DECISION

of the Second Board of Appeal

of 9 November 2015

In Case R 261/2015-2

COFRA Holding AG

Grafenauweg 10

CH-6300 Zug

Switzerland

Applicant / Appellant

represented by Balder IP Law, S.L., Paseo de la Castellana 93, ES‑28046 Madrid, Spain

APPEAL relating to Community trade mark application No 13 151 105

The Second Board of Appeal

composed of composed of H. Salmi (Rapporteur) as a single Member having regard to Article 135(2) and (5) CTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June 2014 on decisions by a single Member.

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 7 August 2014, COFRA Holding AG (hereinafter ‘the applicant’) sought to register the word mark

TODAY’S LOOK IS

for, after an amendment, the following list of goods and services:

Class 9 – Glasses, sunglasses, ski goggles, glasses frames; 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; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus;

Class 14 – Precious metals and their alloys; jewellery coated with precious metals, jewellery coated with precious metal alloys, jewellery in precious metals; jewellery, precious stones; horological and chronometric instruments;

Class 18 – Leather; imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;

Class 25 – Clothing, footwear, headgear;

Class 35 – Advertising; business management; business administration; office functions; commercial retailing and retail services via the Internet relating to glasses, sunglasses, ski goggles, glasses frames, 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, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys, jewellery coated with precious metals, jewellery coated with precious metal alloys, jewellery in precious metals, jewellery, precious stones, horological and chronometric instruments, leather, imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, footwear, headgear, writing and publication of publicity texts, marketing services and activities, publicity, promotional services and activities.

On 25 August 2014, the examiner notified the applicant that the trade mark did not appear to be eligible for registration for the following goods and services:

Class 18 – Leather; imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;

Class 25 – Clothing, footwear, headgear;

Class 35 – Commercial retailing and retail services via the Internet relating to glasses, sunglasses, ski goggles, glasses frames, 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, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, precious metals and their alloys, jewellery coated with precious metals, jewellery coated with precious metal alloys, jewellery in precious metals, jewellery, precious stones, horological and chronometric instruments, leather, imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, clothing, footwear, headgear, writing and publication of publicity texts, marketing services and activities, publicity, promotional services and activities.

because it did not comply with Article 7(1)(b) and 7(2) CTMR. The examiner’s reasoning may be summarised as follows:

In the present case, the objectionable goods and services covered by the mark applied for are everyday/mass-consumption goods and services and are mainly aimed at both average consumers and the professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will, therefore, be high as regards the professional public, as well as being that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘TODAY’S LOOK IS’ is composed of English words, the relevant public with reference to whom the absolute ground for refusal must be examined is the English-speaking consumer in the EU.
The trade mark consists of the words ‘TODAY’S LOOK IS’ with the following meanings:

TODAY: ‘the present period of time’: ‘today’s society’

LOOK: ‘the appearance of someone or something, especially as expressing a particular quality, a style or fashion’

IS: ‘third person singular of be’.

www.oxforddicionaries.com

The relevant consumer will understand the words as a meaningful expression: Today’s appearance, or style or fashion is.
The relevant public would perceive the mark applied for as a laudatory promotional message which merely serves to highlight positive aspects of the goods concerned, namely that they are goods of today’s appearance or style. As far as the commercial, marketing and promotional services in Class 35 are concerned the expression at issue highlights the fact that the subject-matter of those services are such goods.
There is nothing about the mark applied for that might beyond its obvious laudatory promotional message, enable the relevant public to memorize the sign easily and instantly as a distinctive trade mark for the goods and services in question.
Consequently, taken as a whole, the mark applied for ‘TODAY’S LOOK IS’ 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) and Article 7(2) CTMR.
Thus the application is rejected is rejected for all the goods and services except for ‘advertising; business management; business administration; office functions’ in Class 35.

On 13 October 2014, the applicant submitted its observations which were summarised by the examiner as follows:

The mark applied for is meaningless since it is an incomplete sentence. The mark is an invented expression.
The mark applied for is imaginative, since it introduces elements of conceptual intrigue.
The mark does not convey a laudatory promotional message.
The content of the expression ‘TODAY’S LOOK IS’ requires a degree of interpretation for the relevant public that is exposed to it.
It contains an element of a play on words, as the string ‘IS’ is repeated (TODAY’S and ‘IS’) and it is catchy, brief and easily memorised by the consumers.
The Office has already registered similar trade marks for goods and services in the same classes as the ones claimed such as CTMs No 13 100 375 ‘IN THE NAME OF BEAUTY’, No 12 958 179 ‘RIGHT TO WEAR’, No 7 467 962 ‘FINISH THE LOOK’, No 8 627 184 ‘MY LOOK’ and No 8 891 731 ‘make it look so easy...’.

By decision dated 27 November 2014 (‘the contested decision’), the examiner maintained her (partial) objection and rejected the application for goods and services objectionable pursuant to Article 7(1)(b) and 7(2) CTMR. The examiner reasoned as follows:

While it may be true that the expression ‘TODAY’S LOOK IS’ could be perceived as an incomplete phrase, the Office finds it equally possible that the average consumer will understand this expression as a meaningful expression: it is today’s appearance, or style, or fashion, as described in the notice of grounds for refusal of 25 August 2014. In that context, the completion of the supposed phrase is neither essential nor necessary, as the message is perfectly perceptible as it stands. In addition, it is pointed out that ‘advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier’. The Office finds this mark to be not an invented expression, but merely an ordinary advertising slogan presented in a simplified form, incapable of being recalled by consumers.
While the applicant argues that the mark ‘TODAY’S LOOK IS’ introduces elements of conceptual intrigue and is imaginative, the Office does not find this mark to be anything other than an ordinary advertising slogan which, as such, does not possess any degree of imaginativeness or conceptual intrigue.
Contrary to the applicant’s argument that the mark applied for does not convey a laudatory promotional message, the Office maintains that the expression ‘TODAY’S LOOK IS’, when used for the goods and services claimed, will be perceived exclusively as a laudatory promotional message intended to highlight the positive aspects of those goods and services. It would simply inform all potential customers that the applicant’s goods were goods of today’s appearance or in today’s style, that is, goods which are fashionable and/or of high quality, and not old-fashioned, or that the applicant’s retails services in Class 35 related to such goods.
The Office disagrees with the applicant’s argument that the slogan at issue requires a degree of interpretation on the part the relevant public. It is settled case-law that a slogan may be perceived as distinctive where it possesses ‘a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public’. The Office does not consider that the promotional message conveyed by the mark ‘TODAY’S LOOK IS’, which is per se simple and clear and, therefore, easily understandable, requires any effort of interpretation on the part of potential consumers of the goods and services claimed by the applicant, and nor will it set off a cognitive process in the mind of those consumers. According to the applicant, the slogan at issue contains an element of a play on words and is catchy, brief and easily remembered by the consumer. What must be borne in mind by the applicant, however, is that those features do not suffice to make the mark distinctive. It is settled case-law that ‘those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of applicant’s goods or services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods or services from those of a different commercial origin’ which, in the present case, for the reasons explained, would not be possible. In addition, it is also pointed out that it is a well-known fact that customers are accustomed to the use of various promotional messages in advertisements for goods and services, including messages which are presented in a simplified form and are, consequently, brief and easily memorised, and that they, generally, do not perceive them as trade marks. Therefore, it is very unlikely that customers would, purely because it is brief and easily memorised, accord this mark, used to market the goods and services applied for, any trade mark value.
The applicant argues that OHIM has already accepted for registration similar trade marks, for similar goods and services. In response to this argument, first of all, it is emphasised that according to settled case-law ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the EU judicature, and not on the basis of previous Office practice. The considerations under absolute grounds were different in these cases from those that apply to the current application. Consequently, those trade marks cannot be relevant for the assessment of whether or not the slogan in question is devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR.
As regards the applicant’s reference to registered trade marks which contain, among other elements, the word ‘LOOK’, it is also emphasised that a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole Accordingly, the identification of previously registered trade marks which contain, inter alia, a part of the mark applied for, namely, the word ‘LOOK’, cannot be considered relevant. As a result, the Office does not find any of the registrations cited persuasive.

On 26 January 2015, the applicant filed a notice of appeal and its statement of grounds was received on 25 March 2015.
On 27 March 2015, the applicant informed the Boards that its figurative CTM No 13 371 216 ‘today’s look is’ matured to registration on 10 March 2015.
The appeal was submitted to the examiner for revision and was remitted to the Boards of Appeal on 30 March 2015.

Grounds of appeal

The applicant requests that the Board allow the registration of the mark for all the goods and services applied for. The applicant’s arguments are a reiteration of its previous arguments. It particularly insists on the fact that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services.

Reasons

Admissibility of the appeal

The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible.

Article 7(1)(b) CTMR

According to Article 7(1)(b) CTMR, trade marks which are devoid of any distinctive character are not to be registered. In addition, it must be borne in mind that Article 7(2) CTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Community’.
The signs referred to in Article 7(1)(b) CTMR are, in particular, those which 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 (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).
The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, in relation to the perception of the relevant public, who is composed of the consumers of those products or services (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34).
As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to them criteria which are stricter than those applicable to other types of sign (08/02/2011, T-157/08, Insulate for life, EU:T:2011:33, § 47 and the case-law cited).
The Court of Justice has therefore held that an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness required under Article 7(1)(b) of Regulation No 207/2009 (21/01/2015, T‑11/14, Pianissimo, EU:T:2015:35, § 19 and the case-law cited).
It follows that a trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (21/01/2015, T‑11/14, Pianissimo, EU:T:2015:35, § 20 and the case-law cited).
The contested goods and services are:

Class 18 – Leather; imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;

Class 25 – Clothing, footwear, headgear;

In general terms, the relevant public of the goods and services at issue consists of the general public. However, some of the services are mainly aimed at a professional public (e.g. writing and publication of publicity texts, marketing services and activities, publicity, promotional services and activities in Class 35).
The Board stresses that despite a generally high level of attention in relation to the contested services, it is established case-law that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether it involves average end consumers or a more attentive public made up of specialists or circumspect consumers (25/03/2014, T‑291/12, Passion to perform, EU:T:2014:155, § 32 and case-law cited).
The examiner correctly considered that the mark ‘TODAY’S LOOK IS’ is composed of English words. The Board will consider that the public by reference to whom the absolute ground of refusal must be assessed consists of at least the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom. The Board will limit its assessment to these Member States and will refrain at this stage from considering the language knowledge of the relevant public and/or the common use of the individual words in the various other Member States.
As case-law has acknowledged, in the case of compound word signs, the relevant meaning, established on the basis of all their constituent elements and not only one of them, must be taken into account. Thus, the assessment of the distinctive character of such signs cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, in any view, be based on the overall perception of those marks by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character. The mere fact that each of those elements, considered separately, is devoid of any distinctive character does not mean that their combination cannot present such character. In other words, in order to assess whether or not a trade mark lacks distinctive character, the overall impression given by it must be considered. That does not mean, however, that one may not start by examining each of the individual features which make up that mark. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (06/06/2013, T‑515/11, Innovation for the real world, EU:T:2013:300, § 29 and the case-law cited).
The Board endorses the definitions provided by the examiner of the words ‘TODAY’, ‘LOOK’ and ‘IS’, which have not been disputed.
In the Board’s view, there is nothing about the expression ‘TODAY’S LOOK IS’ that might, beyond its obvious laudatory promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question. As correctly pointed out by the examiner the relevant public in relation to the goods and services claimed will understand ‘TODAY’S LOOK IS’ as an expression highlighting positive aspects of the goods and services concerned, by simply informing potential customers that the applicant’s goods consisting of fashion items such as glasses, sunglasses, jewellery, leather products, clothing, etc. are goods of today’s appearance or in today’s style, that is, goods which are fashionable and/or of high quality, and not old-fashioned, or that the applicant’s retail services in Class 35 relate to such goods. The mark thus constitutes a banal expression which the relevant public will not need to analyze for it to be understood. Furthermore, this word mark does not constitute a play on words and does not include any imaginative, surprising or unexpected elements capable of conferring distinctive character on it in the mind of the relevant public.
Consequently, the sign at issue takes the form of an ordinary advertising message, which is devoid of any elements that might enable the relevant public to memorize it easily and immediately as a trade mark in respect of the goods and services designated.
Insofar as the applicant refers to judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, the Board stresses that the sign is not to be rejected merely because it is a promotional slogan, but rather because it is a banal slogan, with a clear and unambiguous laudatory meaning. Apart from its promotional meaning, it does not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the goods and services at issue (06/06/2013, T-515/11, Innovation for the real world, EU:T:2013:300, § 53, confirmed by order of 12/06/2014, C 448/13 P, Innovation for the real world, EU:C:2014:1746§ 36-37). Nor can it be said that the Court’s considerations in ‘Vorsprung durch Technik’, have radically changed the law in relation to verbal expressions serving as promotional or advertising messages. Although that judgment indeed clarifies certain questions relating to the acceptability of slogans as trade marks, it cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can be registered as a trade mark, merely because it is presented in the form of an advertising slogan. Furthermore, in the case ‘Vorsprung durch Technik’, the Court gave importance to the finding that the slogan was widely known as a consequence of its use by the applicant over many years (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 59), which is not proven to be the case here.
Thus, taken as a whole, the mark applied for ‘TODAY’S LOOK IS’ is devoid of any distinctive character and is incapable of distinguishing the goods and services refused by the examiner in Classes 9, 14, 18, 25 and 35 for which registration is sought within the meaning of Article 7(1)(b) CTMR.
Insofar as the applicant cites other signs that have been accepted by the Office, it is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Board must consider whether it should be followed. The Board must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Board concludes that the mark is barred from registration by the terms of Article 7(1)(b) CTMR, it cannot decide otherwise simply because an equally non-distinctive mark has been registered in the past.
Further, it must be noted that decisions concerning the registration of a sign as a Community trade mark which the Office, including the Boards of Appeal, are called on to take under the CTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 73 to 75 and 16/07/2009, C‑202/08 P & C‑208/08 P, RW feuille d’érable, EU:C:2009:477, § 57 and the case-law cited therein).
In addition, the comparable precedents have to concern cases which the Boards have had the opportunity to decide upon. The Boards cannot be bound by decisions of first-instance Office departments (for example, the Examination or Cancellation Division) which have not been appealed (see, with respect to Opposition Division decisions, 27/03/2014, T‑554/12, Aava Mobile, EU:T:2014:158, § 65, second sentence).
Moreover, insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited).
Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited therein).
In the present case, it has become apparent that the application is caught by the grounds for refusal set out in Article 7(1)(b) CTMR because of the goods and services in respect of which registration is sought and because of the way in which the sign, consisting of a word combination, as a whole would be perceived by the relevant public. Therefore, taking all of the above into account, also the fact that the Office has accepted a mark with the same text as a figurative mark does not change the Board’s view of the case at hand.
Under these circumstances, the applicant cannot reasonably rely on the Office’s previous decisions, for the purposes of casting doubt on the conclusion that the trade mark applied for is not distinctive in accordance with Article 7(1)(b) CTMR.
In light of the foregoing, the appeal is dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

H. Salmi

Registrar:

Signed

H.Dijkema

DECISION OF 9 november 2015 – R 261/2015-2 – TODAY'S LOOK IS

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