Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/11/2015

df-mp Dörries Frank-Molnia & Pohlman Patentanwälte Rechtsanwälte PartG mbB

Fünf Höfe Theatinerstr. 16

D-80333 München

ALEMANIA

Application No:	014378616
Your reference:	WHE16178EU
Trade mark:	SGP SUSTAINABLE GROWTH PARTNERS
Mark type:	Figurative mark
Applicant:	WHEB Capital Partners LLP 23 Hanover Square London W1S 1JB REINO UNIDO

The Office raised an objection on 07/08/2015, pursuant to Article 7(1)(b), and 7(2) CTMR, because it was found that this trade mark is devoid of any distinctive character, in these terms:

The trade mark you have applied for is not eligible for registration under Article 7(1)(b) and Article 7(2) CTMR.

The mark applied for contains the abbreviation ‘SGP’ and the words ‘SUSTAINABLE GROWTH PARTNERS’ and is considered objectionable for:

Class 35 Business management assistance; business appraisals; business information; business inquiries; business investigations; business management consultancy; business organization consultancy; business research; efficiency experts; advisory services for business management.

Class 36 Investment management; investment management services; investment in companies; investment in businesses; financial analysis; capital investments; financial consultancy; financial appraisals; financial information; financial management; financing services; fiscal assessments; fund investments; loans financing; private funds; mutual funds; financing; financial exchange services; monetary affairs; financial consultation services relating to investment; financial consultancy relating to overhead costs; mediation in the purchase and sale of stocks and shares; capital investment services and investments; management and evaluation of investment funds; monitoring of investment funds; securities trading and investment services for others; asset management; financial management of stocks; financial investment enquiries; fundraising services; information and consultancy relating to the aforesaid services provided also via electronic means including the Internet; market valuation services.

Class 42 Consultancy in the field of energy-saving; industrial analysis and research services.

The distinctive character 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 (judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 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 (judgment of 09/07/2003, T‑234/01, ‘Stihl’, paragraph 32).

In the present case, the objectionable services covered by the mark applied for are rather specialised services and are mainly aimed at professional public. In view of the nature of the services in question, the awareness of the relevant public will be high. Moreover, since the mark ‘SGP SUSTAINABLE GROWTH PARTNERS’ contains English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Community (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 30).

The trade mark contains the acronym ‘SGP’ followed by the words ‘SUSTAINABLE GROWTH PARTNERS’ with the following meaning(s):

SUSTAINABLE

‘of economic development, energy sources, etc) capable of being maintained at a steady level without exhausting natural resources or causing severe ecological damage ⇒ "sustainable development"

(of economic growth) non-inflationary

http://www.collinsdictionary.com/dictionary/english/sustainable (31/07/2015)

GROWTH

‘an increase in size, number, significance, etc.

‘A stage of development’

http://www.collinsdictionary.com/dictionary/english/growth?showCookiePolicy=true (27/07/2015)

PARTNERS

‘an ally or companion ’

‘a member of a partnership’

http://www.collinsdictionary.com/dictionary/english/partner?showCookiePolicy=true (27/07/2015)

The relevant consumer will understand the words as a meaningful expression: companions who can develop without exhausting natural resources or without causing inflation. Moreover, the element ‘SGP’ will be perceived merely as an acronym of the words ‘SUSTAINABLE GROWTH PARTNERS’.

Lack of distinctive character

For a finding that there is no distinctive character, it is sufficient that the semantic content of the mark indicates to the consumer a characteristic of the services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’, paragraph 31).

The relevant public would perceive the expression ‘SGP SUSTAINABLE GROWTH PARTNERS’ as a promotional laudatory message, the function of which is to describe a characteristic of the services as well as to communicate a value statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services concerned. In particular, considered in relation to the services for which registration is sought, the mark indicates that they are meant to expand or enlarge businesses, in collaboration, with a rate of growth which can be maintained without creating other significant economic or environmental problems, especially for future generations (judgment of 21/01/2010, C‑398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 34).

There is nothing about the expression ‘SGP SUSTAINABLE GROWTH PARTNERS’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. In the present case, these figurative elements consist of the acronym ‘SGP’ written in a slightly stylized typeface and represented inside a rectangle. Moreover, the words SUSTAINABLE GROWTH PARTNERS’ are represented in a horizontal manner and there is a vertical line dividing them from the acronym ‘SGP’. Finally, the mark is represented in blue and grey colours. Nevertheless, those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 74).

Consequently, taken as a whole, the mark applied for – ‘SGP SUSTAINABLE GROWTH PARTNERS’ – is devoid of any distinctive character and is not capable of distinguishing the services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

If you have any observations, they should be submitted within two months from the notification of this communication. If you do not submit any observations, the application will be rejected.

Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

In the light of no response from the Applicant, the Office considers that the original objection raised is valid and consequently, has decided to maintain the objection raised against this application.

Due to the reasons set out above, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for the Community Trade Mark ‘SUSTAINABLE GROWTH PARTNERS’ is hereby rejected.

Under Article 59 of the Community Trade Mark Regulation you have a right to appeal against this decision. Under Article 60 of the Regulation notice of appeal must be filed in writing at the Office within two months from the date of receipt of this notification and within four months from the same date a written statement of the grounds of appeal must be filed. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Carine CEELEN