Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/07/2020

ROLIM, MIETZEL, WOHLNICK & CALHEIROS LLP

Graf-Adolf-Straße 14

D-40212 Düsseldorf

GERMANY

Application No:	018184101
Your reference:	038300-034
Trade mark:	Vstick Pro
Mark type:	Figurative mark
Applicant:	Shenzhen Quawins Technology Co.,ltd. Creative Mansion 1003, 3025 Nanhai Avenue, Liancheng Community, Nantou Street, Nanshan District Shenzhen PEOPLE’S REPUBLIC OF CHINA

The Office raised an objection on 29/01/2020 pursuant to Article 7(1)(b) and (c) 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 the present case, the relevant English-speaking consumers would perceive the sign as providing information that the goods claimed in Class 34 are vape sticks/pens for inhaling tobacco or tobacco substitutes, such as the devices for heating tobacco and tobacco substitutes or the electronic cigarettes and electronic cigarette atomizers, or else, they are components, solutions or flavourings to be used with such vape sticks/pens, such as, for example, the refill cartridges for electronic cigarettes, cigarette filters, liquid nicotine solutions, electronic cigarette liquid [e-liquid], liquid flavorings other than essential oils, etc.

Therefore, the relevant consumer, notwithstanding certain figurative elements consisting of the letter ‘V’ written in a slightly bolder typeface than the rest of the expression and a cut towards the corner of the angle formed by this letter, would perceive the sign as providing information about the kind, quality and intended purpose of the goods in question.

As for the term ‘PRO’, well-established case-law has stated that it is commonly used in English as the short form for ‘professional’ (29/11/2004, R 199/2004-1, ‘MP3PRO’, § 12), and English dictionaries already recognise this in their definitions, as shown above.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods

or services of one undertaking from those of other undertakings.

Moreover, a sign may also lack distinctiveness in relation to the goods and services for which registration is sought for reasons other than the sign being descriptive in itself. In the context of the services being claimed, the term ‘PRO’ conveys the meaning that the noun qualified by it, in this case, ‘Vstick’ is of a professional, high quality, etc. According to well-established case-law, ‘as regards the word element ‘Pro’ it is sufficient to observe that, according to case-law, first, it may be laudatory for the sake of advertising, the purpose of which is to highlight the positive qualities of the goods or services for the presentation of which that element is used; secondly, it is commonly used in trade for the presentation of all kinds of goods and services. The European Union’s judicature has already held that that word element [‘Pro’] would be perceived by the English-speaking public as meaning ‘professional’ or ‘favourable, positive or supportive’. In light of the foregoing, the word element ‘Pro’ could be perceived as meaning ‘professional’ or ‘favourable’ (24/11/2016, T-349/15, P PRO PLAYER (fig.) / P PROTECTIVE (fig.) et al.,EU:T:2016:677, § 38 and 06/06/2018, R 1812/2017-2, ‘Scanner Pro’, § 26)’. Therefore, in the present case, ‘the relevant public will immediately understand that the sign ‘Vstick PRO’ describes the kind and quality of the goods, namely ‘professional’ vape sticks. The commercial appeal of a ‘professional’ vape stick will not only attract the professional public but also the general public, who will only wish to purchase the best on the market’ (06/06/2018, R 1812/2017-2, ‘Scanner Pro’, § 30).

Hence, the laudatory term ‘PRO’ is commonly used in trade and advertising, to signify ‘professional’, that is, of the best quality. Therefore, the sign ‘Vstick PRO’ works as a promotional expression, the function of which is to communicate a value statement referring to a desirable and sought-after quality of the services in question, namely, that they are professional, of the best quality, etc. In consequence, the relevant customers will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in question (06/06/2018, R 1812/2017-2, ‘Scanner Pro’, § 32).

Furthermore, signs that are commonly used in connection with the marketing of the goods concerned are devoid of distinctive character. In the present case, an internet search dated 29/01/2020 indicated in the attached notice has revealed that the letter ‘V’ in question is commonly used in the relevant market as the abbreviation of the word ‘VAPE’.

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. With the above notice (attached) the applicant was given opportunity to submit observations in reply. The Office has not received any observations within the specified time limit. Consequently, further argumentation is superfluous.

For the reasons set out in the present decision and those stated in the attached letter of objection, the application for European Union trade mark No 18 184 101 is hereby rejected for all the goods claimed, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR,

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.

María Mónica TARAZONA RUÁ