Refusal of application for a European Union trade mark

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

Alicante, 27/09/2016

TAYLOR WESSING

Thurn-und-Taxis-Platz 6

D-60313 Frankfurt am Main

ALEMANIA

Application No:	015417521
Your reference:	TRI166.D1001-HA-ao
Trade mark:	BUILDING BETTER BUSINESSES
Mark type:	Word mark
Applicant:	Triton Partners (Holdco) Limited Charter Place, 1st Floor 23-27 Seaton Place St. Helier JE2 3QL JERSEY

The Office raised an objection on 30/05/2016 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 30/06/2016, which may be summarised as follows:

1. The mark applied for may be perceived as a promotional formula and at the same time as an indication of the commercial origin of services (judgment of 12/07/12, C‑311/11 P, ‘Wir machen das Besondere einfach’, paragraph 30; and judgment of 21/10/10, C‑398/09, ‘Vorsprung durch Technik’, paragraph 45). Advertising slogans must be seen as having the minimum degree of distinctiveness whenever they are seen as more than a mere advertising message (see Guidelines, part B, Section 4, 2.2.6, p. 21).

2. The phrase ‘BUILDING BETTER BUSINESSES’ is characterised by alliteration of the letter ‘B’ and has a special rhythm and cadence, which, altogether, create the impression of an original and powerful phrase.

3. The applicant refutes that the sign is descriptive for all the services, claiming that it is only suggestive or allusive as regards certain of their characteristics, even if both the average consumer and a member of a professional public would understand it as ‘creating or obtaining better businesses in future’, as it would not be understood as referring to a specific characteristic of the services for which registration is sought. Although it might be understood as having positive connotations and being laudatory in a broad sense, services in Class 36 involve carrying out genuine business activities of the provider’s own, not improving or fostering other businesses.

4. The applicant draws attention to earlier registrations very similar to the mark applied for, namely EUTM No 14 842 942 ‘BUILDING BETTER DAYS’; EUTM No 3 203 171 ‘BUILDING BETTER BARRIERS’, EUTM No 13 630 744 ‘BUILDING BETTER SKIN’.

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).

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 replies to the applicant’s comments as follows:

1. The mark applied for may be perceived as a promotional formula and at the same time as an indication of the commercial origin of goods or services (judgment of 12/07/12, C‑311/11 P, ‘Wir machen das Besondere einfach’, paragraph 30; and judgment of 21/10/10, C‑398/09, ‘Vorsprung durch Technik’, paragraph 45). Advertising slogans must be seen as having the minimum degree of distinctiveness whenever they are seen as more than a mere advertising message (see Guidelines, part B, Section 4, 2.2.6, p. 21).

In its letter of 30/05/2016, the Office has already demonstrated that the sign ‘BUILDING BETTER BUSINESSES’ would indeed be perceived as meaningful. The Office is of the opinion that it sufficiently justified its objections by providing dictionary references and by examining the meaning of the expression, first, by reference to the services, for which registration is sought and, second, by reference to the perception of the relevant public.

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 relevant services, is clear and unambiguous. Namely, the sign clearly implies that the services for which registration is sought enable the consumer to develop a better business or better businesses. It is a meaningful expression that, seen in relation to the relevant services, imparts an immediate and obvious message. In addition, in view of the nature of some of the services 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).

2. The phrase ‘BUILDING BETTER BUSINESSES’ is characterised by alliteration of the letter ‘B’ and has a special rhythm and cadence, which, altogether, create the impression of an original and powerful phrase.

There is nothing new or unusual in the sign ‘BUILDING BETTER BUSINESSES’, which is a mere combination of the elements of which it is composed, conveying obvious and direct information regarding the kind and intended purpose of the services in question. Namely, as already stated in the objection letter dated 30/05/2015, the mark conveys a clearly descriptive message about the services for which registration is sought, as already explained.

The mere repetition of the first letter ‘B’ in each of the three words in the expression ‘BUILDING BETTER BUSINESSES’, an instance of the literary device alliteration, together with a special rhythm and cadence, has no particular imaginative or surprising element. Taken as a whole, the mark is a mere laudatory expression, especially when applied to the services for which registration is sought in the present case. Moreover, the use of alliteration and of a particular cadence and rhythm does not render the sign distinctive.

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 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).

3. The applicant refutes that the sign is descriptive for all the services, claiming that it is only suggestive or allusive as regards certain of their characteristics, even if both the average consumer and a member of a professional public would understand it as ‘creating or obtaining better businesses in future’, as it would not be understood as referring to a specific characteristic of the services for which registration is sought. Although it might be understood as having positive connotations and being laudatory in a broad sense, services in Class 36 involve carrying out genuine business activities of the provider’s own, not improving or fostering other businesses.

The expression ‘BUILDING BETTER BUSINESSES’ conveys a clear message in relation to the relevant services, as explained several times.

Therefore, the Office cannot agree with the applicant’s argument that the sign ‘BUILDING BETTER BUSINESSES’ is allusive and does not have a descriptive meaning for the services in question. The sign applied for immediately informs consumers that the service applied for enable consumers to develop better businesses. 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 services, is clear and unambiguous.

Accordingly, the Office has consistently refused registration to slogans that could appear, a priori, as ‘vague and indefinite’ when seen in the abstract (e.g. 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183; 11/12/2012, T‑22/12, Qualitat hat Zukunft, EU:T:2012:663; 12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460; 23/09/2011, T‑251/08, Passion for better food, EU:T:2011:526; 07/09/2011, T‑524/09, Better homes and gardens, EU:T:2011:434; 08/02/2011, T‑157/08, Insulate for life, EU:T:2011:33; 05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301; and 17/11/2009, T‑473/08, Thinking ahead, EU:T:2009:442).

Moreover, the Office is not obliged to demonstrate that the meaning of the expression would be immediately apparent to the relevant consumers targeted by the services 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 in question, or of a characteristic of those services 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).

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 services 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 applicant draws attention to earlier registrations very similar to the mark applied for, namely EUTM No 14 842 942 ‘BUILDING BETTER DAYS’; EUTM No 3 203 171 ‘BUILDING BETTER BARRIERS’, EUTM No 13 630 744 ‘BUILDING BETTER SKIN’.

Previous registrations of other marks containing words ‘BUILDING BETTER’ and are not relevant since those registrations are not the same as the present application and cannot be taken into account in an assessment of the merits of this application. The registrations cited by the applicant involve neither similar signs nor the same services. The mere fact that they have in common these words 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.

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 (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 unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 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 15 417 521 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