Refusal of application for a European Union trade mark

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

Alicante, 17/11/2016

LADAS & PARRY LLP

Temple Chambers, 3-7 Temple Avenue

London EC4Y 0DA

REINO UNIDO

Application No:	015329824
Your reference:	T160351.EU
Trade mark:	LIVE BETTER DAYS
Mark type:	Word mark
Applicant:	Teva Pharmaceutical Industries Ltd. Science Based Industries Campus, Har Hotzvim, P.O. Box 1142 Jerusalem 91010 ISRAEL

The Office raised an objection on 03/06/2016 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 25/07/2016, which may be summarised as follows:

1. The Office has used a dictionary to define each word individually and then constructed a meaning based on these definitions; this meaning is not a natural way for the English-speaking consumer to understand the phrase. The mark is not descriptive but rather suggestive in relation to the goods in question, as a mental process is required to understand its meaning. Therefore, the mark is eligible for registration.

2. The words ‘LIVE BETTER’ alone would convey a clearer meaning in relation to the goods than the mark as a whole, but because these words are combined with the word ‘DAYS’ the mark is memorable and capable of identifying the commercial origin of the goods in question. The mark implies a meaning like ‘living better’, which is not descriptive. The phrase is not ordinary and is not likely to be used by English speakers.

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.

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).

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 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 (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In response to applicant’s submissions, the Office states the following:

1.

The Office agrees that the mark is not descriptive but maintains that it will be perceived as a laudatory promotional message in relation to the goods, and this is why the objection was raised only under Article 7(1)(b) EUTMR and Article 7(2) EUTMR, and not under Article 7(1)(c) EUTMR, in the previous objection letter. The dictionary definitions were used merely to prove the meaning of the three words constituting the mark, but the fact remains that, in the combination in question, they convey a clear and easily understandable meaning for the English-speaking consumer.

Furthermore, the fact that a sign 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 a 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. (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

Pharmaceutical preparations and medical instruments have the function of improving health, in other words, they make the user ‘better’; therefore, when encountering the phrase ‘LIVE BETTER DAYS’ in relation to these goods, it is highly likely that the consumer will immediately understand it as promotional message implying that the days this person lives will be better through the use of these goods.

Consequently, the Office maintains that the sign in question is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR. It is acknowledged that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. It is clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant goods/services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR (see 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods and services for which registration is sought.

2.

The Office agrees that the meaning of the phrase is similar to ‘living better’, and is of the opinion that this message lacks the necessary distinctive character, as the goods have the purpose of making the condition of the user’s health better, thus helping them to live better. As regards the word ‘DAYS’, the Office is of the opinion that it, in fact, emphasises and explains the message more clearly: when the user is ‘living better’, the days the user lives also become better. Therefore, the phrase consists of a straightforward, easily understood combination of words with a clear link to the goods in question.

The Office disagrees with the argument that the phrase is not ordinary and is unlikely to be used in everyday English, and even if this were true it would not be sufficient to make the sign distinctive. 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). As explained, this is not the case for the mark applied for, as the phrase in fact highlights positive aspects of the goods concerned, namely that the use of the medical apparatus and pharmaceutical preparations will help the consumer to live each day in a better condition of health.

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 15 329 824 is hereby rejected for the following goods:

Class 05 Pharmaceutical preparations.

Class 10 Surgical and medical apparatus and instruments.

The application may proceed for the remaining services.

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.

Lars Paalgard SOYLAND