Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 14/04/2016

HOYNG ROKH MONEGIER SPAIN LLP

Calle Ruiz de Alarcón, 7-2º Dcha

E-28014 Madrid

ESPAÑA

Application No:	014803407
Your reference:	30649.1519.EMT0
Trade mark:	ADVANCE
Mark type:	Word mark
Applicant:	Philip Morris Brands Sàrl Quai Jeanrenaud 3 CH-2000 Neuchâtel SUIZA

The Office raised an objection on 02/12/2015, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character. The objection letter is attached.

For ease of reference, the contested goods are as follows:

Class 34 Tobacco, raw or manufactured; tobacco products; cigars, cigarettes, cigarillos, tobacco for roll your own cigarettes, pipe tobacco, chewing tobacco, snuff tobacco, kretek; snus; tobacco substitutes (not for medical purposes); electronic cigarettes; tobacco products for the purpose of being heated; electronic devices and their parts for the purpose of heating cigarettes or tobacco in order to release nicotine-containing aerosol for inhalation; smokers' articles, cigarette paper, cigarette tubes, cigarette filters, tobacco tins, cigarette cases, ashtrays, pipes, pocket apparatus for rolling cigarettes, lighters, matches.

The applicant submitted its observations on 02/02/2016 which may be summarised as follows:

• It is simply impossible to imagine how the term ADVANCE can refer directly to tobacco products or to one of the essential characteristics of such products in common parlance.

• Although one on the meanings of the term ADVANCE is improvement ADVANCE (unlike ‘improvement’) is not a term used in common parlance in English in the context of these kind of goods to refer to an improvement of a previous version of an improvement vis a vis competitors.

• The relevant consumer will immediately and without further reflection perceive from this expression on the Class 34 products.

• One thing is the meaning a term may have and another one (the relevant aspect) how the term as such is used and therefore perceived in association with the goods.

• There are a large number of terms in the English language with similar meanings which are however used in very different grammatical ways and expressions depending on the context and there is only one of several contexts in which such terms are normally used and other contexts in which such terms would never be used. It is in the latter case when such terms function as merely evocative.

• ADVANCE is in fact a merely evocative or suggestive term. It is indeed suggestive of the concept of going forward and of the idea of progress but in an indirect and abstract fashion when seen in relation with the relevant goods.

• In fact, when an undertaking extols, indirectly and in an abstract manner the excellence of its products without directly and immediately informing the consumer of one of the qualities or specific characteristics of the products, it is a case of evocation and not designation for the purpose of Article 7(1)(c) EUTMR.

• ADVANCE is a vague term which does in no way designate specific characteristics of the intended goods but merely evokes a positive abstract concept in the context of the relevant products.

• The sign ADVANCE is not devoid of distinctiveness either. If a message requires a measure of interpretation on the part of the public and sets off a minimal cognitive process, the sign is to be declared distinctive because even laudatory terms which are perceived as a promotional formula may function as a trade mark.

• It is not the promotional or laudatory aspect of a sign what makes it devoid of distinctive character, namely that it is incapable of identifying a business origin at the same time as being perceived as a laudatory message.

• The sign ADVANCE is an abstract resonant message conveying information related to the positive idea of progress but which does not directly refer to the goods themselves or any of their characteristics or their market value.

• Consumers would thus perceive the mark as sufficiently abstract and resonant to memorize it easily and recognise a business origin behind the mark, in addition to their perception of its laudatory condition, which it possesses by virtue of an appeal in the consumer’s mind to the abstract and positive concept of progress.

• The Office is specifically reminded of the findings of the Court of Justice in the judgement of 21/01/2010 in case C-398/08P audi AG v OHIM (EUIPO). It is clear that the same (if not higher) measure of interpretation is required by the consumers when they see an abstract message such as ADVANCE on class 34 goods.

Pursuant to Article 75 EUTMR, 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 in relation to the goods claimed.

Under Article 7(1)(c) EUTMR, ‘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 service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Judgment of 16 September 2004, Case C-329/02P SAT.1 SatellitenFernsehen GmbH / OHIM, (SAT.2), ECR I-8317, paragraph 25).

By prohibiting the registration as European trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR 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 October 2003, Case C-191/01P, OHIM /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

In the present case, the Office remains of the opinion that contrary to what the applicant says the term ADVANCE is indeed descriptive of the kind, characteristics and quality of the goods in question.

In the present case, the objectionable goods covered by the mark applied for are everyday consumption/mass consumption goods mainly aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Moreover, since the mark ADVANCE consists of an English language word, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-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 expression applied for consists of a readily identifiable word from the English language, namely ADVANCE. There is nothing unusual about the sign in relation to the contested goods. As such, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the objectionable goods on the basis that the message expressed by the sign is clear, direct and immediate to the relevant public and in relation to the contested goods. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the contested goods claimed.

To reiterate, the Office remains of the opinion that the word immediately informs consumers without further reflection that the contested goods are an improvement and advancement of such goods compared to previous/other similar products in the marketplace. Therefore, the mark conveys obvious and direct information regarding the kind, characteristics and quality of the goods in question on the basis that the word the expression consists of provides a straightforward and clear message in relation to the goods concerned.

With regard to the argument that the expression ADVANCE is not commonly used in the relevant market, the applicant is reminded that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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 such as those in relation to which the application is filed, or of characteristics of those goods. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods concerned (See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32.).

As regards the argument that the relevant consumer would immediately and without further reflection perceive the word mark ADVANCE to be a distinctive badge of origin and not as a non-distinctive/descriptive term in relation to the goods in question it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods (see, by analogy, judgment of 22/06/2004, T-185/02, 'PICARO', paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T‑129/04, 'Develey', paragraph 19).

It is on that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as a descriptive message and not as the trade mark of a particular manufacturer. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is for the applicant to provide specific and substantiated information to show that the trade mark sought has either an intrinsic distinctive character or a distinctive character acquired by usage, since it is much better placed to do so, given its thorough knowledge of the market (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 48).

Additionally, there is no evidence to suggest that the relevant consumer in the area of the goods claimed would be particularly trade mark ‘educated’ or savvy and as such would instantly perceive ADVANCE as a trade mark in relation to the contested goods rather than a descriptive message in relation to the kind, characteristics and quality of the goods concerned.

Furthermore, it is important for the applicant to recall that for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the relevant consumer a characteristic of the goods relating to its 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 goods (see judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, paragraph 31).

Moreover, 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 covered by that mark is not excluded as such by virtue of such use (see, by analogy, 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 (see judgment of 11/12/2001, T-138/00, 'DAS PRINZIP DER BEQUEMLICHKEIT', paragraph 44).

Additionally, it has to be put forward that the Court of Justice has held 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 (see judgment of 29/04/2004, joined cases C-456/01 P and C-457/01 P, 'Henkel', paragraph 38).

Furthermore, it is also settled case-law that the way in which the relevant public, perceives a trade mark is influenced by that person’s level of attention, which is likely to vary according to the category of the goods in question (see judgment of 05/03/2003, T-194/01, 'Unilever', paragraph 42 and judgment of 03/12/2003, T- 305/02, 'Nestlé Waters France', paragraph 34).

Consequently, a sign which 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 however if it may be perceived immediately as an indication of the commercial origin of the goods in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods of the owner of the mark from those of a different commercial origin.

Furthermore, there is nothing in the expression ADVANCE that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense.

Taking into account the goods applied for, the term ADVANCE will simply be perceived as a laudatory promotional message that sends a promotional/marking message concerning the positive aspects of the goods claimed. The word applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 26).

Furthermore, it must be said that the above findings do not contradict the relevant case law on which the applicant relies. The Office stresses that the sign applied for is not rejected under Article 7(1)(b) EUTMR merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning. The case law on which the applicant relies cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 27).

The Office considers that it has sufficiently justified the objection. The Office provided dictionary references in its original objection and examined the meaning of the term in relation to the goods in question.

As a result, the Office came to the conclusion that the term ADVANCE consists exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as a descriptive non-distinctive message about the goods applied for, indicating to the relevant consumer positive aspects of the goods concerned.

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Trade Mark ADVANCE is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60 EUTMR, 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.

Sam CONGREVE