Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 11/03/2016

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	014640213
Your reference:	T306382/HJC
Trade mark:	EXPERIENCE FOOD. SAFELY.
Mark type:	Word mark
Applicant:	Professional Disposables International, Inc. Two Nice-Pak Park Orangeburg New York 10962-1376 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 28/10/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 22/12/2015, which may be summarised as follows:

1. The trade mark in question is not descriptive in relation to the services applied for and possesses at least the minimum level of distinctive character required for registration.

2. The trade mark consists of three words having a multitude of meanings, whilst the mark as a whole is vague and requires a mental interpretation.

3. The sign “EXPERIENCE FOOD. SAFELY.” is an original phrase that no one would use to describe the services applied for in Class 41. It‘s an allusive phrase that only vaguely refers to food services.

4. The same sign is already registered in the USPTO under US Trade Mark Serial No. 86/639,182.

5. Regarding the use of the trade mark in question, the relevant public is food service providers that have a high level of attention and will perceive the sign as an indication of origin.

6. Each word composing the mark in question has multiple dictionary definitions from which the examiner has selected the ones best supporting his argument without considering the mark as a whole.

7. The two words “EXPERIENCE” and “SAFELY” are not two words that are used in the same context together.

8. The overall impression conveyed by the mark is different from the individual meanings of the words.

9. The Examiner has ignored the punctuation contained in the trademark and the distinctiveness that the pause, created by the two full stops, adds to the trade mark.

10. The words comprising the mark in question are sufficiently far removed from the services, such that the trade mark does not directly refer to the services or describe a characteristic of them, such as what the experience is about or what specific food is referred to.

11. According to the principal of equal treatment mentioned in the Administrative Decision ADM-00-37, the mark at stake should be accepted since similar trade marks incorporating the elements covered by the trade mark applied for have already been registered.

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.

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).

Under Article 7(1)(c) CTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, 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 services’ are not to be registered.

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 31).

The notion of general interest underlying Article 7(1)(b) of Regulation No 40/94 is, manifestly, indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (SAT.1 v OHIM, paragraphs 23 to 27, and BioID v OHIM, paragraph 60).

‘The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T 222/02, ‘ROBOTUNITS’, paragraph 34).

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).

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).

On this basis, the Office notes that it must be established whether the slogan ‘EXPERIENCE FOOD. SAFELY.’ will be understood by the relevant public as descriptive either directly or by reference to one of the characteristics of the services applied for, or if it is reasonable to believe that it might be understood in this way in the future.

The Office considers this to be the case.

As the applicant correctly states the assessment of the distinctive character of slogans cannot be limited to an evaluation of each of their words or components, considered in isolation, but must, on 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 (Eurohypo v OHIM, paragraph 25 above, paragraph 41).

Moreover, according to settled case-law the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Thus, in order to assess whether or not a trade mark is devoid of any distinctive character, the overall impression given by it must be considered, which may however mean first examining, in that overall assessment, each of the individual components of which that mark is composed (judgment of 17/11/2009, T-473/08, Thinking ahead, paragraph 31).

As the Office previously demonstrated in its objection dated 28/10/2015, the slogan ‘EXPERIENCE FOOD. SAFELY.’ is composed of common English words which create an easily understood whole. The expression does not differ from the general English grammar, is not a lexical invention and does not require any specific thinking to understand its meaning.

In particular, the semantic content of each of the words which comprise the sign, is sufficiently clear and precise and is not likely to undergo a noticeable change when they are combined into a single sign. Furthermore, it follows that, because of its structure and its meaning, the word sign in question does not contain any fancy elements and cannot provoke an effect of surprise on the part of the relevant public.

Despite the applicant’s argument that the words have a multitude of meanings, the Office points out that for a trade mark to be refused registration under Article 7(1)(c) CTMR, it is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for describing goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32, emphasis added).

There is nothing unusual neither about the structure nor about the meaning of the sign at issue, even if the terms in question could be further interpreted in a slightly different way. As stated by Advocate General Jacobs, “it is immediately possible to think of many other instances of general characteristics which may require further definition before the consumer can be sure of what is referred to but which none the less quite clearly remain characteristics of the product in question. To take but one example, to qualify a product as natural is undoubtedly to designate one of its characteristics, whilst leaving any consumer in considerable doubt as to the precise nature of that characteristic, unless further details are provided. Indeed, it is relatively difficult to find indications which may serve to designate characteristics which do not call at some level for further precision (see, for example, the Opinion of Advocate General Jacobs delivered on 10 April 2003 in Case C-191/01 P-Doublemint- paragraph 43).

In this sense, when examining the sign as a whole, “EXPERIENCE” and “SAFELY” are two words that could be easily used in the same context and in particular when both are associated with “FOOD”. It is true, as the applicant argues that the mark, doesn’t describe characteristics such as what the experience is about or what specific food is referred to, but that is because the sign conveys a different message which is related to the services applied for.

In particular, taking into consideration the services applied for, the English-speaking consumer will perceive the trade mark as an expression describing the kind, quality and intended purpose of services such as providing a website featuring educational information regarding preventing pathogens, microorganisms, and other contaminants in food prepared in commercial food preparation, kitchen, food service, and restaurant facilities by use of cleaning, sanitizing, and disinfecting wipe products; training managers and staff in commercial foodservice, kitchen, and restaurant facilities regarding preventing pathogens, microorganisms, and other contaminants in food (Class 41) that are aimed at providing information and training on how to have or offer a food experience in a manner free of hygienic risks or danger of contamination.

Moreover, the two full stops contained in the sign at issue create a pause which, contrary to the applicant’s argument, reinforces the message conveyed by the mark in question. In particular, the full stops are placed one before and the other one after the word “SAFELY”, separating in that way this word from the other two, in order to underline the intended purpose of the services in question, which is to provide information and training on food safety.

As regards the applicant’s argument that the Examiner has to take into account the use of the trade mark in question, the Office points out that 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 (judgment of 03/12/2015 T-628/14, ‘FORTIFY’ paragraphs 33-37 and judgment of 25/09/2015 T-591/14, ‘PerfectRoast’ paragraphs 65 and 57).

In addition, it has to be mentioned that 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).

Therefore, even if the relevant public was considered specialized, as the applicant states, in view of the nature of the services in question, it has been established that even if the awareness of the relevant public is high, given the relatively high scientific level of the goods and services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48). This applies in the case at hand, as the expression ‘EXPERIENCE FOOD. SAFELY.’ functions as a purely promotional laudatory message that provides information on a crucial for the food industry issue, which is food safety. It is therefore more likely that the relevant public consisting of food service providers will perceive the sign as promotional information rather than an indication of commercial origin.

As far as the average consumer is concerned, the sign at issue will be perceived by the relevant public as a non-distinctive combination of words meaning “to have a food experience in a manner free of danger or hazard”, rather than the trade mark of a particular proprietor indicating the commercial origin of the applicant’s goods.

It follows from the foregoing considerations that, from the point of view of the relevant public, the word sign ‘EXPERIENCE FOOD. SAFELY.’ constitutes a principally promotional message that is used to market the services concerned. Therefore, the trademark cannot be accepted since it is the qualitative characteristic of the services applied for and not its commercial origin that is primarily perceived by the relevant trade circles (see judgment of 13 January 2011, C-92/10 P, ‘Best Buy’, para. 53).

As the applicant points out, It is also clear from the wording of Article 7(1)(b) CTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

It should be borne in mind that the registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the holder of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 41).

Nevertheless, a basic non-distinctive and descriptive sign can fulfil the function of identification only if it contains elements which set it apart from other commonly used non-distinctive and descriptive slogans (by analogy decision of 13/04/2011, T-159/10, Parallélogramme, § 24 ). This is not the case for the sign at stake, as the common meaning of each of the words comprising the sign is not likely to undergo a noticeable change when they are combined into a single sign. Furthermore, the unambiguous message conveyed by the sign is not diverted by any fancy elements that would render the mark distinctive.

As regards the US registration of the expression ‘EXPERIENCE FOOD. SAFELY.’ referred to by the applicant, according to case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47).

As regards the argument that the sign at issue is neither customary in use nor required for use by other traders, the Office notes that for a trade mark to be refused registration under Article 7(1)(c) CTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes (judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32).

As regards the applicant’s invocation of the principle of equal treatment, the Office notes that the applicant did not submit examples of previous Community registrations in order to prove that similar trade marks were registered and that, therefore, the principle of equal treatment was not respected.

In any event, it should be stressed that, the validity of a decision that is inherently well-reasoned and has been made in accordance with the CTMR cannot be called into question on the basis of the fact that less restrictive criteria were applied in other cases. According to 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 Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Indeed, the Office must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, 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. Such an examination must therefore be undertaken in each individual case (judgment of 03/12/2015 T-628/14, ‘FORTIFY’ paragraphs 33-37 and judgment of 25/09/2015 T-591/14, ‘PerfectRoast’ paragraphs 65 and 57).

Therefore, although the Office is obliged to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, these principles must be reconciled with observance of the principle of legality according to which no person may rely, in support of his/her claim, on unlawful acts committed in favour of another (27.02.2002, T-106/00, Streamserve, EU:T:2002:43, § 67; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 57).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 640 213 is hereby rejected for all the 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.

Volker Timo MENSING