Refusal of application for a European Union trade mark

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

Alicante, 14/10/2016

TRADE MARK DIRECT

4 Grove Park Studios, 188-192 Sutton Court Road,

Chiswick, London W4 3HR

REINO UNIDO

Application No:	015355902
Your reference:	15588
Trade mark:	BREAK YOUR LIMITS
Mark type:	Word mark
Applicant:	RSscan Lab. Ltd. Unit 10-15, Pegasus, Orion Avenue, Great Blakenham Ipswich IP6 0LW REINO UNIDO

The Office raised an objection on 09/06/2016 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 08/07/2016, which may be summarised as follows:

1. The mark ‘BREAK YOUR LIMITS’ is at best vague and has no definite and concrete meaning in relation to the goods for which registration is sought; it alludes to a possible aspiration in an ambiguous way.

2. The goods at issue are never referred to as ‘Break your limits’ and never have their essential characteristics described in that way in common parlance, this phrase being unusual in English for insoles.

3. The mark is simply a catchy phrase alluding to something exclusive in such a way as to attract as many customers as possible.

4. The registration by the Office of some trade marks containing the word ‘LIMITS’ or ‘LIMIT’ – such as EUTM No 10 579 142 ‘REDEFINE YOUR LIMITS’, EUTM No 4 685 293 ‘HUMAN LIMIT’, EUTM No 1 896 844 ‘MORE FEMININE WITHOUT LIMITS’, EUTM No 10 557 155 ‘LIMITLESS’ and EUTM No 13 805 619 ‘MUSIC HAS NO LIMITS’ – and many decisions by the UK Office, which are listed, support the applicant’s opinion that the examiner’s decision would be contrary to the principle in law of ‘equal treatment’.

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT/2’, paragraph 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’ (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).

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, ‘Bravo’, 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).

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, C‑456/01 P and C‑457/01 P, ‘Tabs’, 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, ‘Soap device’, paragraph 42; and judgment of 03/12/2003, T‑305/02, ‘Bottle’, paragraph 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’ (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).

The Office replies to the applicant’s comments as follows:

1. The mark ‘BREAK YOUR LIMITS’ is at best vague and has no definite and concrete meaning in relation to the goods for which registration is sought; it alludes to a possible aspiration in an ambiguous way.

The expression ‘BREAK YOUR LIMITS’ conveys a clear message in relation to these goods, as explained several times. Therefore, the Office cannot agree with the applicant’s argument that the sign ‘BREAK YOUR LIMITS’ is allusive and does not have a descriptive meaning for the goods in question. Even if this description is not directly descriptive of inherent or essential characteristics of the goods in question, it is a typical statement in advertising and promotion. The sign consists merely of a slogan with a simple and direct message, which emphasises, in a laudatory way, certain qualities of the goods: that they help consumers to exceed their own limits, therefore achieving better results, or to perform better by exceeding or moving beyond self-imposed limits.

The Office is not obliged to demonstrate that the meaning of the expression is immediately apparent to the relevant consumers targeted by the goods and services. It suffices that the expression is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which registration is sought, or of a characteristic of those goods and services (judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraphs 36-39). It is not necessary for the Office to demonstrate that there is a present or future need for third parties to use the descriptive expression applied for (judgment of 04/05/1999, C‑108/97, ‘Chiemsee’, paragraph 35; judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 61).

2. The goods at issue are never referred to as ‘Break your limits’ and never have their essential characteristics described in that way in common parlance, this phrase being unusual in English for insoles.

The expression ‘BREAK YOUR LIMITS’ is composed of three plain, self-explanatory English words indicating that the goods for which registration is sought allow consumers to achieve better results and help them in striving for more, moving beyond or exceeding their self-imposed limits. These elements contain direct promotional information regarding the goods in question.

Even if the expression were taken alone and analysed in isolation, with no reference to the goods in question, the relevant public would still see the slogan as a mere advertising promotional formula. Accordingly, the Office has consistently refused registration to slogans that could appear, a priori, ‘vague and indefinite’ when seen in the abstract (e.g. judgment of 03/07/2003, T‑122/01, ‘Best Buy’; judgment of 11/12/2012, T‑22/12, ‘Qualitat hat Zukunft’; judgment of 12/07/2012, C‑311/11 P, ‘Wir machen das Besondere einfach’; judgment of 23/09/2011, T‑251/08, ‘Passion for better food’; judgment of 07/09/2011, T‑524/09, ‘Better homes and gardens’; judgment of 08/02/2011, T‑157/08, ‘Insulate for life’; judgment of 05/12/2002, T‑130/01, ‘Real People, Real Solutions’; and judgment of 17/11/2009, T‑473/08, ‘Thinking ahead’).

Moreover, these kinds of slogans might be deemed distinctive if, apart from their promotional function, the public perceived them as an indication of the commercial origin of the goods or services in question. The applicant failed to submit any evidence to prove that the trade mark applied for possesses inherent distinctiveness that would immediately be perceived by the relevant public, as claimed in its observations.

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’ (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).

3. The mark is simply a catchy phrase alluding to something exclusive in such a way as to attract as many customers as possible.

Contrary to the applicant’s view, the expression ‘BREAK YOUR LIMITS’ does not contain any element that could enable the relevant public to perceive it as an indication that the goods have a particular commercial origin. Firstly, the expression does not diverge from the rules of English grammar or syntax; rather, it complies with them. Secondly, the sign does not display any originality or resonance that might make it easy to remember as a distinctive sign. It is, therefore, concluded that the mark will be perceived by the relevant public primarily as a banal promotional slogan, and not as a trade mark (judgment of 05/12/2002, T‑130/01, ‘Real People, Real Solutions’, paragraphs 29 and 30).

For the relevant consumer, no mental process is required to interpret the message conveyed by the mark applied for, as the meaning, when applied to the goods, is clear and unambiguous.

Furthermore, 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 (judgment of 15/09/2005, T‑320/03, ‘Live richly’, paragraph 84).

The Office is not obliged to demonstrate that the meaning of the expression is immediately apparent to the relevant consumers targeted by the goods and services. It suffices that the expression is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which registration is sought, or of a characteristic of those goods and services (judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraphs 36-39). It is not necessary for the Office to demonstrate that there is a present or future need for third parties to use the descriptive expression applied for (judgment of 04/05/1999, C‑108/97, ‘Chiemsee’, paragraph 35; judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 61).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially. (See judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102.)

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’ (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).

4. The registration by the Office of some trade marks containing the word ‘LIMIT’ or ‘LIMITS’ – such as EUTM No 10 579 142 ‘REDEFINE YOUR LIMITS’, EUTM No 4 685 293 ‘HUMAN LIMIT’, EUTM No 1 896 844 ‘MORE FEMININE WITHOUT LIMITS’, EUTM No 10 557 155 ‘LIMITLESS’ and EUTM No 13 805 619 ‘MUSIC HAS NO LIMITS’ – and many decisions by the UK Office, which are listed, support the applicant’s opinion that the examiner’s decision would be contrary to the principle in law of ‘equal treatment’.

Previous acceptances of other marks containing the word ‘LIMIT’ or ‘LIMITS’ are not relevant, since those registrations are not the same as the mark applied for and cannot be taken into account in an assessment of the merits of this application. The mere fact that they have one word in common with the sign at issue cannot result in similar treatment. Moreover, it is well-established practice to consider each new application on the basis of the specific circumstances of the case, on its own merits and not by reference to other applications.

Some of these slogans were registered between 1999 and 2006. Since then, the Office’s practice has altered considerably and new guidelines have been implemented. Furthermore, the Office strives to be consistent and always considers its previous registrations; however, each examination must be considered on its own merit and decisions must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence behind them. In addition, it is not necessary for the examination of the trade mark in question to examine other trade marks that have previously been examined by the Office. 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 (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).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 (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).

As regards the national decisions referred to by the applicant, according to case-law: ‘the European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed 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’ (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 47).

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 unlawful acts committed in favour of another (judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 67).

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.

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 15 355 902 is hereby rejected.

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.

Gordana TRIPKOVIC