Refusal of application for a European Union trade mark

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

Alicante, 08/07/2016

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

REINO UNIDO

Application No:	015021009
Your reference:	DCF/BEYONDLAW
Trade mark:	BEYOND LAW
Mark type:	Word mark
Applicant:	Lewis Silkin LLP 5 Chancery Lane, Clifford's Inn London EC4A 1BL REINO UNIDO

The Office raised an objection on 12/02/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR 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 11/04/2016, which may be summarised as follows:

1. The mark applied for, ‘BEYOND LAW’ is not descriptive. It is a distinctive expression and not a promotional laudatory message.

2. The mark ‘BEYOND LAW’ has been applied for services in Classes 35, 41 and 45. There should be no arbitrary assessment that the mark is being used by a law firm to provide those services.

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.

General remarks

Firstly, it is stated that the Office did not object to the mark ‘BEYOND LAW’ on the grounds of descriptiveness (Article 7(1)(c) EUTMR) but under Article 7(1)(b) EUTMR and Article 7(2) EUTMR. The applicant has referred to its own dictionary definitions but they have not been enclosed to the mail sent to the Office.

Under Article 7(1)(b) EUTMR, ‘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) EUTMR 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

The marks referred to in Article 7(1)(b) EUTMR 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’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 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’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 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 (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 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 (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 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) EUTMR 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’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The Office’s response to the applicant’s observations

The applicant has argued that the word ‘beyond’ can be used in different manner and it can have positive or negative connotations depending on the context and overall sentence. ‘BEYOND LAW’ does not in itself have a positive connotation and is not a laudatory expression. The Office states that 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84. See also Board of Appeals decisions in cases of 20/02/2012, R 1587/2011-4 ‘BEYOND BANDWIDTH’ and of 11/12/2007, R 1045/2007-2 ‘BEYOND FASHION’).

The Office has not factored the nature of the applicant’s business into the objection but rather considered that if the services applied for are taken together with a sign ‘BEYOND LAW’, the relevant English speaking consumer would immediately understand that he/she will get something more than what is generally offered or available in the field of law. This means either better than standard quality or taking care of something more than the law-related aspects and issues regarding the services applied for. It is obvious that there are both legal and non-legal matters to be considered regarding outsourcing, business mergers, business acquisitions, recruitment and consultancy which are services that the applicant is providing according to the list of services applied for.

The sign applied for will not be perceived as an indication of commercial origin, since the message transmitted by the mark ‘BEYOND LAW’, as a whole, directly informs, in a laudatory way, of a key characteristic of the services relating to their quality. The message is banal and straightforward and is not particularly fanciful or arbitrary. The targeted public will merely perceive it as an expression with an obvious meaning, and not as a trade mark.

Therefore, the Office states that the mark ‘BEYOND LAW’ does not serve the basic function of a trade mark since it would be understood by the relevant public as a mere promotional expression and not as an indication of the origin of the services concerned.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 021 009 is hereby rejected for all the services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.

Sigrid DICKMANNS