Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 03/08/2020

Calysta

Lambroekstraat 5A

B-1831 Diegem

BÉLGICA

Application No:	018219307
Your reference:	TRM-10880-EM00
Trade mark:	Blue Lime
Mark type:	Word mark
Applicant:	S.A. Lhoist Recherche et Développement Rue Charles Dubois 28 B-1342 OTTIGNIES-LOUVAIN-LA-NEUVE BÉLGICA

The Office raised an objection on 06/05/2020 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 29/06/2020, which may be summarised as follows.

• It is safe to say that the word ‘BLUE’ is an extremely versatile word in the English language, used in many different contexts and indicating many different things. Therefore it is highly doubtful that the relevant consumer will interpret the word ‘BLUE’ in the meaning that is indicated by the Office. On the contrary, given the many meanings and connotations the relevant public is not going to readily detect the interpretation put forward by the Office.

The word ‘LIME’ also has many possible meanings, and is used in the English language as a noun, a verb or an expression.

• When considering the word ‘BLUE LIME’ as a whole it should be pointed out that this word is unusual and does not exist in the English language. The relevant public would have to undertake an interpretative effort to discover the meaning the Office beliefs this word has and thus a cognitive process would be set into motion. Such cognitive effort will be further enlarged by the vast amount of different meanings that belong to the word ‘BLUE’ and/or ‘LIME’ and that make it more difficult to comprehend the word ‘BLUE LIME’.

• It follows that the sign as a whole is far more than the mere putting together of the words ‘BLUE’ and ‘LIME’ with the meaning indicated by the Office. The Office has not put forward any other evidence that these words would have a particular meaning in relation to the concerned products. Since the word ‘BLUE LIME’ does not exist in the field of science and technology, the relevant public will not attribute a particular meaning to it, making it distinctive per se to a normal degree.

• Since in the present case the distinctive character is generated by a unique and distinctive combination, the registration of ‘BLUE LIME’ will not prevent any competitor of using the words ‘BLUE’ or ‘LIME’ per se. It just prevents unauthorised use of the combination of the two terms into one word, as applied for.

• Since the applicant has demonstrated the mark in not descriptive and article 7(1)(c) EUTMR does not apply, there are no reasons to assume it would be devoid of distinctive character.

• The applicant makes reference to registered European Union trademarks including ‘BLUE’ or ‘BLUE’ composed trademarks.

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 all the goods and services, namely:

Class 1 Chemical products for use in industry, agriculture, horticulture and forestry (other than fungicides, herbicides and pesticides), chemical fertilizers and products for soil amendment; industrial chemicals consisting of calcium carbonate, magnesium carbonate, dolomite, calcium oxide, magnesium oxide, dolomitic lime, dolime, calcium hydroxide, magnesium hydroxide, hydrated dolime, milk of lime or milk of dolime, calcium or magnesium salts and mixtures out of all of the above materials; chemical substances for preserving foodstuffs; chemical additives for foodstuffs; chemical products for environmental applications, including, treatment of gases, desulphurisation, dechlorination, defluorination, and for collecting heavy metals and adsorbing organic pollutants, including, dioxins, furans and hydrocarbons; chemical products for use in the treatment of waste water, sludges, manures and organic or mineral wastes, chemical products for use in the treatment of drinking, industrial, municipal and process waters; chemical products for use in metallurgical processes with mineral and artificial additives based on the above mentioned substances for slag formation or cleaning steps in ferrous and non-ferrous metal-production; chemical products for use in industry with or without the addition of additives, including, silica, soda, caustic soda, boron, used for raw materials in the production of different types of glass and paper production.

Class 2 Paints, varnishes, lacquers, whitewash, lime wash, binding agents for paints; colorants; preservatives against rust and against deterioration of wood.

Class 5 Chemical preparations for pharmaceutical and veterinary purposes consisting of calcium carbonate, magnesium carbonate, dolomite, calcium oxide, magnesium oxide, dolomitic lime, dolime, calcium hydroxide, magnesium hydroxide, hydrated dolime, milk of lime or milk of dolime, calcium, magnesium salts and mixtures out of all of the above materials, additives for pharmaceutical and veterinary purposes; preparations for destroying vermin; fungicides; herbicides.

Class 19 Non-metallic building materials consisting of aggregates, grain, sand-fractions, powders or suspension out of lime, hydrated lime, limestone, dolime, dolomite, hydrated dolime and mixtures out of all of the above materials; lime, limestone; sand lime bricks, aerated concretes, mortars, plasters, renders, products for improvement and stabilising soils, asphalt and road foundations.

Class 31 Foodstuffs for cattle and poultry; lime for animal forage.

Class 42 Scientific, design, research and technological services in the field of civil engineering and chemistry; industrial research and analyses; consultancy in the field of civil engineering and chemistry; consultancy in the field of environment, metallurgy, paper production and glass.

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).

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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). This is not the case at issue, as it will be explained below.

The applied for sign ‘BLUE LIME’ consists of two words. In this regard, the applicant submits that both the term ‘BLUE’ and the term ‘LIME’ may have different meanings and the combination applied for does not exist in the English language; these facts would lead to the conclusion that the combination at issue is distinctive. However, the Office points out that for a trade mark to be refused registration under Article 7(1)(c) EUTMR it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). In the present case, the Office accept the typographical mistake in its notification dated 06/05/2020 where the word ‘blue’ was not defined. However, it is current practice that the Office is not obliged to define basic English words such as the name of a colour. Notwithstanding the foregoing, one of the most common meanings of the word ‘blue’ is a colour (also accepted by the applicant in its submissions) and the word ‘lime’ can also have the meaning of ‘a white caustic alkaline substance; any of a number of calcium compounds’ (https://www.lexico.com ). In this regard, the Office points out that there is nothing unusual in applying a colour (blue) to a substance, in the present case to an alkaline compound. Moreover, the applicant in its webpage refers to be a global leader in lime and refers to the product ‘lime’ in the same sense the Office did in its notification, including the multiple applications of lime products in the different industrial areas (from foodstuff for animals to building materials); see, among many others, the following example (search carried out on 03/08/2020):

https://www.lhoist.com/market-segment/chemicals

Lime products are used in many of the products we encounter every day.

• Citric acid: a raw material for the beverage, cosmetic and pharmaceutical industries.

• Polyhydric alcohols:used for adhesives, natural glues, paints and coatings (e.g. as white pigment extender (diluent) in emulsion paints).

• Propylene oxide: a precursor to the propylene glycols from which polyurethane plastics are made. Propylene oxide is also used in the production of wetting agents, solvents, anti-freeze agents, resins, emulsifiers and surfactants.

• Calcium soap: an important raw material for the paper industry, lubricant and stabilizer in the production of plastics, lubricants and lubricant in the metal industry.

• Calcium carbonates and minerals for cosmetics, such as the abrasives found in toothpaste, for matting in powder or to produce a peeling effect.

• Pharmaceuticals/special foods: such as a tablet excipient, for acid regulation in calcium effervescent tablets in mineral mixes, baby food and dietary foodstuffs.

Accordingly, in relation to the different products and services in Classes 1, 2, 5, 19, 31 and 42, the Office does not agree with the applicant’s assertions that the term ‘BLUE’ could be interpreted in relation to these goods and services as a ‘little butterfly’, or the term ‘LIME’ as a ‘citric fruit’. Therefore, taking into account that one of the possible meanings of the combination ‘BLUE LIME’ would be ‘blue caustic alkaline substance’ and that the expression could be used to describe characteristics of the good and services in question, Article 7.1.c) EUTMR is fully applicable. The expression applied for is grammatically correct and the relevant consumers, especially the professional public, will not have to make any interpretative effort to understand the meaning of the expression in relation to the objected goods and services. There is nothing about the sign in question that might, beyond its descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive trade mark for the goods and services concerned.

As regards the applicant’s argument that the registration of the combination ‘BLUE LIME’ will not prevent other competitors make use of the words ‘BLUE’ or ‘LIME’, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question. The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 88).

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.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO (EUTMA No 018 110 125 ‘BLUE BEE’, EUTMRs No 018 086 559 ‘BLUEMATTER’, No 017 996 256 blueCOOL’, No 017 137 217  ‘BLUEROCK’, No 016 746 364 ‘CLEARBLUE’, No 016 711 921 ‘BLUEWATER BIO’, No 016 688 806 ‘BlueZones’, No 016 550 923 ‘BLUESORB’, No 016 463 994 ‘bluefox’) according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Notwithstanding the foregoing, the Office has taken into account the examples quoted by the applicant. However, the Office wishes to point out that the fact that the examples share with the mark applied for the term ‘BLUE’ does not make them automatically comparable.

Insofar as the applicant cited allegedly similar signs that have been accepted by the Office, it is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Office must consider whether it should be followed. The Office must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Office concludes that the mark is barred from registration by the terms of Article 7(1)(b) and (c) EUTMR, it cannot decide otherwise simply because an equally descriptive and non-distinctive mark has been registered in the past.

Moreover, insofar as a certain inconsistency might have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to another mark to the benefit of someone else.

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

In the present case, it has become apparent that the sign applied for is caught by the ground for refusal set out in Article 7(1)(b) and (c) EUTMR because of the specific goods and services in respect of which registration is sought and because of the way in which the sign will be perceived by the relevant consumer.

Under these circumstances, the applicant cannot reasonably rely on the Office’s previous decisions, for the purposes of casting doubt on the conclusion that the trade mark applied for is devoid of distinctive character and descriptive in accordance with Article 7(1)(b) and (c) EUTMR.

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 018 219 307 is hereby rejected for the all the goods and services applied for.

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.

Ignacio IGLESIAS ARROYO