Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 04/02/2016

URQUHART-DYKES & LORD LLP

The Podium

1 Eversholt Street

London NW1 2DN

REINO UNIDO

Application No:	014531024
Your reference:	T103939EM1/ATS
Trade mark:	WE TOUCH YOUR LIFE
Mark type:	Word mark
Applicant:	Biosensors Europe S.A. Rue de Lausanne 29 CH-1110 Morges SUIZA

The Office raised an objection on 24/09/2015 pursuant to Article 7(1)(b) and 7(2) CTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 17/11/2015, which may be summarised as follows:

1. The applicant submits the meanings of words.

2. The sign is distinctive.

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.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

The marks referred to in Article 7(1)(b) CTMR 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’, paragraph 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’, paragraph 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (judgment of 04/10/2001, C‑517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T‑138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (judgment of 29/04/2004, joined cases C‑456/01 P and C‑457/01 P, ‘Henkel’, paragraph 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d'une bouteille’, paragraph 34).

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) CTMR 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’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

In this case it is clear that for any kind of goods or services claimed, consumers will perceive clearly the message: we make your life better.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. 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 the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin.

(See judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84.)

In this case the message communicated is that when goods or services used the user's life will be better.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 531 024 WE TOUCH YOUR LIFE is hereby rejected for all the goods and services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Valentín ALONSO MORENO