EUIPO Board of Appeal overturns first instance refusal of MONASTERY mark

The mark MONASTERY was found by the Board of Appeal to not be sufficiently directly descriptive or non-distinctive in relation to the applied for goods and services, overturning the Examiner’s first instance decision.

Background

Ellen and Reiko Inc. (the “Applicant”), a US cosmetics company, filed an International Registration designating the EU for the mark MONASTERY (the “Application”) for a range of goods and services, including skincare goods in Class 3, bags in Class 18, cosmetic and hair brushes in Class 21, towels in Class 24, retail services relating to these goods in Class 35 and cosmetic skin care and spa services in Class 44.

On 6 August 2024 the EUIPO issued a partial provisional refusal of the Application for all of the goods and services in the Application (the “Contested Goods and Services”) bar cosmetic brushes; cosmetic spatulas; electric face cleansing brushes in Class 21, on the grounds that the mark was descriptive under Article 7(1)(c) EUTMR and non-distinctive under Article 7(1)(b).

The Examiner reasoned that the relevant English-speaking consumer would understand the mark MONASTERY to mean the residence of a religious community and that they would simply perceive MONASTERY as indicating that the contested goods were made or sold in a monastery and the contested services were offered by or provided in a monastery. Consequently, the Application was descriptive and devoid of any distinctive character.

The Examiner also stated that “signs that are commonly used in connection with the marketing of the services concerned are devoid of distinctive character for those services” and supported this reasoning by including screenshots of 10 websites which referenced the term MONASTERY in connection with some of the Contested Goods and Services.

The Applicant responded to the refusal, arguing that many of the screenshots evidenced by the Examiner were for websites and products not aimed at EU consumers, and that the examples provided did not demonstrate that EU consumers would perceive MONASTERY as solely descriptive of the place of production of the goods and/or offering of the services. EU consumers would not assume that all goods are produced in and/or that all services are provided in a monastery run by nuns or monks, who typically live in or run monasteries, and that the relevant beauty and cosmetic goods and services in the Application are “per se totally unrelated to the nature of a monastery”.

The refusal was maintained by the EUIPO. In doing so, the Examiner confirmed that the Office is not under any obligation to provide concrete examples of use in reference to its objections (though it had done so), and that findings of lack of distinctiveness may be lawfully based on “matters of common knowledge”. The Applicant appealed to the EUIPO Board of Appeal.

Board of Appeal decision

The Board of Appeal confirmed that for a sign to be considered descriptive under Article 7(1)(c) EUTMR, it must convey a sufficiently direct and concrete link to the goods or services in question to enable the public concerned to immediately, and without further thought, perceive a description of the goods and services in question or one of their characteristics.

The Board acknowledged that it is a well-known fact that monasteries have traditionally produced some goods since the Middle Ages (for example alcoholic drinks, certain foods, and crafts) as a result of their self-sufficient nature. However, it is not a well-known fact that monasteries produce and sell the Contested Goods and Services. While the screenshots provided by the Examiner did show use of the word monastery in connection with some of the Contested Goods and Services, this only demonstrated that these goods and services can be produced in monasteries and this mere possibility is not sufficient to establish an absolute ground of refusal based on the descriptiveness of the Application.

The Board also found that for a significant part of EU consumers, the word monastery will simply be considered as arbitrary and distinctive, with no direct and immediate link in connection with the Contested Goods and Services. The screenshots provided by the Examiner were considered far from proving that use of the term monastery is common enough to deprive it of distinctive character or make it unable to act as an indication of origin.

The Board of Appeal held that the Examiner’s objections were “unsubstantiated, far-fetched and purely speculative”, and it annulled the contested decision.

Comments

The Board of Appeal decision confirms the established principle that for a mark to be considered descriptive, it must convey to the relevant public a direct and concrete link between the mark and the specific goods or services in question. This case is also a reminder that the mere fact that a mark may have a clear conceptual meaning for the relevant public is not sufficient on its own to conclude that the mark is descriptive or lacks distinctive character.

EUIPO Examiners must provide clear and adequate reasoning in their decisions, and provide examples where appropriate. In this case, the Examiner was found to have over-reached in their objections and failed to establish and evidence that the public would make the required direct and immediate link between the mark and the goods and services, or that the mark was so commonly used in connection with the goods and services so as to be non-distinctive.

If you have any questions or would like to discuss any of the matters raised in this article, please get in touch with Laura Tennant, Alison Brennan, or another member of the Burges Salmon IP team.

Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct to your inbox.