Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 06/11/2015

STOBBS

Endurance House, Vision Park, Chivers Way

Cambridge CB24 9ZR

REINO UNIDO

Application No:	012081717
Your reference:	2260-1396/JS/RF
Trade mark:	Finest
Mark type:	Figurative mark
Applicant:	Tesco Stores Limited Tesco House Delamare Road Cheshunt, Hertfordshire EN8 9SL REINO UNIDO

The Office raised an objection on 18/09/2013 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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. Further, on 27/03/2014, the Office replied to the applicant’s statements of 3 and 20/01/2014, in which it supported its previous findings that the mark applied for is inherently devoid of distinctive character, however the Office granted the applicant an additional time limit to provide evidence of acquired distinctiveness (see attached letter), which was provided by the applicant on 28/07/2014. In the mentioned submissions of the applicant, the evidence provided should have demonstrated the acquired distinctiveness in the part of the European Union where it was devoid of any such character. This means that the applicant should have provided evidence relating to the UK, Ireland and Malta. The applicant, however, did not provide any evidence of acquired distinctiveness of the mark applied for in relation to Malta. Therefore, the submitted evidence was not sufficient to accept the mark on the basis of acquired distinctiveness.

However, on 20/08/2014 the Office acknowledged that the applicant in its submissions assumed that since the mark applied for is an English word, the acquired distinctiveness of the mark should be demonstrated in the UK and Ireland. Even though this assumption is not correct, the Office on this date granted the applicant another extension of time of one month to provide the missing evidence of acquired distinctiveness in relation to Malta. In its submissions of 22/09/2015, 20/01/2015, 22/06/2015 and 24/08/2015 the applicant provided the missing evidence of acquired distinctiveness in relation to Malta.

The applicant’s observations contained in all its submissions may be summarised as follows:

1. The applicant is of the opinion that the combination of the word “finest”, its presentation including background and font and finally the device of the star make the mark as a whole distinctive. Further, the applicant underlines that the star device has no relevance whatsoever to the goods and services in question, and should be regarded as distinctive, especially that in the opinion of the applicant, this element is not a commonplace one.

2. The applicant claims that no other competitor is using the term “finest”.

3. The applicant claims that the mark has acquired distinctiveness through the use of the mark.

Pursuant to Article 75 CTMR, 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), ‘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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16 September 2004, C-329/02 P, ‘SAT.2’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) 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 (See judgment of 23 October 2003, C‑191/01 P, ‘DOUBLEMINT’, paragraph 31).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer's point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26 November 2003, T-222/02, ‘ROBOTUNITS’, paragraph 34).

Point 1

The applicant is of the opinion that the combination of the word “finest”, its presentation including background and font and finally the device of the star make the mark as a whole distinctive. Further, the applicant underlines that the star element has no relevance whatsoever to the goods and services in question, and should be regarded as distinctive, especially that in the opinion of the applicant, the star element is not a commonplace one.

The applicant holds that the mark applied for is distinctive because of a specific way of combining its elements. The special font used, the background and the star device would, according to the applicant, bring additional distinctive character to the mark. In response, it has to be underlined that the primary function of a trade mark is to act as a badge of origin, identifying the goods and services of a company. In the case at hand, the Office believes that the relevant consumer will not be able to distinguish the applicant’s products and services from those of other competitors merely on the basis of the font used and a star device. There are no additional elements that will attract the consumer’s attention, such as unusual figurative devices or distinctive names. Consequently, the mark applied for remains a laudatory phrase devoid of distinctive character and at the same time it is descriptive of the quality of the goods and services applied for.

As it is true that the relevant public may be used to supermarkets using laudatory phrases in relation to their products, this is not an argument in support of the distinctive character of the mark at issue. While it correct that the stylisation of such laudatory words or phrases may render them distinctive, it remains true that the trade mark applied for conveys figurative elements which are so minimal that they do not bestow the mark applied for with distinctive character. Therefore this argument cannot be taken under consideration.

Further, the Office must respectfully disagree with the applicant that the star element has no relevance whatsoever to the goods and services in question. In the opinion of the Office, the star device is commonly used in marketing, symbolising higher quality or higher rank. It is also confirmed by dictionary entries, e.g.: an emblem shaped like a conventionalized star, usually with five or more points, often used as a symbol of rank, an award, etc. (Collins English Dictionary) or A star symbol used to indicate a category of excellence: the hotel has three stars (Oxford English Dictionary). Therefore the Office cannot share the view of the applicant that the star element brings the necessary amount of distinctiveness to the mark. The Office is also strongly confident that the star device is commonplace and will not add to the mark’s distinctiveness.

As regards the applicant’s argument that a number of similar registrations, also consisting of or containing symbol of a star, which have been accepted by OHIM, it is sufficient to point out that, according to settled case‑law, decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Office (see judgment of 15 September 2005, C-37/03P, ‘BioID’, paragraph 47 and judgment of 9 October 2002, T‑36/01, ‘glass-sheet surface’, paragraph 35).

Nevertheless, and by way of clarification, in order for previous registrations to be considered analogous to the present case, it is not enough to simply show that they contain one of the component parts of the sign applied for, because the sign has been objected to when viewed as a whole and not because of the meanings of its individual component parts. The previous registrations cited by the applicant are all sufficiently dissimilar to the present application for them to be dismissed as arguments in favour of the registration of the previous sign.

As regards the national decisions referred to by the applicant, it must be borne in mind that, as is clear from the case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (see judgment of 5 December 2000, T-32/00, ‘electronica’, paragraph 47). Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, paragraph 47).

It must be reiterated that the marks referred to in Article 7(1)(b) CTMR 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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65). In the opinion of the Office, the mark applied for is not sufficiently distinctive to serve as an indication of origin of the goods and services in question.

Point 2

The applicant claims that no other competitor is using the term “finest”.

As regards the applicant’s argument that there are no other competitors which make use of the same combinations, it must be stressed that 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 (see judgment of 15 September 2005, T-320/03, ‘LIVE RICHLY’, paragraph 88).

Further, it must be observed that, in paragraph 35 of Windsurfing Chiemsee, the ECJ held that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) CTMR, does not depend on there being a real, current or serious need to leave a sign or indication free (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, paragraph 39).

It also has to be noted that according to the guidelines concerning proceedings before the Office for Harmonization in the Internal Market, whether the Applicant is the only person offering the goods and services for which the mark is descriptive, is not relevant for Article 7 (1) (c) (page 6).

Further, on 22/09/2014 the applicant stated that the Office did not address the Applicant’s previous submissions regarding the relevant consumer and the territorial extent of the objection. As such, the specific nature of the objection and interaction with previous observations on the specific point of English speaking members of the Community is unknown.

In relation to the relevant consumer, the Office would like to note the following: distinctive character, including that acquired through use, of a sign must be assessed in relation to the presumed perception of the average consumer for the category of goods or services in question. These consumers are deemed to be reasonably well informed, and reasonably observant and circumspect. The definition of the relevant public is linked to an examination of the intended purchasers of the goods or services concerned, since it is in relation to those purchasers that the mark must perform its essential function. Consequently, such a definition must be arrived at by reference to the essential function of a trade mark, namely to guarantee the identity of the origin of the goods or services covered by the mark to consumers or end-users by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 33, 38). The relevant consumer includes, therefore, not only persons who have actually purchased the goods and services but also any potentially interested person, in the strict sense of prospective purchasers (judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paras 41 et seq.).

In accordance with the above, the Office stated in its notifications that the objectionable goods and services covered by the mark applied for are both everyday consumption and specialised goods and services and are aimed at both average consumers and a professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

As far as the question of territorial extent of the objection is concerned, the Office would like to remind that according to its practice, and Article 1 CTMR, a Community trade mark has a unitary character and has equal effect throughout the European Union. Article 7(2) CTMR provides that a trade mark must be refused registration if an absolute ground exists only in part of the European Union. As a logical consequence thereto, acquired distinctiveness must be established throughout the territory in which the trade mark did not, ab initio, have such character (judgment of 22/06/2006, C-0025/05P, ‘Sweet wrapper’, paras 83, 86; and judgment of 29/09/2010, T-0378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, para. 30). This is because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).

Point 3

The question of acquired distinctiveness

Under Article 7(3) CTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3), the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d), which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader (see judgment of the CFI of 10 November 2004, T-396/02, ‘shape of a sweet’, paragraph 55).

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages (see judgment of 4 May 1999, C-108/97 and C-109/97, ‘Chiemsee’, paragraph 52 and judgment of 10 November 2004, T-396/02, ‘shape of a sweet’, , paragraph 56).

Second, in order to have the registration of a trade mark accepted under Article 7(3), the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgment of 10 November 2004, T-396/02, ‘shape of a sweet’, paragraph 57).

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied (see judgment of 10 November 2004, T-396/02, ‘shape of a sweet’, paragraph 58 and Judgment of 22 June 2006, C-25/05P, ‘sweet wraper’, paragraph 75.).

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (see judgment of 18 June 2002, C-299/99, paragraph 63 and judgment of 10 November 2004, T-396/02, ‘shape of a sweet’, paragraph 59).

Fifth, the use must be of the trade mark applied for and not of a significantly different variation.

Sixth, the more descriptive and non-distinctive the mark applied for is considered, the more long-lasting and extensive use before filing the application is required to establish that the mark has acquired distinctiveness through use made of it.

Articles 7(3) and 52(2) CTMR not only require intensive use of the sign by the respondent, but go further than that. The result of the use made of the sign must be such that the sign, originally incapable of performing the function of indicating origin, which is the central function of a trade mark, now fulfils this function as a result of that use. The identification by the relevant public of the product as originating from a given undertaking must be the result of the use of the mark as a trade mark, which makes it capable of distinguishing the products concerned from those of other undertakings. This must be assessed in relation to the goods or services in respect of which registration is applied for, and by assessing the evidence, which relates, inter alia, to the market share held by the mark; how intensive, geographically widespread and long­ standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 18/06/2002, C-299/99, 'Remington', paragraphs 59, 60 and 64).

Moreover, the Office highlights that, according to the General Court (see, inter alia, judgment of 12 September 2007, T-141/06, ‘Glaverbel’, point 40), a distinction must be made between ‘direct proof’ of acquisition of distinctive character (surveys, evidence of the market shares held by the mark, statements from Chambers of Commerce and Industry or other trade and professional associations) and ‘secondary evidence’ (sales volumes and advertising material, duration of use) that are merely indicative of the mark’s recognition on the market. Though secondary evidence may serve to corroborate direct proof, it cannot substitute it.

The applicant provided the following submissions as the evidence that the mark applied for acquired distinctiveness through use that has been made of it:

Key evidence in relation to the UK and Republic of Ireland:

1. Evidence relating to the market share

According to the applicant’s statements, it enjoys a UK market share of 28.9% in the Supermarket retail market, and the brand applied for has held a market share of approximately 14% of the ‘premium own label’ brand market in the UK between the years of 2010 and 2013.

The market share of the Applicant in the Republic of Ireland is 26%, with 87% of Irish shoppers frequenting Tesco Stores.

2. Evidence relating to how intensive, geographically widespread and long-standing use of the mark has been

The applicant confirms that the brand applied for was launched in 1998 and in 2012/2013 enjoyed sales of over £1.4 billion pounds in the UK and Ireland. The applicant has over 7,300 stores worldwide and employs over 500,000 people. In the UK alone, there are over 3,300 stores and 310,000 employees. In the 52 weeks ending on 22 February 2014, total UK sales were £43.570 billion, generating £2.1 billion in profits.

The applicant employs 310’000 staff in the UK alone which equates to 1.011% of the entire labour market in the UK. The applicant submits that in 2012 over 640 million products were sold under the mark applied for in the UK and Ireland, which equates to over 1.7 million products under that mark being sold each day.

3. Evidence relating to investments made by the Applicant in promoting the mark

The applicant confirms that the approximate marketing spend in relation to the mark applied for between the years 2006 and 2014 is £13.9 million, which has been spent on the promotion of the brand across TV, Press, Cinema, Digital and Partnership advertising. During the period March 2012-March 2013, £4.23 million was spent on advertising in relation to the brand applied for.

Advertising and promotion of the mark applied for has been across a wide range of mediums, and due to the fact that the applicant’s customer base is extremely broad, it is intended to reach all sectors of the relevant class of consumers.

4. Information on the proportion of the relevant class of persons which, because of the mark, identifies the goods concerned as originating from the applicant – and statements from chambers of commerce and industry or other trade and professional associations as well as consumer surveys

According to the research conducted by the applicant it is confirmed that 98% of the public is aware of the brand “Tesco Finest*.”

The various press articles exhibited in the applicant’s submissions demonstrate the authors referring to the applicant’s sign as a brand.

5. Use of the mark

The applicant proves that the use has been consistent over a period of 15 years prior to the filing date, since the brand launched in 1998.

It is also sported by a series of newspaper and magazine articles which refer to the applicant’s trade mark applied for as a brand.

The applicant claims that it sells more than 600 million products annually in the following fields: homeware, cutlery, bed linen, towels, gifts, glassware, paper, protective cases and accessories, health and beauty products, fragrance/perfume, food, grocery, ingredients, beers, alcoholic beverages, insurance, financial services, telecommunication services, bathrooms/kitchens.

After the additional time limit was granted to the applicant to provide additional evidence of use of the mark in relation to Malta, the applicant submitted the following:

1. Information on the historical relevance of the English language in Malta and the percentage of its population actually speaking English.

2. Information on promotion, sale, notoriety and exposure in Malta of the applicant. The applicant presented an article¹, allegedly confirming that the applicant has actively traded in Malta through a third party retailer. Further, the applicant provided additional articles and website reports demonstrating knowledge of applicant in Malta; these sources include:

1. http://www.howtomalta.com/2014/07/tesco-is-coming-to-malta.html , accessed on 05/11/2015;

2. http://www.timesofmalta.com/articles/view/20101124/business/supermarket-giant-tesco-plans-more-european-stores.337550 , accessed on 05/11/2015;

3. http://britishexpat.com/expatforum/malta/viewtopic.php?t=12509 , unable to be accessed.

4. information on applicant’s website hits originating in Malta;

5. Distributor agreement confirming commercial relationship between the applicant and a chain of supermarkets in Malta, including sales of products bearing the mark applied for in Malta between January and July 2015.

3. The applicant claims that it has been recognised by the OHIM and the Board of Appeal in The Concert Channel LLC v Office for Harmonization in the Internal Market (Trade Marks and Design) (Case R 2423/2011-2) that internet search engines provide businesses and consumers with an easily accessible forum for the promotion of goods and services. The following screenshots demonstrate the intensity of web site presence maintained by the applicant. It is submitted that a significant proportion of the relevant public, including in Malta, are exposed to this material and would be educated by it.

4. The applicant’s use and notoriety in the UK and ROI would be reasonably known to a substantial proportion of the Maltese population, and as such can be taken into account.

5. Whilst it is common for an objection to be maintained on the basis that evidence of use has not been demonstrated in Malta, the factual and legal justification for such an objection is flawed given the Maltese demographic and language.

6. According to the applicant, the information contained within these submissions suggests that a reasonable percentage of the Maltese population actively engage with the applicant’s promotional and marketing activity which is primarily focused at the UK, Irish and Central European markets. As such, it is clear for the applicant that the evidence of use and strong reputation in the mark applied for supporting the applicant’s claim of acquired distinctiveness can be extrapolated to Malta.

In response to the applicant’s submissions, the following must be held:

Point 1

Information on the historical relevance of the English language in Malta and the percentage of its population actually speaking English.

According to the practice of the Office as quoted in the guidelines for examination in the Office for Harmonization in the Internal Market, it must be held that where the CTM applied for is rejected with respect to its meaning in a specific language, acquired distinctiveness through use must be shown at least with respect to the Member States in which that language is an official language.

Particular care should be taken when a language is an official language in more than one EU Member State. In such cases, when dealing with an absolute grounds objection based on the meaning of wording in a certain language, acquired distinctiveness through use must be proven for each of the Member States where that language is official (as well as any other Member States or markets where it will be understood).

English is an official language in the United Kingdom, in Ireland and in Malta. Any claim that acquired distinctiveness through use enables the applied-for sign to overcome an absolute grounds objection based on the meaning of English language wording must automatically be examined for all these countries. Therefore the fact that a certain proportion of the relevant public in Malta does actually speak Maltese is not relevant.

Point 2

Information on promotion, sale, notoriety and exposure in Malta of the applicant. The applicant presented an article², allegedly confirming that the applicant has actively traded in Malta through a third party retailer.

The Office cannot accept this short note of 14/09/2002 to be of any significance. Not only the applicant did not provide any information on how many persons from among the relevant public were reached by this note, nor is there any indication of how it was distributed, but also the contents of the note exclude the possibility that it might enable the relevant public in Malta to recognize the goods or services marked with this sign as originating from the applicant’s undertaking.

In particular, the note reads: “…Tesco (…) admitting it had supplied Nicholsons up until two years ago, but has had no contact since”. In fact, the note confirms the opposite – from 2000 the relevant public in Malta did not have any chance to get acquainted with the goods and services provided by the applicant, not to mention the goods and services bearing the mark applied for.

Further, the applicant provided additional articles and website reports demonstrating knowledge of applicant in Malta. These included the following website articles:

1. http://www.howtomalta.com/2014/07/tesco-is-coming-to-malta.html , accessed on 05/11/2015. This article describes Tesco’s plans to enter Malta’s market, however even those plans did not include the attempt to provide goods and services under the applicant’s trade mark, and more particularly, under the mark applied for. Moreover, the article was published on 9/07/2014, which means it post-dates the filing date of the application and cannot be taken under consideration.

2. http://www.timesofmalta.com/articles/view/20101124/business/supermarket-giant-tesco-plans-more-european-stores.337550 , accessed on 05/11/2015. This article contains information relating to the planned growth of the applicant, however in other territories than Malta. Therefore also this material cannot be used as a proof that it enables the relevant public in Malta to recognize the goods or services marked with this sign as originating from the applicant’s undertaking.

3. The article under the address http://britishexpat.com/expatforum /malta/viewtopic.php?t=12509 , was unable to be accessed.

4. Information on applicant’s website hits originating in Malta. The applicant provided evidence relating to the number of entries to the websites, where the mark applied for was promoted. The number of visits is around 200,000; however, the claim that the mark is visible on different websites cannot be verified. First, the proprietor has submitted only the table with numbers and just a few printouts of the websites themselves, which did not show how frequently the mark applied for was used on these websites. Second, the mere presence of a trade mark on a website, without any knowledge of how popular these websites are (e.g. by indicating of what percentage of Malta’s internet users entered these websites), tells little about the recognition of the trade mark amongst the relevant public.

5. Distributor agreement confirming commercial relationship between the applicant and a chain of supermarkets in Malta, including sales of products bearing the mark applied for in Malta between January and July 2015. The applicant acknowledges that this evidence post-dates the filing date of the application; however, it submits that it can be relied on to support the application when it is considered in conjunction with the substantial evidence already submitted. However, the Office is of the opinion that no valid and valuable evidence has been submitted so far, therefore it cannot be taken under consideration.

Point 3

The applicant claims that the mere fact that the relevant public in Malta did have the opportunity to access the applicant’s website is sufficient to demonstrate that that a significant proportion of the relevant public are exposed to this material and would be educated by it. The Office cannot agree with this statement, bearing in mind that the mere presence of a trade mark on a website, without any knowledge of how popular these websites are tells little about the recognition of the trade mark amongst the relevant public.

Point 4

The applicant’s use and notoriety in the UK and ROI would be reasonably known to a substantial proportion of the Maltese population, and as such can be taken into account.

The Office agrees that it might be possible that a significant proportion of the relevant public in Malta might be aware of the applicant’s undertakings in the UK or ROI. However, the applicant did not present any such data, which might be derived from e.g. opinion polls. Furthermore, even if such knowledge could be imagined, it also remains to be proven that the significant proportion of the relevant public recognizes goods and services of the application, which is branded with the use of the mark applied for, originates form the applicant’s undertaking. The Office did not find any such evidence in the applicant’s submissions.

Point 5

Whilst it is common for an objection to be maintained on the basis that evidence of use has not been demonstrated in Malta, the factual and legal justification for such an objection is flawed given the Maltese demographic and language.

The Office does not agree with this finding, because the unitary character of the Community trade mark requires a sign to possess distinctive character, inherent or acquired through use, throughout the European Union (judgment of 17/05/2011, T-7/10, ‘υγεία’, para. 40). It would be paradoxical to accept, on the one hand, pursuant to Article 3(1)(b) TMD that a Member State has to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other, that that same Member State has to respect a Community trade mark relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State (judgment of 14/12/2011, T-237/10, ‘Louis Vuitton’, para. 100).

Point 6

According to the applicant, the information contained within these submissions suggests that a reasonable percentage of the Maltese population actively engage with the applicant’s promotional and marketing activity which is primarily focused at the UK, Irish and Central European markets. As such, it is clear for the applicant that the evidence of use and strong reputation in the mark applied for supporting the applicant’s claim of acquired distinctiveness can be extrapolated to Malta.

According to the Office’s practice, extrapolation is possible where the market is homogenous and if at least some evidence is submitted. The market conditions and the consumer habits have to be comparable. Consequently, it is particularly important that the applicant submits data concerning the size of the market, its own market share, and if possible that of its main competitors, as well as its marketing expenses. Only if all data is comparable, may the Office extrapolate the results from one territory to another.

In the case at issue the Office is of the opinion that the applicant did not provide any relevant and convincing data in relation to Malta, therefore extrapolation is not possible here.

Overall, it must be noted that the documents provided, which refer to use of the mark applied for in the territory of Malta, are not sufficient to demonstrate that distinctive character has been acquired through use in Malta. The applicant did not provide any brand recognition report, marketing or advertising expenditure, or any independent evidence. Information relating to the mere presence of a trade mark on a website, without any knowledge of how popular these websites are, tells little about the recognition of the trade mark amongst the relevant public.

The submitted material does not show that the goods and services were sold and there is no independent evidence which relates to the market share held by the mark. Further, there is no independent evidence showing how intensive, geographically widespread and long-standing use of the mark has been or the amount invested by the undertaking in promoting the trade mark.

Thus, the proprietor has failed to demonstrate that the mark has acquired distinctiveness in Malta within the meaning and under the conditions laid down in Article 7(3) CTMR. Bearing in mind that in order to have the registration of a trade mark accepted under Article 7(3), the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation (see judgment of 10 November 2004, T-396/02, ‘shape of a sweet’, paragraph 57), the fact that the applicant did not demonstrate that the mark has acquired distinctiveness in Malta is sufficient to refuse registration of the mark applied for and therefore the Office will not assess the evidence of use of the mark in the UK and in the Republic of Ireland.

Finally, in its last submissions, the applicant has requested a new opportunity to submit further observations.

The applicant has requested an additional period to file additional evidence in support of the application, if the objection is maintained. This request is not granted. The applicant should have submitted all its observations within the deadline of two months starting from 18/09/2013 when the Office sent the objection letter to the applicant. Despite this, bearing in mind the complexity of the case, the Office has granted several extensions of time limits. Yet another round of submissions would unnecessarily lengthen the examination proceedings and would constitute discrimination in relation to other applicants who are usually granted one round of submissions. In practice, the only reason to lengthen the examination proceedings is when time extensions are granted when this is appropriate under the circumstances pursuant to Rule 71 CTMIR after the sending of the Office’s first objection letter. The Office considers that in the case at hand an extension of time is not appropriate under the circumstances. The Office’s refusal to grant a further period of time does not contravene Article 75 CTMR as the applicant has had an opportunity to present its comments.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 012081717 - Finest is hereby rejected for all the goods and services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Marcin MORAWSKI