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THURSDAY, 18 JUNE 2009
"JUST SKIN" rejected as descriptive and lacking distinctiveness for cosmetics
Tags: community trade mark, descriptiveness, just skin, lack of distinctive character,
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"JUST SKIN" rejected as descriptive and lacking distinctiveness for cosmetics
In Case R 1720/2008-4, the Board of Appeal of OHIM dismissed an appeal against the rejection of the mark JUST SKIN as a CTM for Foundation; cosmetics and fragrances in Class 3 and Retail store services in connection with cosmetics and fragrances in Class 35. The Board ruled that the mark applied for was correctly rejected as As being descriptive and lacking distinctive character.
According to the Board “A word mark which consists of a combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics even if the combination creates a neologism. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. Therefore, a trade mark consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism and the mere sum of its parts and the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (Court of Justice, Judgment of 12 February 2004, C-265/00, ‘Biomild’, paragraphs 39, 43, OJ OHIM 2004,p. 582).” (para. 9)
“… the English speaking consumers of the goods and services in question will perceive the mark as a straightforward and simple combination of two commonplace words, referring to the kind and basic purpose of the goods and services concerned and not as an indication of their commercial origin.” (para. 12)
“Whether or not a trade mark denominates essential characteristics of the goods and services for which protection is sought, is of no relevance in the assessment of the absolute grounds of refusal of Article 7(1)(c) CTMR. It is sufficient that the term describes any of the characteristics of the goods and services in question for a trade mark application to be refused. The expression JUST SKIN relates to the nature, qualities and the purpose of the goods and services which pertain to the area of skin care.” (para. 15)
“…..There is nothing about the term JUST SKIN, either in its structure or the message it transmits, that would enable the relevant public to recall the sign easily and instantly as a distinctive trade mark for the goods and services designated by the application.” (para. 20)
Also, in reply to the applicant’s claim that a number of similar registrations, embracing the word element SKIN, have been accepted by OHIM the Office, the Board reiterated its classic case law that 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 (ECJ C-37/03P, BioID AG/OHIM, BioID, ECR I-7975,and CFI T-36/01 Glaverbel/OHIM, glass-sheet surface, ECR II-3887) adding 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 (citing CFI T-106/00, Streamserve Inc./OHIM, STREAMSERVE, ECR II-723, paragraph 67).
Posted by: Nikos Prentoulis @ 12.58According to the Board “A word mark which consists of a combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics even if the combination creates a neologism. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. Therefore, a trade mark consisting of a neologism composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of that provision, unless there is a perceptible difference between the neologism and the mere sum of its parts and the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (Court of Justice, Judgment of 12 February 2004, C-265/00, ‘Biomild’, paragraphs 39, 43, OJ OHIM 2004,p. 582).” (para. 9)
“… the English speaking consumers of the goods and services in question will perceive the mark as a straightforward and simple combination of two commonplace words, referring to the kind and basic purpose of the goods and services concerned and not as an indication of their commercial origin.” (para. 12)
“Whether or not a trade mark denominates essential characteristics of the goods and services for which protection is sought, is of no relevance in the assessment of the absolute grounds of refusal of Article 7(1)(c) CTMR. It is sufficient that the term describes any of the characteristics of the goods and services in question for a trade mark application to be refused. The expression JUST SKIN relates to the nature, qualities and the purpose of the goods and services which pertain to the area of skin care.” (para. 15)
“…..There is nothing about the term JUST SKIN, either in its structure or the message it transmits, that would enable the relevant public to recall the sign easily and instantly as a distinctive trade mark for the goods and services designated by the application.” (para. 20)
Also, in reply to the applicant’s claim that a number of similar registrations, embracing the word element SKIN, have been accepted by OHIM the Office, the Board reiterated its classic case law that 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 (ECJ C-37/03P, BioID AG/OHIM, BioID, ECR I-7975,and CFI T-36/01 Glaverbel/OHIM, glass-sheet surface, ECR II-3887) adding 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 (citing CFI T-106/00, Streamserve Inc./OHIM, STREAMSERVE, ECR II-723, paragraph 67).
Tags: community trade mark, descriptiveness, just skin, lack of distinctive character,
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