Refusal of application for a European Union trade mark

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

Alicante, 22/12/2016

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	015435209
Your reference:	TMU/CF2/4683170
Trade mark:	WATER BOOST
Mark type:	Word mark
Applicant:	Accantia Group Holdings Unilever House, 100 Victoria Embankment London EC4Y 0DY REINO UNIDO

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 30/09/2016, after the extension of a deadline, which may be summarised as follows:

1. The applicant submits that the mark ‘WATER BOOST’ does not convey a clear descriptive message with regard to the goods covered in class 3, at its best is vague and seen as allusive and indirect reference.

2. The mark ‘WATER BOOST’ is a composite whole that is greater than the sum of its parts.

3. There is no particularisation of the goods provided.

4. The examiner incorrectly concluded that consumers will link the word ‘water’ of the mark ‘WATER BOOST’ with ‘hydration’ of the skin.

5. The mark cannot be seen as promotional message.

6. The applicant concludes with drawing reference to other already accepted registrations from the EUIPO: ‘WATER PEARL’ EUTM No. 3826997; ‘WATER PERFECT’ EUTM No. 3653433, ‘WATER PILL’ EUTM No. 1699610.

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 applicant submits that the mark ‘WATER BOOST’ does not convey a clear descriptive message with regard to the goods covered in class 3, at its best is vague and seen as allusive and indirect reference.

The expression ‘WATER BOOST’ 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 ‘WATER BOOST’ 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 cosmetic goods and toiletry offered: that they help consumers to increase the moisture of their skin, increase hydration.

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 mark ‘WATER BOOST’ is a composite whole that is greater than the sum of its parts.

The Office concurs with this notion as the mark is a compound mark made of several word elements. In this regard, it must be remembered that for the purposes of assessing its distinctive character, the mark must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (see judgement of 19/09/2001, T-118/OO, ‘Procter &Gamble, paragraph 59). The mark applied for ‘WATER BOOST’ is composed of two plain, self-explanatory English words which will be readily understood by the average consumer. The message given out will indicate that the goods are basic skin and hair products which allow consumers achieve better hydration of the skin, hair, therefore increasing the moisture level of the skin. These elements contain direct promotional information regarding the goods in question.

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. There is no particularisation of the goods provided.

As regards the applicant’s argument that the examiner should have provided sufficient reasoning for all the refused goods and services covered by the application, it must be recalled that the Court has confirmed that where the same ground of refusal is given to a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (judgment of 15/02/2007, C‑239/05, ‘THE KITCHEN COMPANY’, paragraph 38).

Given that the sign in question is a plain, obvious sign consisting of two plain words, it is non-distinctive for goods at issue; in the present case, it is non-distinctive for all the goods in Class 3, which all contribute to increasing the level of hydration, moisturizing skin, hair etc. with the use of cosmetic preparations offered:

Preparations increasing the level of hydration, moisturizing skin and hair

EN-3 Soap; medicated soap; cleaning preparations; essential oils; hair care preparations; shampoos and conditioners; hair colourants; hair styling products; non-medicated toilet preparations; bath and shower preparations; skin care preparations; oils, creams and lotions for the skin; shaving preparations; pre-shave and aftershave preparations; petroleum jelly; lip care preparations; tissues, pads or wipes impregnated or pre-moistened with personal cleansing or cosmetic lotions; beauty masks, facial packs.

The sign applied for is devoid of elements that could, apart from its intended purpose, enable the average relevant consumer to easily and immediately memorise it as a trade mark for the goods referred to (see, to that effect, judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, § 44, 45 and 56–59). In other words, the targeted public will see the sign applied for as a general laudatory message without regarding it as containing an indication of commercial origin that refers to a specific undertaking behind that indication.

4. The examiner incorrectly concluded that consumers will link the word ‘water’ of the mark ‘WATER BOOST’ with ‘hydration’ of the skin.

The Office reiterates the argument under point 2.

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. ‘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’).

5. The mark cannot be seen as promotional message.

Contrary to the applicant’s view, the expression ‘WATER BOOST’ 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).

6. The applicant concludes with drawing reference to other already accepted registrations from the EUIPO: ‘WATER PEARL’ EUTM No. 3826997; ‘WATER PERFECT’ EUTM No. 3653433, ‘WATER PILL’ EUTM No. 1699610.

Previous acceptances of other marks containing the word ‘WATER’ 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 marks were registered between 2000 and 2004. 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).

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 waive the objection for the following goods:

EN-3 Perfumery; deodorants and antiperspirants; cologne; depilatory preparations; sun-tanning and sun protection preparations; cosmetics; make-up and make-up removing preparations; talcum powder; cotton wool for cosmetic purposes; cotton sticks for cosmetic purposes.

The application will be rejected for the remaining goods.

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 15 435 209 is hereby rejected for the goods 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.

Gordana TRIPKOVIC