Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 23/03/2017

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	013972724
Your reference:	T173411.EM.02/kjp/WILSONA
Trade mark:	NERIUM
Mark type:	Word mark
Applicant:	Nerium Biotechnology, Inc. 11467 Huebner Road Suite 175 San Antonio Texas 78230 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/09/2016 pursuant to Article 7(1)(b) and (c) EUTMR 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 26/01/2017, which may be summarised as follows:

1. The word ‘NERIUM’ is a distinctive element in the mark applied for because it is the first word of the applicant’s company name, Nerium Biotechnology, Inc., and a little-known Latin name for a shrub. The relevant consumer is not a botanist but the average consumer whose degree of attention is average for the goods in question. The full name of the shrub is Nerium oleander and ‘Nerium’, used on its own, is not a widely recognised name for the shrub. Since the relevant public would not recognise the Latin word ‘NERIUM’, it will not be perceived immediately and without further reflection as descriptive in relation to the goods in question.

2. The Office has not given examples of the word ‘NERIUM’ being used in relation to the goods in question. If the word ‘NERIUM’ were descriptive of the goods in question, the Office would have cited examples of use of the word ‘NERIUM’ in the field of cosmetics. The relevant consumer, therefore, will not recognise ‘NERIUM’ as an ingredient of any of the goods.

3. The Office has accepted for registration several marks containing the word ‘NERIUM’, such as ‘NERIUMMAD’, ‘NERIUMRX’ and ‘NERIUMFIRM’. Therefore, there is no reason why the mark applied for should not be accepted. The Office should be consistent in its approach to accepting marks.

4. For the reasons set out above, the mark ‘NERIUM’ has a minimum degree of distinctive character and this is sufficient to overcome an objection under Article 7(1)(b) EUTMR.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(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.

It is also settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

‘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).

Furthermore, 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 applicant argues that the word ‘NERIUM’ is distinctive because it is the first word of the applicant’s company name, it is a Latin not well known among the relevant consumers and it is not recognised, on its own, as the name of the shrub Nerium oleander. In this regard, the fact that the word in question is the first word of the applicant’s company name does not necessarily mean that it is sufficiently distinctive for registration. Furthermore, as can be seen from the dictionary definition provided by the Office in its original objection letter, the word obviously refers to a type of small shrub, Nerium oleander. In addition, it is defined as having the same meaning in several different English dictionaries, such as Merriam-Webster.com, Vocabluary.com, wordnik.com, Wikipedia, Free Dictionary and Medicaldictionaryweb.com. Therefore, the relevant consumer will easily recognise this word on its own as the name of the plant Nerium oleander.

It is true that ‘NERIUM’ is a Latin word; however, this is the language used for a botanical names and the Office sees no reason why a reasonably well-informed average consumer, in particular a professional consumer, should not know the name of the plant Nerium oleander.

As regards the applicant’s argument that the Office has not given examples of the word ‘NERIUM’ being used in relation to the goods in question, the Court has confirmed that, ‘where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods … In such a case, the Board of Appeal is not obliged to give examples of such practical experience’ (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It should also be noted 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.’ (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 88).

Accordingly, the Office remains of the opinion that the mark ‘NERIUM’ provides clear and obvious information about the goods for which registration is sought, namely that they contain an ingredient extracted from the shrub Nerium oleander. This is exactly what the relevant consumer will want to achieve by using the goods in question. Therefore, the Office is convinced that there is a clear and concrete connection between the mark and the goods in Class 5 to which the objection has been raised; therefore, the mark conveys obvious information regarding the characteristics of the goods in question.

As regards the applicant’s argument that several marks containing the word ‘NERIUM’ have been accepted by the Office, 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).

Furthermore, the marks cited by the applicant contain other verbal or figurative elements that affect the overall impression created by these signs; therefore, they are not comparable, for the purpose of this examination, to the mark in question.

Regarding the applicant’s argument that the mark applied for is sufficiently distinctive to be registered as an EU trade mark, it is settled case-law that a mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) EUTMR is, on that account, 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‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 13 972 724 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Youngmin GOO