Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/08/2020

Sipara Sweden AB

Gjuterigatan 9

SE-553 18 Jönköping

SUECIA

Application No:	018208020
Your reference:	TM10784EU00
Trade mark:
Mark type:	Figurative mark
Applicant:	Husqvarna Group GARDENA Manufacturing GmbH Att. Sara Haug Hans-Lorenser-Str. 40 89079 Ulm ALEMANIA

1. The Office raised an objection on 19/03/2020 pursuant to Article 7(1)(m) EUTMR because it reproduces in its essential elements corresponds to plant variety denominations that are registered at EU level, for the reasons set out in the attached letter.

2. The applicant was granted a two-months extension and submitted its observations on 02/07/2020; these may be summarised as follows:

• The applicant has used and registered the trade mark GARDENA in the EU well before the dates on which the plant variety denominations (PVDs) were accepted and registered. A brief history of the Applicant’s activities is enclosed.

• The applicant operates in the garden products market and has owned or controlled registrations for the trade mark GARDENA covering countries in the EU including class 31 for a number of years. A list of the applicant´s trade mark registrations is enclosed. Enclosed is also a decision in Polish where it was found that at the date of filing of the later trade mark application (30 Oct 1995), GARDENA was a well-known mark

• PVDs are close in nature to a relative ground for refusal being an earlier right created by the proprietor of that PVD in the EU. The applicant refers to the “Budweiser case” (Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., Case C-482/09, 22 September 2011) where the Court ruled on the issue of honest concurrent use. It is submitted that a similar principle applies in the current case.

• The applicant has used and registered its trade mark in good faith since its first adoption of the trade mark in 1961 in Germany. The Applicant reserves the right to submit evidence of the extensive use of its trade mark GARDENA in the EU to overcome the objection raised.

• The nature of the PVD is different to a trade mark. Enclosed is a communication from the president (former) of the CPVO explaining the Community Plant Variety Protection System (https://cpvo.europa.eu/sites/default/files/documents/articles/2009-07-10_Article_Italy.pdf ).

• Both as a result of this coexistence and due to the different nature of a trade mark and a PVD, the essential function of the applicant’s trade mark being to guarantee origin is not compromised.

3. 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)(m) EUTMR, registration is to be refused in respect of signs which meet the following cumulative conditions:

1. there is a registered plant variety denomination (at EU or national level, including in third countries that are party to the UPOV Convention);

2. the plant variety denomination was registered prior to the EUTM application;

3. the EUTM application consists of, or reproduces in its essential elements, the earlier plant variety denomination;

4. the list of goods for which protection is sought for in the EUTM application includes plant varieties of the same species as, or of species closely related to, those protected by the registered plant variety denomination.

The trade mark application at issue meets the fundamental conditions for its refusal under Article 7(1)(m) EUTMR.

See further The Office´s guidelines Section 4 Absolute grounds for refusal — chapter 13 Trade marks in conflict with earlier plant variety denominations.

https://guidelines.euipo.europa.eu/1803468/1788970/trade-mark-guidelines/chapter-13-trade-marks-in-conflict-with-earlier-plant-variety-denominations--article-7-1--m--eutmr-

This provision protects the public interest that variety denominations cannot be monopolised, as also emerges from Article 20(1) of the International Convention for the Protection of New Varieties of Plants (‘UPOV Convention’) (‘Each Contracting Party shall ensure that [...] no rights in the designation registered as the denomination of the variety shall hamper the free use of the denomination in connection with the variety, even after the expiration of the breeder’s right’). It must also be within the discretion of other undertakings to use a registered variety denomination to describe their products (21/09/2017, R 125/2017-1, Flaming Star, § 17).

The fact that the applicant owns earlier rights to the PVDs is irrelevant in this case. An EUTM application should be examined on its own merits, taking into account its application date.

There are proceedings in order to avoid the registration of a PVD, on the basis of an earlier registered trademark. See the Guidelines of the CPVO with explanatory notes: https://cpvo.europa.eu/sites/default/files/documents/lex/guidelines/VD_Guidelines_explanatory_note_EN.pdf

In the case of a trade mark as a prior right of a third party, the use of a variety denomination in the territory of the Community shall be considered to be precluded by the notification to the Office for the approval of the variety denomination of a trade mark, which has been registered in one or more Member States or at Community level prior to the approval of the variety denomination, and which is identical or similar to the variety denomination and registered in relation to goods which are identical or similar to the plant variety concerned.

At the time of being registered, the applicant had the opportunity of challenging the PVDs in question, but apparently did not take any such action. As a result, the trademarks are now coexisting with the PVDs.

The Office´s objection is raised under Absolute Grounds (Article 7 EUTMR) which is dissimilar to Relative Grounds for refusal (Article 8 EUTMR). The “Budweiser case” referred to by the applicant is therefore irrelevant to the case at hand.

As regards the possibility to submit evidence of the use of its trade mark (Article 7(3) EUTMR) it cannot be taken into account given that this provision does not operate in relation to Article 7(1)(m).

According to Article 7(3) EUTMR, a trade mark may still be registered despite the fact that it does not comply with Article 7(1)(b), (c) or (d) EUTMR, provided that it ‘has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’.

Article 7(3) EUTMR constitutes an exception to the rule laid down in Article 7(1)(b), (c) or (d) EUTMR whereby registration must be refused for trade marks that are per se devoid of any distinctive character, for descriptive marks, and for marks that consist exclusively of indications that have become customary in the current language or in the bona fide and established practices of the trade.

See the Office´s Guidelines Chapter 14 Acquired distinctiveness through use (Article 7(3) EUTMR) https://guidelines.euipo.europa.eu/1803468/1787838/trade-mark-guidelines/chapter-14-acquired-distinctiveness-through-use--article-7-3--eutmr-

The applicant did not submit a limitation to exclude the specific protected species, including their closely related species, in order to overcome the objection.

4. For the abovementioned reasons, and pursuant to Article 7(1)(m) EUTMR, the application for European Union trade mark No 018208020 is hereby rejected for rejected for the following goods:

Class 31 Seeds, bulbs and seedlings for plant breeding; unprocessed horticultural products; raw horticultural products; natural plants and flowers; natural seeds; crop seeds; seeds, bulbs and seedlings for plant breeding; bulbs for planting.

The application will proceed accordingly for the remaining goods and 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.

Cecilia ÅLIN