goods or its characteristics

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.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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).

In addition, Article 7(2) EUTMR states that paragraph 1 of that article shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The Office replies to the applicant’s observations as follows.

1. The Application is not completely devoid of any distinctive character, it bears a sufficiently high degree of distinctiveness in relation to the goods in Classes 5 and 32; a low degree of distinctive character is not a priori a reason for refusing an application.

The Office considers that the message expressed by the expression ‘JUVENIL’ is plain and does not constitute a play on words, and contains no imaginative, surprising or unexpected element capable of rendering it distinctive in the mind of the relevant public.

A word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may none the less be devoid of distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive, as has been acknowledged by the Court of Justice (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 18-19, and the judgments cited therein).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of 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 service 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; and consistent case-law on absolute grounds for refusal).

Therefore, the sign ‘JUVENIL’ consists exclusively of a meaningful expression that will be easily understood by the relevant public, who will perceive it not as a trade mark but as a non-distinctive indication that does not function as a trade mark for the claimed goods.

It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark applied for as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark applied for is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark applied for has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

2. The Application has to be examined from the point of view of the average consumer of Class 5 goods and Class 32 goods in the entire European Union, not in a particular Member State of the EU (i.e. in Spanish-speaking countries). The average consumer throughout the EU is not automatically a Spanish speaker, and therefore is unable to perceive the meaning of the word “JUVENIL”.

Article 7(2) EUTMR clearly states that a trade mark shall not be registered, even if the grounds of non-registrability are met only in part of the Union.

Moreover, according to case law, it is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

The sign applied for is a verbal mark ‘JUVENIL’. It does not contain any unusual variation or misspelling as regards everyday Spanish. It contains neither specialist terminology, which, in any case would be understood by the relevant specialised public, nor particularly unusual terms. It does not confer a particular original or striking character that would trigger a cognitive process or an interpretative effort. The relevant Spanish-speaking public will read and understand the expression in a straightforward way, namely that it relates to youth.

Therefore, an obstacle pertaining to the Spanish-speaking population of the European Union is consequently sufficient to reject the trade mark application.

3. There are no objective reasons to consider the sign 'JUVENIL' as descriptive in relation to a number of goods in Classes 5 and 32 as no average consumer in the EU would, when coming across with the sign “JUVENIL”, come to a conclusion that it describes these goods or its characteristics.

The meaning of the sign provided by the Office is clear and does not leave any room for doubt. The dictionary entries constitute clear evidence of the respective meaning and prove how the relevant public will ordinarily understand the word in question.

The sign applied for ‘JUVENIL’ conveys a straightforward and meaningful message that the goods applied for are intended to enhance and/or preserve the real, genuine qualities and condition characteristics of youth. Therefore, the sign describes the quality and intended purpose of the goods in question.

In addition, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. The sign will not be seen as a badge of origin and does not fulfil the role of a trade mark.

With regard to the applicant’s argument that the sign applied for does not directly describe the goods in question, and does not refer to any essential characteristics of the services in question,

‘It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever 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).

Moreover, a mark which, as in this case, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods to the consumers or end-users by enabling them, without any possibility of confusion, to distinguish said goods from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services, thus 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).

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 18 120 520 is hereby rejected for all the goods 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.

Marina TOMIĆ