FROM SWEDEN | Decision 336/2016-2
Date Published: Sep 28, 2017
THE BOARDS OF APPEAL
DECISION of the Second Board of Appeal of 9 December 2016
In Case R 1336/2016-2
LSL Svenskmärkning AB Franzéngatan 6 105 33 Stockholm Sweden Applicant / Appellant represented by ADVOKATFIRMAN MARLAW AB, Sveavägen 31, 6tr, 111 34 Stockholm, Sweden
APPEAL relating to European Union trade mark application No 14 824 874
THE SECOND BOARD OF APPEAL
composed of C. Govers as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June 2014 on decisions by a single Member
Registrar: H. Dijkema
gives the following
Language of the case: English
09/12/2016, R 1336/2016-2, FROM SWEDEN (fig.)
Decision
Summary of the facts
1 By an application filed on 24 November 2015, LSL Svenskmärkning AB (‘the
applicant’) sought to register the figurative mark in blue and yellow
2
for the following list of goods and services:
Class 5 – Powdered milk for babies; lacteal flour for babies; milk sugar;
Class 29 – Sea foods; poultry; non-living molluscs; fish and seafood spreads; dairy products and dairy substitutes; birds eggs and egg products; oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); vegetable extracts for cooking; jellies, jams, compotes, fruit and vegetable spreads; prepared meals, soups and stocks, snacks and milk-based desserts; prepared meat dishes; drinks made from dairy products; drinks based on yogurt; edible dried flowers; sausages; sausage meat; smoked sausages; preserved sausages; uncooked sausages; vegetarian sausages; sausages in batter; vegetable powders, Coffee cream in the form of powder; Instant soup;
Class 30 – Ready-made dishes containing pasta; farinaceous foods; flour; cereal-based snack food; foodstuffs made from cereals; bread; rice-based snack food; pies; salts, seasonings, flavourings and condiments; baked goods, confectionery, chocolate and desserts; sugars, natural sweeteners, sweet coatings and fillings, bee products; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; sweets (candy), candy bars and chewing gum; prepared foodstuffs in the form of sauces; tea-based beverages; coffee-based beverages; chocolate-based beverages; seasoned coating for meat, fish and poultry; hot dog sandwiches; sausage rolls; hot dogs (prepared); sausage binding materials; hot sausage and ketchup in cut open bread rolls; cereal powders; powders for ice cream; puddings in powder form; flavorings in powder form; icing sugar; ginger [spice]; ice cream powder; dried sauce in powder form; drinks in powder form containing cocoa; spices in the form of powders; powder for the production of ice cream; powders for the preparation of ice-cream; powdered starch syrup [for food]; corn starch derivatives in powder form for making into drinks; tea of parched powder of barley with husk (mugi-cha); powdered preparations containing cocoa for use in making beverages; bread improvers being cereal based preparations;
Class 31 – Malts and unprocessed cereals; eggs for hatching, fertilized; poultry, live; chickens; foodstuffs for chickens; foodstuffs for poultry; foods containing chicken for feeding cats; foods containing chicken for feeding dogs; bird food; fresh fruits, nuts, vegetables and herbs; seeds for fruit; fruit trees; fruit shrubs; fruit residue [marc]; live animals; bouquets of fresh flowers; bouquets of dried flowers;
Class 32 – Non-alcoholic beverages; syrups for making beverages; squashes [non-alcoholic beverages]; juices; vegetable drinks; powders used in the preparation of fruit-based beverages; syrups for making non-alcoholic beverages; pastilles for effervescing beverages; water; flavoured water; beer; imitation beer; powders for effervescing beverages; powders used in the preparation of soft drinks;
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Class 33 – Alcoholic carbonated beverages, except beer; spirits [beverages]; alcoholic beverages of fruit; alcoholic energy drinks;
Class 35 – Advertising, marketing and promotional services; retail services in relation to foodstuffs; retail services in relation to non-alcoholic beverages; retail services in relation to dairy products; retail services in relation to preparations for making beverages; retail services in relation to dietary supplements; retail services in relation to alcoholic beverages (except beer); retail services in relation to beer; retail services in relation to fodder for animals; career advisory services (other than education and training advice); organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes;
Class 41 – Education and instruction; educational services relating to food technology; education services relating to the training of personnel in food technology;
Class 42 – Technical consultancy in relation to research services relating to foods and dietary supplements; professional advisory services relating to food technology; food sanitation consultation; research of foodstuffs; research relating to cultivation in agriculture; inspection of foodstuffs; quality control of food hygiene;
Class 43 – Services for the preparation of food and drink; food preparation services; consultancy services relating to food;
Class 44 – Nutrition consultancy; consultations related to nutrition; breeding and stud services; advice relating to the breeding of animals; animal grooming services; providing nutritional information about food; agricultural consultancy; agriculture services.
2 On 4 December 2015, the examiner sent the applicant a letter of provisional refusal of protection on the grounds that the application did not appear to be eligible for registration under Article 7(1)(b) and (c), in conjunction with Article 7(2) EUTMR, in respect of all of the goods mark. The examiner argued that:
– The objectionable goods and services are aimed at both average consumers
and a professional public.
– The awareness of the professional public will be high while the average consumer is considered to be reasonably well-informed and reasonably observant and circumspect.
– The relevant public with reference to whom the absolute grounds for refusal must be examined is the English-speaking consumer in the European Union.
– The trade mark contains words with the following meanings:
FROM = used to show the origin of something or someone: Ref. http://dictionary.cambridge.org/ SWEDEN = a kingdom in N Europe, in the eastern part of the Scandinavian Peninsula Ref. http://dictionary.infoplease.com/sweden
– The relevant consumer will understand the words as a meaningful
expression.
– The words ‘FROM SWEDEN’ immediately inform consumers without further reflection that the goods and services applied for originate in and/or are provided from Sweden.
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– The mark consists of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the geographical origin of the goods and services in question.
– The impact of the mark on the relevant public will be descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.
– The figurative elements of the contested mark are so minimal that they do not endow the contested mark with any distinctive character. Neither the circle nor the line appearing in the mark renders the mark distinctive.
– The use of a colour that is basic and/or commonly used on the market does not endow the mark with a sufficient degree of distinctive character. The colours of the mark refer to the colours of the Swedish flag, thus emphasising the message of the word SWEDEN.
3 On 22 March 2016, the applicant responded to the provisional refusal, the
content of which is reproduced in paragraph 6 below.
4 On 26 May 2016, the examiner took a decision (‘the contested decision’) entirely refusing the trade mark applied for on the grounds of Article 7(1)(b), (c) and Article 7(2) EUTMR. It can be summarised as follows:
– The Office cannot find other than that the mark is descriptive and devoid of
any distinctive character in relation to the goods and services at issue.
– The fact that the applicant is the owner of the food labelling concept ‘FROM SWEDEN’ and develops, manages and controls the use of the trade mark through licensing agreements is not relevant when it comes to the assessment of the mark’s distinctive character. The figurative elements of the mark do not render the mark as a whole distinctive as the colours yellow and blue are the colours of the Swedish flag and therefore just emphasise the fact that the products and services are from Sweden. As for the circle, it is, in addition to being a basic geometric shape, also a frequently used label shape. The yellow line would not make an impression on consumers and be remembered by them. They would at most understand the line to be a decorative feature and would not see it prima facie, and the mark as a whole, as an indication of commercial origin.
– It is very plausible that consumers are increasingly observant with regard to claims about the origin and environmental characteristics of food. Usually such messages are informative and this is how relevant consumers would view the mark; as an informative message with no elements to distinguish it, unless they have been educated to perceive this particular mark as an indication of commercial origin. However, the applicant does not claim that this is the case.
– The registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. Every trade mark, of whatever category, must be capable of identifying the products and services as originating from a particular
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undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark.
– Due to the impression produced by the mark, the connection between the relevant goods and services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR.
– As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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.
– Some of the marks referred to by the applicant contain elements that are
considered figurative enough, such as EUTM No 5 183 363,
.
– The Office practice has also become stricter and many such marks are now
refused.
– As for the reference the applicant makes to the Guidelines, the examples
given do not appear in the newest updated version.
– In Part B, Examination, Section 4, Absolute Grounds for Refusal, point 2.3.4.2 Assessment of the figurative threshold, Stylised word elements and additional figurative elements, the following examples are indicated as being devoid of any distinctive character:
– As for the applicant’s request that the text in the mark can be disclaimed if the objection is maintained, this request cannot be granted, due to the fact that it is the sign as a whole, not only certain descriptive elements, that is considered devoid of distinctive character (see 07/07/2006, R 1435/2005-1, 0% MERCURY, § 24).
5 On 22 July 2016, the applicant filed an appeal against the contested decision, requesting that the decision be mark set aside, namely to the extent that the examiner rejected the trade mark applied for. The statement of grounds of the appeal was received on the same date.
Grounds of appeal
6 The arguments raised in the statement of grounds may be summarised as
follows:
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– The applicant refers to its submissions filed on 22 March 2016 during the examination proceedings (its attachment 1), in which it argues, among others, that:
• LSL is the owner of the food labelling concept ‘FROM SWEDEN ‘. The company develops, manages and controls the use of the trade mark. The company also advocates the importance of Swedish production, raw materials and the Swedish food industry.
• Any company that wishes to label its food products with the trade mark must first sign a licensing agreement with LSL. The agreement contains the terms and conditions and the labelling requirements which must be met, both by the company’s own operation and all sub-suppliers of the company. Licensees must also pay an annual fee of EUR 300 to LSL.
• Consumers are increasingly observant as regards to claims about the origin and environmental characteristics of food. Therefore, a recognizable symbol which enables consumers to assign the strict requirements from LSL to food products is both useful and desired.
• The text of the contested mark may indicate the geographical origin of the products provided, but the combination of text and the specific graphic design elements are more than sufficiently distinctive in order for the average consumer to connect the trade mark with a specific trade origin. This becomes particularly apparent when comparing the trade mark to existing EUTM registrations with similar geographical terms and figurative design elements, which were rendered eligible for EUTM registration by the Office, see Appendix 1.
• While the text elements in some of these EUTM registrations also further indicate the character of the covered goods or services, this does not in any way add to the overall distinctiveness of the trade marks. The Office’s Guidelines give two examples of trade marks consisting of a geographical term and visual elements, which were rendered eligible for EUTM registration:
o EUTM No 10 894 996, for goods and services in Classes 12, 35 and
36 (registered)
o EUTM No 10 834 299, for goods and services in Classes 9, 38 and
42 (registered)
• In these cases, the sign before the word ‘Specialized’ and the five rectangles having a circular arrangement that are placed at the right side of the word ‘ECO’ were found to have an autonomous visual impact, with the same level of influence on the overall impression of the sign as the word element, and are therefore capable of attracting the consumer’s attention.
• It is obvious that the blue circle and the bent yellow line in the contested mark undeniably have an equal or more autonomous visual impact than the elements mentioned above.
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• Based on the Office’s decisions to grant registration for the abovementioned marks as well as the attached marks, it is apparent that the particular combination of a written geographical origin and a figurative design of the trade mark is sufficient to endow distinctive character.
• As follows from judgment 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, it is necessary to take the viewpoint of the relevant public in order to ascertain whether a trade mark applied for guarantees the identity of the origin of the marked product or service to the consumer. In this case, the relevant public will understand that the goods provided under the trade mark not only originate from Sweden, but are also certified under specific conditions for use applied by LSL to its licensees. In addition, these strict conditions for use of the trade mark applied by LSL to licensees will ensure an even more identifiable commercial origin of the trade mark.
• If the EUIPO still finds that the trade mark lacks distinctiveness, despite the fact that comparable trade marks have been registered in the past, LSL requests that the text element of the trade mark be disclaimed in accordance with Article 37(2) EUTMR.
• The strictly figurative design of the trade mark does, under all circumstances, have sufficient distinctiveness. This becomes particularly apparent when comparing the trade mark to existing EUTM registrations with similarly descriptive texts and figurative design elements which have been registered by the EUIPO, see appendix 2.
• LSL is of the opinion that the trade mark has sufficient distinctiveness, especially in light of the aforementioned case-law and compared to the existing EUTM registrations in appendix 1, and therefore should be registered for all the goods and services applied for.
• If the Office should nonetheless maintain its assessment, LSL requests that the text element in the trade mark be disclaimed.
– The contested mark is registrable according to the Office’s guidelines part
B, Examination, section 4, Absolute grounds for refusal, point 2.3.4.2.
– The applicant mentions the following three marks that were eligible for registration finding it incomprehensible how the contested application cannot be assessed as more distinctive than the examples:
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– The applicant contests the fact that the yellow line would not make an impression on consumers and would not be remembered, as the line might not make a sufficient impression but adds a crucial aspect of distinctiveness to the mark as a whole.
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– The design of the contested mark is a modern combination, where the upper part represents the blue sky, while the bottom part in blue is the sea. The yellow line between the sky and sea (swoosh) can be seen as a representation of rapeseed. The text ‘FROM SWEDEN’ symbolizes the setting sun in the horizon above the rapeseed. The shape of the words resembles the shape of the sun.
– The yellow ‘swoosh’ could be an interpretation for a Swedish path, i.e. an innovative and unconventional way to symbolize the Swedish origin of the products. The global impression of the mark is therefore sufficiently distinctive.
– For the relevant public the trade mark guarantees the identity of the origin of the marked product or service to the consumer. Consumers are increasingly observant as regards claims about the origin and environmental characteristics of food.
– In order to use the mark the following criteria must be met:
• All animals must have been born, raised and slaughtered in Sweden;
• Cultivation must take place in Sweden;
• In composite food products, at least 75% of the product must be Swedish;
• Meat, egg and milk ingredients must always be 100% Swedish, even in composite food products.
– The requirements are stricter than current Regulation (EC) No 1760/2000 of
the European Parliament and of the Council of 17 July 2000.
– The relevant public will understand that the goods provided under the contested mark are not only Swedish, but also certified under specific conditions for use applied by LSL to its licensees.
– Many EU countries are investigating new ways of informing consumers about this type of information. The EU Health Commissioner has approved the ‘experimental’ origin labelling decree that would require French dairy processors to label the origin of the milk used in their products. The mandatory origin labelling trial would include some meat ingredients in processed foods (see attachment 2)
– The growing demand by consumers to know the origin of their food is filed with a survey on origin labelling as attachment 3 and the Nordic food survey 2014 as attachment 4.
– According to the survey, up to 70% of consumers in Austria, France, Poland and Sweden consider the origin as an important factor when buying food. Increased labelling will make it easier for consumers to choose their products and their origin.
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– The contested mark is an addition to the growing trend of origin labelling, and is also a request made by the public at large. ‘FROM SWEDEN’ is voluntary labelling introduced for the consumer’s interest.
– The contested mark has sufficient distinctiveness and can be registered for all the goods and services applied for. Refusing the mark would go against the Office’s Guidelines and would be a step back for consumers in general who wish to be informed about the origin of foodstuffs.
– If the Board, however, were to maintain the examiner’s assessment, the applicant requests that the Board disclaim the text element in the contested mark so that the figurative design is registered.
Reasons
7 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible.
Preliminary remark on the applicable Regulations
8 The EUTM application was filed before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation (EUTMR) which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (EC) No 207/2009 (CTMR) is applicable to this appeal. However, for ease of reference the Board will refer to the ‘EUTMR’ and the new terminology introduced by the amending Regulation, bearing in mind that the material changes introduced by the latter Regulation will not apply to the case at hand.
9 Since the new European Union Trade Mark Implementing Regulation (EUTMIR) does not enter into force until 1 October 2017, the Board will continue to refer to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).
Article 7(1)(c) EUTMR
10 Article 7(1)(c) EUTMR provides that ‘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’ must not be registered.
11 According to the case-law, Article 7(1)(c) EUTMR prevents the signs or indications to which it refers from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31, and 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 27; see also 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 33 and the case-law cited).
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12 Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, pursuant to Article 7(1)(c) EUTMR, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; see, also, 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 34 and the case-law cited).
13 It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (15/07/2015, T-611/13, HOT, EU:T:2015:492, § 35 and the case-law cited).
14 Lastly, a sign’s descriptiveness can be assessed only by reference to the way in which it is understood by the relevant public and to the goods or services concerned (see 07/06/2005, T-316/03, MunichFinancialServices, EU:T:2005:201, § 26 and the case-law cited, and 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 36 and the case-law cited)).
Relevant public
15 The mark applied for, depicted below, is a figurative mark consisting of a circle, entirely in blue, except for the English words ‘FROM SWEDEN’ that are represented in yellow standard upper-case letters and placed in the upper half of the circle; placed below these words, there is a yellow line from left to right that curves very slightly:
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16 The English word ‘FROM’ in the mark applied for is ‘used to indicate the original location, situation, etc.’ and the English word ‘SWEDEN’ refers to ‘a Kingdom in North-Western Europe, in the Eastern part of the Scandinavia Peninsula (Collins English Dictionary).
17 Accordingly, the contested decision was right to find that the relevant public for the goods and services applied for consists of English-speaking consumers in the European Union, both general consumers as well as professionals. Accordingly, the awareness of the relevant public will range from average to high, as the contested decision undisputedly noted. In this respect, the Board points out that even a high attentiveness of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass- consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the
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latter public is active (see in this respect also, for example 11/10/ 2011, T-87/10, ‘Pipeline’, § 27-28).
18 The cited meanings of the words ‘FROM SWEDEN’ jointly form an obvious and meaningful expression that immediately informs consumers without further reflection that the goods and services applied for originate from and/or are provided from Sweden. The meaning as such of the expression as a whole has not been disputed by the applicant.
19 The expression is thus clearly descriptive, indicating a relevant characteristic of
the goods and services, i.e. that their geographical origin is Sweden.
20 The figurative elements of the mark applied for consist of the banal shape of a circle, in blue, and further of the two words in a standard typeface and in yellow, as well as a yellow, slightly curved line.
21 The colours blue and yellow are those of the Swedish flag. They, thus, only further reinforce the descriptive message that the marked goods and services have a Swedish origin, as the contested decision found.
22 As to the circle with a line, it must be recalled that the Court, which has repeatedly confirmed that, in principle, simple geometric devices, such as circles, lines, rectangles or common pentagons, or slight variations thereof, are unable to convey any message that can be remembered by consumers and will accordingly not be seen by them as a trade mark (see, 13/04/2011, T-159/10, Parallelogramme, EU:T:2011:176, § 23). The elements of a circle and a line, which are frequently used, will merely be seen as decorative. In view of their colouring, they also reinforce the Swedish origin of the goods and services.
23 It follows from the above that the figurative elements of the mark applied for, contrary to the applicant’s assertions, cannot endow the mark with distinctive character. To the contrary, they will either not be perceived as a trade mark by the relevant public, or they serve to reinforce the descriptive indication of the origin of the goods and services.
24 This finding is especially based on the perception of the sign applied for by relevant consumers. Indeed, a consumer on encountering the sign at issue on the goods or in relation to the services would consider it to be a mere indication of the country of origin of the goods and services, rather than as indication that the goods or services originate from a specific undertaking.
25 The applicant asserts that the upper part of the mark applied for ‘represents the blue sky, while the bottom part in blue is the sea. The yellow line between sky and sea (swoosh) can be seen as a representation of rapeseed. The text ‘FROM SWEDEN’ symbolizes the setting sun in the horizon above the rapeseed field [sic], while the shape of the words resembles the shape of the sun. The yellow ‘swoosh’ could be an interpretation of a Swedish path’. According to the Board, the relevant public is very unlikely to perceive the features described in the mark applied for as presented by the applicant, and certainly not without being provided with a detailed explanation to that extent. Besides, even if perceived as suggested by the applicant, the mark applied for still exudes a clear message: the goods and services originate from Sweden.
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26 As to the applicant’s arguments in relation to its status as the owner of the food labelling concept ‘FROM SWEDEN’, to its licence agreements and its labelling requirements, it is noted that according to the information provided by the applicant, the criteria used by the applicant mostly relate to the Swedish origin of the goods and services. This thus, again, underlines the fact that the applicant aims to guarantee their Swedish origin. Further, the arguments relating to the ownership of the food labelling concept and so forth are irrelevant for the assessment of the mark’s distinctive character for an individual trade mark application.
27 The Board has little doubt that the applicant rightly asserts that food labelling requirements are in increasing demand by European consumers (at this point the Board also makes reference to the applicant’s Attachments 2-4), nor does the Board doubt the assertion that consumers are increasingly observant in respect of claims about, for instance, the origin of food products. Nonetheless, the fact of the matter is that in the case of the mark applied for, as will indeed often be the case with claims in respect of the origin or other characteristic of, for instance, food products, the message is clearly informative and descriptive, and thus falls foul of Article 7(1)(c) EUTMR.
28 It is further noted that the applicant did not argue that its mark applied for has acquired distinctiveness pursuant to Article 7(3) EUTMR, nor has the applicant submitted evidence to that extent.
29 The Board thus finds the mark applied for manifestly descriptive of the geographical origin of all of the goods and services applied for and consequently objectionable on the basis of Article 7(1)(c) EUTMR.
30 In fact, in relation to the contested goods in Class 5 ‘powdered milk for babies; lacteal flour for babies; milk sugar’, the mark applied for clearly indicates that these goods originate from Sweden.
25 The mark applied for equally indicates the Swedish origin of the goods applied for in Class 29, which are foodstuffs of animal origin, foodstuffs involving vegetables and fruits or vegetable-based and fruit-based and similar foodstuffs prepared for human consumption or conservation, also including foodstuffs in liquid form, as well as the foodstuffs applied for in Class 30, that are those of plant origin prepared for consumption or conservation, as well as of additives for the enhancement of the flavour of foods, also including foodstuffs in liquid form.
26 Likewise, the mark applied for in relation to the contested ‘Non-alcoholic beverages; syrups for making beverages; squashes [non-alcoholic beverages]; juices; vegetable drinks; powders used in the preparation of fruit-based beverages; syrups for making non-alcoholic beverages; pastilles for effervescing beverages; water; flavoured water; beer; imitation beer; powders for effervescing beverages; powders used in the preparation of soft drinks’ in Class 32 and the contested ‘Alcoholic carbonated beverages, except beer; spirits [beverages]; alcoholic beverages of fruit; alcoholic energy drinks’ in Class 33, will simply by understood as that these goods originate from Sweden.
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27 In relation to the ‘Advertising, marketing and promotional services’ in Class 35 as well as the ‘retail services in relation to foodstuffs; retail services in relation to non-alcoholic beverages; retail services in relation to dairy products; retail services in relation to preparations for making beverages; retail services in relation to dietary supplements; retail services in relation to alcoholic beverages (except beer); retail services in relation to beer; retail services in relation to fodder for animals;’ and the ‘career advisory services (other than education and training advice); organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes’, all in Class 35, the mark applied for merely indicates that the services will be provided from Sweden, relate to Sweden or to goods originating from Sweden.
28 Equally, the mark applied in relation to the contested services in Class 41 ‘education and instruction; educational services relating to food technology; education services relating to the training of personnel in food technology’ will be understood as that the education services will be provided from or in Sweden or relate to Sweden or Swedish technology, goods or services.
29 In a similar manner, in relation to the contested ‘technical consultancy in relation to research services relating to foods and dietary supplements; professional advisory services relating to food technology; food sanitation consultation; research of foodstuffs; research relating to cultivation in agriculture; inspection of foodstuffs; quality control of food hygiene’ in Class 42, the mark applied for will be understood as indicating that either the services or their objectives originate from, or will be performed in, Sweden.
30 The same goes for the contested services in Class 43 ‘services for the preparation of food and drink; food preparation services; consultancy services relating to food’, in relation to which the mark applied for will be understood to indicate that the services originate from or will be performed in Sweden or that their objectives do.
31 Finally, in respect of the contested services in Class 44 ‘ nutrition consultancy; consultations related to nutrition; breeding and stud services; advice relating to the breeding of animals; animal grooming services; providing nutritional information about food; agricultural consultancy; agriculture services’, the mark applied for will be perceived as indicating that the services will be performed from or otherwise originate from or relate to Sweden, or that the object of the services originates from or relates to Sweden.
32 In its submissions before the Examination Division and again in its statement of grounds, the applicant has made reference to several previous EUTM registrations.
33 In respect of EUTMs Nos 10 894 996 and 10 834 299, they contain the terms ‘SPECIALIZED’ or ‘ECO’. Therefore, contrary to the applicant’s claim, they do not contain ‘similar geographical terms’ and already are for that reason incomparable to the mark applied for in the case at hand.
34 As to the marks mentioned by the applicant depiced below, it is obvious that they employ lettertypes that deviate from commonly-used standard typefaces,
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35 The applicant has further submitted lists of EUTM registrations (its
Appendices 1 and 2 in the examination proceedings).
36 In this respect, the contested decision correctly noted that some of the marks referred to by the applicant contained elements that were considered sufficiently
distinctive, such as EUTM No 5 183 363,
. Further, it is not clear from the applicant’s submissions whether the marks in question have been registered on the basis of having acquired distinctiveness.
37 In respect of the earlier EUTMs invoked by the applicant, the Board will like to recall that although the Office should of course strive for consistency and use the same registration criteria in every case, registration practice evolves over time and it is inevitable that dubious brands occasionally find their way to the register. This is the purpose of a cancellation system, which allows for such marks to be removed from the EUTM Register. In any event, even if the Board were to admit that the Office has not always been consistent in relation to trade marks of the kind as represented by the mark applied for, this would nevertheless not be sufficient reason to justify annulling the contested decision. On balance, the contested decision appears to be consistent with the Office’s general practice and is, moreover, in the Board’s opinion, based on a correct application of Article 7(1)(c) EUTMR. Further, as far as the Board is aware, none or only a few of the other acceptances the applicant cites have been assessed by the Board of Appeal. The Board cannot be bound by decisions of first-instance departments which have not been subject to appeal (see 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65).
38 It must be recalled that, according to settled case-law, decisions concerning the registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as an EU 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).
39 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 (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited).
09/12/2016, R 1336/2016-2, FROM SWEDEN (fig.)
14
such as the one used in the mark applied for. They are completely dissimilar to the mark applied for overall.
15
40 Finally, the Board would like to underline here that the Court has held that, insofar as a certain inconsistency would 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 (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).
41 In light of the above, the message of the mark applied for, taken as a whole, is meaningful in respect of all of the contested goods and services and consequently, the Board does not find that the contested decision erred in finding that the mark taken as whole is descriptive in the sense of Article 7(1)(c) EUTMR in relation to the contested goods and services.
42 It follows that the mark applied for is objectionable on the basis of Article 7(1)
(c) EUTMR for all of the contested goods and services.
Article 7(1)(b) EUTMR
43 It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the Board shares the contested decision’s finding that the sign applied for also lacks distinctiveness with respect to the goods and services concerned for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86, and 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).
44 A mark which, as in the case at hand, would simply be seen as a descriptive expression, cannot guarantee the identity of the origin of the marked goods and services to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods and services 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 or 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).
45 English speakers will not see the mark as a badge of a particular trade origin for the goods and services at issue, but as a descriptive promotional expression.
46 It has thus become apparent that the mark applied for falls within the scope of the grounds for refusal set out in Article 7(1)(b) and (c) EUTMR because of the goods and services in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.
09/12/2016, R 1336/2016-2, FROM SWEDEN (fig.)
16
47 The applicant has requested that if the Board were to maintain the objection against the registration of the mark applied for, the applicant would disclaim the text elements in the mark applied for, so that the figurative design could be registered.
48 In this respect, Article 37(2) EUTMR stipulates that:
‘Where the trade mark contains an element which is not distinctive, and where the inclusion of that element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, the Office may request, as a condition for registration of said trade mark, that the applicant state that he disclaims any exclusive right to such element. Any disclaimer shall be published together with the application or the registration of the European trade mark, as the case may be.’
49 However, the Board agrees with the contested decision that, given that the mark as a whole lacks distinctive character, the disclaimer of exclusive rights to said elements cannot dispel the doubts as to the scope of protection of the trade mark. As explained above, the figurative elements of the trade mark in question will be neither perceived nor remembered by the relevant consumer as being distinctive and indicative of the commercial origin of the designated goods and services, and therefore said elements do not serve to increase the distinctive character of the trade mark as a whole. Therefore, in sum, the disclaimer of exclusive rights to the element ‘FROM SWEDEN’ is incapable of remedying the trade mark’s descriptive nature and lack of distinctive character, and consequently does not render the sign eligible for registration.
50 Consequently, the trade mark applied for is devoid of distinctive character under
Article 7(1)(b) EUTMR.
51 By virtue of the foregoing, the appeal must be dismissed.
09/12/2016, R 1336/2016-2, FROM SWEDEN (fig.)
Order
On those grounds,
THE BOARD
hereby:
Dismisses the appeal.
Signed
C. Govers
Registrar:
Signed
H.Dijkema
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09/12/2016, R 1336/2016-2, FROM SWEDEN (fig.)