Refusal of application for a European Union trade mark

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

Alicante, 25/07/2016

BISON RIVER LIMITED

Unit 8

Valley Court Offices

Lower Road

Croydon Near Royston, Herts SG8 0HF

United Kingdom

Application No:	15 033 319
Your reference:	TEU7130
Trade mark:	CONFIDENCE
Mark type:	Word mark
Applicant:	S247 Brands Limited Units 3 and 4, Lower Park Farm, Storrage Lane Alvechurch, Worcestershire B48 7ER United Kingdom

The Office raised an objection on 15/03/2016 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 28/04/2016, which may be summarised as follows:

1. The applicant disagrees that “CONFIDENCE” is a usual word or meaningful promotional expression in relation to the goods/services covered by the application.

2. In the absence of any additional element, “CONFIDENCE” has a totally different meaning and connotation and is ambiguous thus it will be perceived differently by different consumers depending on what they interpret the word to comprise.

3. The Office has already recognised the distinctiveness of the trade mark “CONFIDENCE” in a previous opposition case. The Office has also accepted several word marks with similar simple messages containing similar positive connotation, such as “TRUST”, “FAITH”, “RELIABLE”, “ENDURANCE”.

4. The applicant owns two registered EUTMs consisting of the word “CONFIDENCE”, which are, nevertheless, admittedly figurative marks. At the same time the applicant claims that in the practice their verbal element, “CONFIDENCE” already functions as an indicator of origin. The applicant attaches screenshots from Google search and online webshops showing use of the word “CONFIDENCE” in relation to golf clubs.

5. The applicant is unaware of any other organisation using the mark as a brand or descriptor.

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.

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).

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).

In the present case the Office continues to be of the view that the the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which relates to trustworthiness, reliability, and the promise of boosting one’s confidence.

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 so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin. (See judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84.)

While the relevant public might, as the applicant argues, have several interpretations as to how the notion of confidence is connected to the goods marketed, ultimately all those interpretations will lead the public to an assurance as regards positive, desirable aspects of the goods and services.

Even without any additional qualifying terms, the term “CONFIDENCE” is so routinely used in the marketing of goods and services, that consumers have become accustomed to the customer service message it delivers and would not be able to identify one particular undertaking behind such a word.

The Office thus maintains that there is is nothing unusual or striking about the expression ‘CONFIDENCE‘ that might, beyond its obvious promotional laudatory meaning appealing to customer confidence, serve 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.

The applicant’s claim that no other competitors appear to make use of the same term is not relevant in this respect.

As regards the applicant’s argument that the distinctiveness of “CONFIDENCE” was recognised in opposition No B 2 464 579, it should be pointed out that the English-speaking relevant public was explicitly excluded from the assessment which found the mark having normal distinctiveness.

The applicant also argues that marks with similar positive connotation have already been registered with the Office. In this respect it should be emphasised that 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. That examination must be undertaken in each individual case. 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 (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited).

While the assessment of the earlier registrations the applicant refers to is not subject to the present evaluation, it should be stated in general that the previous registrations listed by the applicant largely covered different goods and services from those of the present application. Some of the applications were figurative where the stylisation might have played a role in the finding of distinctive character, such as for the marks “RELIABLE”, or the earlier figurative “CONFIDENCE” marks of the applicant. Moreover, it should be noted that the Office also refused certain trade mark applications for the words “TRUST” or “ENDURANCE”.

In any event, even if the Office might have registered certain earlier trade marks erroneously in the past, this does not oblige the Office to continue applying similar wrong assessment to subsequent registrations, because according to settled case‑law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on possibly unlawful acts’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

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 15 033 319 is hereby rejected for all the goods and 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.

Marianna KONDAS