Il marchio TAKE FIVE per bevande analcoliche è nullo per carenza di distintività

Questa è la conclusione del Board di appello dell’EUIPO 01.09.2022, Case R 664/2022-1 , Studio Beverage Groupo c. EUIPO (segnalata da in IPKat), confermante il primo grdo amministrativo.

Le disposizioni  di riferimento sono gli artt. 7.1.b – 7.2 reg. UE 2017/1001.

IL pubblico di riferimento è quello english speaking e cioè <<In addition to Ireland and Malta, it consists of those countries in which, at the very least, English is widely understood, in particular, Denmark, Cyprus, the Netherlands, Finland and Sweden>> , § 15.

Motivo: << 20   The assertion of the applicant that the sign is distinctive as it does not describe the
goods claimed is entirely unfounded. In the context of the goods applied for in
Class 32 (essentially non-alcoholic drinks, mineral waters), the public will understand the imperative form of the expression ‘take five’ as an invitation to potential customers not to pass by the goods advertised in this way carelessly, but to
take/buy them in a quantity of five. The invitation to buy conveyed by the sign
could also refer to a variety of five different types of drinks or flavours sold in one
pack, since it is common that those products are offered also in packs. Such
invitations to take or buy are not unusual, and there might be even a
compensation for buying several products, in the form of a (quantity) discount.

01/09/2022, R 664/2022-1, TAKE FIVE
21 Moreover, in advertising language, the public is accustomed to being confronted
with English terms that are intended to convey factual information in a memorable form, without recognising in them any indication of origin. In particular, the
use of the imperative form is a common stylistic device in advertising language to
address potential customers directly and to convey an advertising message to
them. With regard to the relevant goods (i.e., non-alcoholic drinks, mineral waters), it is common business practice to offer and sell daily consumption goods
which are often similar in appearance by addressing consumers directly in a verbal or visually striking manner. The present sign is a direct, obvious and also
widely used advertising statement with ‘five’ being used in the sense of a quantity
specification. Therefore, the public is familiar with receiving such advertising
messages in this form.
22 In the light of the foregoing, the word combination ‘TAKE FIVE’ cannot be
regarded as capable of serving as an indication of the commercial origin of the
goods claimed in this case. On the contrary, the relevant public, which is made up
of end consumers, will see in the word sequence ‘TAKE FIVE’, in connection
with the goods in Class 32, exclusively a general laudatory advertising statement
and an appeal to potential customers to buy. There is no evidence whatsoever that
the relevant public perceives the sign applied for, beyond its obvious advertising
and laudatory content.

L’interesse, oltre che nel giudizio in sè, sta anche nel fatto che la mancanza di distintività, qui  affermata secondo la regola generale (art. 7.1.b), non avrebbe invece potuto esserlo secondo le regole particolari (artt. 7.1.c-d-e) (v. da noi l’art. 7.1.a  – 13.1 cpi): dando quindi un senso alla distinzione tra la prima e le seconde, da taluni criticata.