CANCELLATION No 13 969 C (INVALIDITY)

Arnold & Siedsma, Meir 24, 2000 Antwerp, Belgium (applicant), represented by Arnold & Siedsma, Meir 24 B-2000 Antwerp, Belgium (professional representative)

a g a i n s t

Visiomed Group, 112 avenue Kléber, 75116 Paris, France (EUTM proprietor), represented by Mélanie Erber, 62 avenue Marceau, 75008 Paris, France (professional representative).

On 16/07/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 11 585 809 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 11 585 809 BEWELL (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; precision measuring apparatus; remote control apparatus; regulating apparatus, electric; measuring devices, electric; monitoring apparatus, electric; telephone apparatus; camcorders; integrated circuit cards [smart cards]; identity cards, magnetic; USB flash drives; pressure indicators; temperature indicators; readers [data processing equipment]; thermometers, not for medical purposes; weighing scales for medical use; pedometers, step counters.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; radiological apparatus for medical purposes; massage apparatus; blood testing apparatus; diagnostic apparatus for medical purposes; belts for medical purposes; radiology screens for medical purposes; electrocardiographs; electrodes for medical use; temperature indicator labels for medical purposes; insufflators; inhalers; thermometers for medical purposes; heart pacemakers; pulse meters; sphygmomanometers; pulse oximeters.

Class 35: Advertising; business management; business administration; office functions; direct mail advertising; presentation of goods on communication media for retailing of medical, health and wellbeing preparations; document reproduction; organization of exhibitions for commercial or advertising purposes; on-line advertising on a computer network; publication of publicity texts; dissemination of advertising matter; public relations; demonstration of goods; compilation of statistics; collection and organisation of data in a central file; computerized file management; data search in computer files for others; transcription.

Class 38: Telecommunications; electronic display services; communications by computer terminals; providing access to databases; providing user access to global computer networks; electronic mail; providing internet chatrooms; teleconferencing services; videoconferencing services; telephone services; message sending; communications by telephone; transmission of digital files.

Class 41: Education; providing of training; correspondence courses; practical training [demonstration]; organization of exhibitions for cultural or educational purposes; arranging and conducting of workshops [training]; arranging and conducting of colloquiums; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; publication of electronic books and journals on-line; publication of texts, other than publicity texts; correspondence courses.

Class 42: Scientific and technological services and research and design relating thereto; medical analysis and research; design and development of computer hardware and software; computer system analysis; consultancy in the design and development of computer hardware; data conversion of computer programs and data [not physical conversion]; conversion of data or documents from physical to electronic media; computer software design; technical project studies; maintenance of computer software; updating of computer software; computer programming; research and development of new products for others; recovery of computer data; design and development of computer hardware and software for use in the field of medicine; providing of results and research information in the fields of science, technology and medicine from online consultable databases and telecommunications apparatus of all kinds; temporary providing of web applications; designing and development of medical terminology; design and development of medical diagnostic apparatus.

Class 44: Medical assistance; telemedicine services; medical screening; medical information; medical services; medical care; medical testing; behavioural analysis for medical purposes; rental of medical machines and apparatus; conducting medical examinations; medical consultancy; medical referral services; medical diagnostic services; medical health assessment services; medical analysis for diagnostic and treatment of persons; guidance consultancy in the field of medicine; providing of medical information via the internet and telecommunications apparatus of all kinds, in particular via web applications; telemedicine services.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the mark BEWELL is a straightforward combination of two descriptive elements namely the verb BE followed by an adverb WELL, the result not producing an unusual variation as to syntax or meaning and there is no perceptible difference between the conjoined sign and the mere sum of its parts. Furthermore, ‘be well’ is an English standard expression for feeling good, being healthy. The mark covers products and services relating to health or well-being in general. It embodies obvious and direct information about their characteristics. Consumers will not hesitate in arriving at the simple conclusion that the word combination describes products or services to be or feel well, that can be trusted to do a good job in controlling, monitoring, managing and promoting well-being and health, in other words to be well. Furthermore, the applicant considers that the relevant consumer will perceive the mark as a laudatory and promotional message, which highlights the positive attributes of the goods and services registered. For this reason, the mark is also devoid of distinctive character.

In support of its observations, the applicant filed the following evidence:

• Definition of be well in The Free Dictionary

• Definition of be well in AudioEnglish.org

In its first answer, the EUTM proprietor argues that it owns several trade marks and domain names composed of the word BEWELL. The French office has accepted it as well as EUIPO when it was filed.

It mentions that behind the applicant is the Belgian firm BEWELL Innovations in dispute with the proprietor since 2017. It then considers that the application is inadmissible because it was filed in the name of a representative. Then, it sustains that the trade mark is distinctive as a whole and the unusual word combination BEWELL has no meaning and this neologism produces more than the sum of its parts. The relevant public includes both final consumers and producers. The public from non-English countries will not understand the terms. Even when understood, the terms have several meanings which do not refer to the goods and services. Plenty of goods and services are not linked to health or well-being. The link with the goods and services is not sufficiently direct and concrete. As to distinctive character, the EUTM proprietor quotes C-383/99, 20/09/2003 BABY DRY in order to illustrate that BEWELL is also an unusual juxtaposition and lexical invention.

In support of its observations, the EUTM proprietor filed the following evidence:

• EXHIBIT 1: French trademark ‘BE WELL” No 3 984 141 registered on 19/02/2013

• EXHIBIT 2: European Union trademark ‘BEWELL” No 11 585 809 registered on 19/02/2013

• EXHIBIT 3: French trademark No 3 984 151 filed on 09/02/2013 ‘bewell check-up’ (figurative)

• EXHIBIT 4: French trademark No 3 984 147 filed on 19/02/2013 ‘bewell connect’ (figurative)

• EXHIBIT 5: French trademark ‘BewelIXpert’ No 4 222 294 filed on 02/11/2015

• EXHIBIT 6: European Union trademark No 11 585 841 registered on 17/07/2013 ‘bewell connect’ (figurative)

• EXHIBIT 7: European Union trademark No 11 585 742 filed on 19/02/2013 ‘bewell check-up’ (figurative)

• EXHIBIT 8: French trademark ‘BEWELL CONNECT No 4 127 622 filed on 21/10/2014

• EXHIBIT 9: International trademark “BEWELL CONNECT’ (figurative) No 1 270 350 filed on 21/04/2015

• EXHIBIT 10: French trademark “BEWELL COACH’ No 4 189 260 filed on 15/05/2015

• EXHIBIT 11: French trademark “BEWELL connect+” (figurative) no. 4 193 121 fiIed on 29/05/2015

• EXHIBIT 12: French trademark ‘BEWELL CHECK-UP” no. 4 222 466 fIled on 02/11/2015

• EXHIBIT 13: International trademark “BEWELL connect+” No 1 299 461 designating European Union, Japan, Republic of Korea. Mexico, United States of America, Switzerland, China, Monaco, Russia and registered on 16/12/2015

• EXHIBIT 14: Whois <bewell-connect.com> registered on 16/10/2013

• EXHIBIT 15: Whois <bewell-connect.fr> registered on 17/03/2014

• EXHIBIT 16: Application form of the declaration of invalidity of the European Union Trademark “BEWELL” No 11 585 809

In its rejoinder, the applicant considers that the invalidity action is admissible. Any natural or legal person has the right to initiate a request for cancellation of a EUTM with the Office. The applicant is representing itself in these proceedings. The fact that the applicant is representing a client in a dispute involving the same mark is a coincidence and has nothing to do with the principle right to request the cancellation of a mark by any natural or legal person. As regards the descriptive character of the trade mark, the applicant considers that the contested trade mark consists of English words. In light thereof the public at issue is the public in the Member States who have an understandable knowledge of English. It is standing case-law that when a mark is perceived as descriptive for a part of the public of the EU, the mark is descriptive for the whole of the EU and should be denied registration. It is sufficient that the words in one of its possible meanings may serve 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 in order to be denied registration. The mark BEWELL is comprised of two elements that are identifiable and comprehensible by the relevant public at first glance. The word ‘well’ is the adverb of ‘good’ and as such is a plain laudatory word. Similarly, the word ‘be’ is a very commonly used verb in the English language. The lexical structure does not depart radically from English grammar rules since there are many examples in English using the adverb ‘WELL’, combined with a verb. Moreover, the absence of a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the proprietor goods from those of other undertakings (T-346/07, Easycover, and case-law cited). The applicant then explains why the trade mark is descriptive for the seven classes of goods and services covered. Furthermore, the mark is not particularly fancy, unusual, original or resonant, and does not require at least some interpretation or thought on the part of the relevant public. The mark is not more than the mere combination of two descriptive, common, laudatory words which – as a whole - should be denied registration. As to the non-distinctive character of the trade mark, the applicant considers that it is clear that the expression BE WELL is a customary expression and that its use is laudatory or descriptive. Because of this widespread use of the words BE WELL, the proprietor should in principle not obtain a life-time monopoly on it. Because of the words BE WELL being so intensively used by different parties, the mark BEWELL which is simply seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods and services to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods and services from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

In support of its observations, the applicant filed the following evidence:

Annex 1: Examples of use of the expression BEWELL by various parties in different types of fields from before 19/02/2013 (application date of the contested trade mark) until now such as ‘Microsoft Health Vault Be Well Fund Recipients Named’ of 10/06/2008, etc.

In its final answer, the EUTM proprietor repeats its arguments as to the relevant public (not only the English speaking part of the public). It considers that the applicant failed to establish the existence of a direct link between the term BEWELL and all the goods and services. It then repeats previous arguments and refutes that he has not brought evidence that the mark has acquired distinctiveness.

ADMISSIBILITY

Contrary to what the EUTM proprietor contends, Article 63(1)(a) EUTMR does not require the applicant to show an interest in bringing proceedings (25/02/2010, C‑408/08 P, Color Edition, EU:C:2010:92, § 36 et seq). The fact that it is involved in conflicts with another entity that is not part of the present proceedings is not a reason of inadmissibility. Nor is the fact that the applicant is representing himself. Therefore the invalidity action was correctly found admissible.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed (namely on 19/02/2013), facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

No legitimate expectations

The EUTM proprietor mentions that its trade mark was not objected on absolute grounds at the examination stage. Registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T 108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T 275/10, Mpay24, EU:T:2011:683, § 18).

In its first answer, the EUTM proprietor also argues that it owns several trade marks and domain names containing the word BEWELL. The French office has accepted it. As developed later, the French public is not the relevant public. In addition the present decision is directed against one trade mark and the fact that the EUTM proprietor also has other trade marks including BEWELL and domain names is not relevant in the present case.

Relevant public and level of attention

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T-234/01, Orange und Grau, EU:T:2003:202, § 32).

In the present case, the objectionable goods and services covered by the mark applied for are both everyday/mass consumption goods and mass consumption services and more specialised goods and services aimed at a more attentive public. In view of the nature of the goods and services in question, the awareness of the relevant public will vary from average to higher.

Nevertheless, it should be noted that the fact that the relevant public is a specialist one or its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, a higher level of attention and awareness by the professional public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, a more attentive and knowledgeable public may be able to sooner grasp a descriptive or otherwise non-distinctive meaning than the public at large (decision of 02/04/2014, R1789/2013-2, ‘device of a coffee filter’, §17).

Finally, as mentioned by the applicant, since the mark ‘BEWELL’ is composed of the English words BE and WELL, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The EUTM proprietor argues that the relevant public is also composed of non-English speaking persons that will not understand the terms. As correctly mentioned by the applicant, the mark being composed of English words, the public at issue is the public in the Member States who have an understandable knowledge of English. It is standing case-law that when a mark is perceived descriptive for a part of the public of the EU, the mark is descriptive for the whole of the EU and should be denied registration.

The trade mark is composed of the following words with the following meanings:

• BE ‘(verb) to have presence in the realm of perceived reality; exist; live’

• WELL ‘(adverb) ‘in good health’ or ’prosperous or comfortable‘ or ‘fortunate and happy’

(Information extracted from online Collins English Dictionary on 06/07/2018 at http://www.collinsdictionary.com/dictionary/english/BE and WELL and BE WELL)

In addition, as correctly mentioned by the applicant, BE is a very commonly used verb in the English language. It can be added that the adverb WELL is also commonly used. Moreover, the absence of a space between the two words composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the proprietor goods from those of other undertakings (T-346/07, Easycover, and case-law cited). Therefore, the fact that the words are not visually separated does not prevent the relevant public to immediately perceive their meanings.

The relevant consumer will understand the words as a meaningful expression meaning: ‘be in a good state of mind’ and or ‘be in a good health’. The structure of this expression does not diverge from English grammar rules but rather complies with them. Therefore, the relevant consumer will not perceive it as unusual but rather as a meaningful expression about the good state of mind or good health of the consumer. It must be added that BE WELL is not a neologism. Finally, 20/09/2001, C‑383/99 P, BABY-DRY, EU:C:2001:461 quoted by the EUTM proprietor is not mentioned in the Examination Guidelines as it has been reversed by subsequent case law of the Court of Justice in particular since 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579 showing that the threshold for Article 7(1)(c) is not as low as it was thought, and a potential trade mark must incorporate more than some minor grammatical alteration in order to pass the test..

Non-distinctiveness – Article 7(1)(b) EUTMR

Pursuant to Article 7(1)(b) EUTMR, for the sign applied for to possess distinctive character, it must serve to identify the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. The distinctive character of a trade mark must be assessed, first, by reference to the products and services claimed and, second, by reference to the perception of the relevant public, which consists of the consumers of those goods or the recipients of those services (08.04.2003, C-53/01, C-54/01 & C-55/01, Linde, EU:C:2003:206, § 40; 25.10.2007, C-238/06 P, Plastikflaschenform, EU:C:2007:635, § 79).

The average consumer does not tend to look at things analytically. A trade mark must therefore enable the average consumer of the goods in question, who is reasonably well informed and reasonably observant and circumspect, to distinguish the goods concerned from those of other undertakings without conducting an analytical or comparative examination and without paying particular attention (12.02.2004, C-218/01, Perwoll, EU:C:2004:88, § 53; 12.01.2006, C-173/04 P, Standbeutel, EU:C:2006:20, § 29).

It is true that registration of a trade mark which consists of indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services is not excluded for this reason alone (05.12.2002, T-130/01 Real People, Real Solutions, EU:T:2002:301, § 19; 11.12.2012, T-22/12, Qualität hat Zukunft, EU:T:2012:663, § 15). However, in the case of such trade marks, it always has to be checked whether these have components that might, beyond their obviously promotional meaning, enable the relevant public to memorise the word sequence easily and instantly as a distinctive trade mark in respect of certain goods or services. A sign that fulfils functions other than that of a trade mark is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods and services (05.12.2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 13.04.2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 31). Even if the relevant consumer is more attentive than average, if a sign just gives him purely promotional, and gives abstract information, he will not take the time either to enquire into the sign’s various possible functions or mentally to register it as a trade mark (05.12.2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28, 29; 11.12.2012, T-22/12, Qualität hat Zukunft, EU:T:2012:663, § 30).

When assessing the distinctive character of the word sequence applied for, account has to be taken of the presumed perception by the public targeted by the goods claimed (09.07.2008, T-58/07, Substance for success, EU:T:2008:269, § 21). On the basis of the language used, this is the English-speaking public (see Article 7(2) EUTMR).

The expression ‘bewell’ equivalent to ‘be well’ is a word sequence that is formed from common English terms in accordance with linguistic rules and there are no doubts on its meaning in the sense of ‘be in a good shape or state of mind’. The word sequence, formed as an imperative, will readily be understood by the targeted public as a personal approach to customers to the effect that the goods and services thus designated enable the buyer to be in a positive attitude or physical condition. There is nothing vague in this laudatory statement. It simply intends to prompt the customer into buying the applicant’s goods and services. This may relate to any goods and services that are intended for personal or professional use.

The meaning of the sign is clear and does not leave any doubts. The structure of the sign is grammatically correct and does not trigger any mental process in order to arrive at its meaning. It is, as a whole, a simple message that could be attributed to any producer or service provider with the natural consequence that it does not indicate the origin of the goods or services.

In connection with all of the goods claimed in Classes 9 and 10, that are in particular different types of apparatus and instruments for scientific, nautical, surveying, photographic, cinematographic, optical, weighting, measuring, signalling, checking, life-saving and teaching purposes, apparatus for recording, transmission, reproduction of sounds and images, the sign is therefore merely a laudatory statement that the goods enable the buyer to be in a good state of mind. Contrarily to what argued by the EUTM proprietor, this statement applies to any type of goods included in these classes as for example apparatus and instruments for conducting electricity, computers, cash registers or fire-extinguishing apparatus. In fact, the marks referred to in Article 7(1)(b) EUTMR 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’, §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’, § 65).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, § 20; and judgment of 03/07/2003, T-122/01, ‘BEST BUY’, § 21).

The same applies for the services in Classes 35 (such as advertising, business management and administration and offices functions), 38 (telecommunications), 41 (education, training publication services), 42 (medical research and IT services) and 44 (medical services), which aim for a good state of mind and as a result the sign merely amounts to a laudatory advertising statement in respect of these services too.

The promotional formula merely serves to highlight positive aspects of the goods and services concerned: they make you ‘be well’ when you use them. As a general promise of a particular positive message, the sign conveys an advertising statement which may apply equally to all goods and services whether directly intended for being in a good shape or in a good mood and is therefore not capable of individualising the goods of a particular supplier. Unlike the ground for refusal of a descriptive indication pursuant to Article 7(1)(c) EUTMR, the ground for refusal of lack of distinctive character under Article 7(1)(b) EUTMR does not require specific findings regarding the descriptive meaning of the sign in relation to each of the goods and services covered by the refusal. It is instead decisive that the sign in its entirety does not contain anything which would allow the consumer to assign the goods and services thus designated to a particular supplier. The word sequence ‘be well’ amounts to nothing more than a general advertising statement and furthermore does not contain anything which could perform the origin-indicating function of a trade mark.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Consequently, taken as a whole, the contested mark – ‘BEWELL’ – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR. Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Acquired distinctiveness through use

In its last observations, the EUTM proprietor refutes that he has not bring evidence that the mark has acquired distinctiveness but he did not file arguments or evidence of acquired distinctiveness of the mark. Therefore, the applicant failed to evidence of acquired distinctiveness through use.

Several meanings

The EUTM proprietor argues that the words can have several meanings. As correctly mentioned by the applicant, it is sufficient that the words in one of its possible meanings may serve 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 in order to be denied registration.

The various meanings of the terms ‘BE’ and ‘WELL’, or ‘BE WELL’ as a whole, in other contexts, cannot alter this finding. As a matter of common knowledge, in all European languages, especially in English, most words may have more than one meaning, depending on their role in a specific lexical construction and the context where it is used. However, an reasonably well informed, observant and circumspect average consumer, whether specialised or not, will instinctively discard combinations which would render the sign as a whole nonsensical or absurd and would intuitively retain the meaning (or combination of meanings) which seems syntactically and conceptually more appropriate in the field of the goods or services at issue, irrespective of the meanings the sign or its components may have in other contexts.

Since at least one of its possible meanings the sign clearly describes a characteristic of the goods and services at issue, namely their purpose, it must remain free for all traders to use. This would be impossible without infringing the applicant’s trade mark rights if the mark were to be registered (06/03/2007, T- 230/05, Golf USA, EU:T:2007:76, § 32, 33), due to its similarity and conceptual almost identity with terms widely used on the relevant market to describe the purpose of the goods and services at issue.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services. Since the application is totally successful based on Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR, there is no need to examine the other ground invoked.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Pierluigi M. VILLANI	Jessica LEWIS	Keeva DOHERTY

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.