Refusal of application for a European Union trade mark

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

Alicante, 16/11/2016

SQUIRE PATTON BOGGS (UK) LLP

7 Devonshire Square

London EC2M 4YH

UNITED KINGDOM

Application No:	015438005
Your reference:	FT/POS.123-0001/M-EU01
Trade mark:	POSITIVE MOMENTUM
Mark type:	Word mark
Applicant:	Positive Momentum Limited Hyde Mill Cottage, Old Hale Way Ickleford, Hitchin Hertfordshire SG5 3UW UNITED KINGDOM

1. Summary of the facts

The Office raised an objection on 03/06/206 pursuant to Article 7(1)(b) and 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for all the services for which registration is sought, for the reasons set out in the attached letter.

2. Observations of the applicant

The applicant submitted its observations on 02/08/2016, which may be summarised as follows:

• The mark applied for ‑ ‘POSITIVE MOMENTUM’ ‑ is not descriptive of the services in Classes 35 and 41 for which registration is sought. Therefore, the mark is capable of distinguishing the applicant’s services concerned from the competitors’ services of the same kind.

• The mere fact that a mark can be perceived as a promotional formula is not sufficient to support the conclusion that it is devoid of any distinctive character in relation to the goods and services in question.

• The registration of the mark ‘POSITIVE MOMENTUM’ is sought for the services that are primarily aimed at a professional public, whose awareness, by definition, is higher than that of the general public. That public would perceive the mark as an indicator of trade origin, rather than an advertising slogan conveying a promotional, laudatory message.

• The provided examples of the ‘common use’ of the mark in the relevant market are not determinative. In all these examples, the mark is used in the construction of sentences. A mark should not be denied registration because it can be used in a sentence in a non-distinctive manner.

3. Decision

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.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

Under Article 7(1)(b) EUTMR, the registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case law cited therein). It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T-320/03, LIVE RICHLY, EU:T:2005:325, § 68.)

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, Merz & Krell, 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). It is also well established that it is not necessary for a slogan to be imaginative, creative or surprising, or to create a striking impression, for it to achieve the minimal level of distinctiveness required under Article 7(1)(b) EUTMR (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:T:2013:169, § 47).

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, Henkel, EU:C:2004:258, § 38).

In addition, any sign of which the primary function is anything other than identifying trade origin may not be perceived by the average consumer as an indication of trade origin (05/12/2002, T-130/01, REAL PEOPLE, REAL SOLUTIONS, EU:T:2002:301).

The Office has considered the mark at issue in accordance with the abovementioned case law and maintains that it is not capable of functioning as a badge of the commercial origin of the services in question.

The applicant argues that the mark ‘POSITIVE MOMENTUM’ is not descriptive of the business and educational services for which registration is sought. In response to this argument, firstly, the Office points out that the mark was not found to be descriptive of the services concerned. The objection raised against the mark is under Article 7(1)(b) EUTMR only, and not under Article 7(1)(c) EUTMR regulating descriptiveness. In other words, the mark at issue was found to be non-distinctive per se, and not because of its descriptiveness. Secondly, it should also be emphasised that, in relation to an objection under Article 7(1)(b) EUTMR, a finding of descriptiveness is not required. As already mentioned in the introductory part of this decision, 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. Consequently, all the applicant’s arguments relating to the non-descriptiveness of the mark at issue are irrelevant.

As regards the applicant’s argument relating to the ability of a slogan to possess distinctive character and to serve as an indication of commercial indication of goods and services in question, it is a well-known fact that a slogan primarily fulfils functions other than that of a trade mark in a traditional sense (05/12/2002, T-130/01, REAL PEOPLE, REAL SOLUTIONS, EU:T:2002:301). Therefore, these marks are only distinctive for the purposes of Article 7(1)(b) EUTMR and must be recognised as having distinctiveness if, apart from their promotional function, they may be perceived immediately as an indication of the commercial origin of the goods and 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 13/04/2011, T-523/09, WIR MACHEN DAS BESONDERE EINFACH, EU:T:2011:175, § 31 confirmed by judgment of 12/07/2012, C-311/11 P, WIR MACHEN DAS BESONDERE EINFACH, EU:C:2012:460). The Office does not find this to be the case in the present application. The crux of the notification of refusal was that the Office expected the consumer to perceive the trade mark merely as a slogan, and not as an indication of trade origin. A slogan, to be registered as a trade mark, must possess ‘a certain originality or resonance, requiring at least some interpretation by the relevant public, or setting off a cognitive process in the minds of that public’ (21/01/2010, C-398/08 P, Vorsprung Durch Technik, EU:C:2010:29, § 57). The Office does not find that the message conveyed by the mark ‘POSITIVE MOMENTUM’, which is per se simple and clear, requires any mental effort on the part of the relevant public, or sets off a cognitive process in the minds of the members of that public.

The applicant is correct in stating that the services for which registration of the mark ‘POSITIVE MOMENTUM’ is sought are mainly aimed at the professional public. However, the Office, contrary to the applicant’s argument, does not consider that it makes the mark capable of performing the essential function of a trade mark in relation to the services in question. As the Court of Justice has stated, ‘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, Smart Technologies, EU:C:2012:460, § 48). Accordingly, the Office maintains that the relevant public would perceive the mark merely as a promotional message the function of which is to highlight the positive aspects of the applicant’s services in question, namely that its services, in addition to their primary purposes, enable users to develop and maintain positive momentum and, thus, achieve their desired goals in their professional careers, unlike the competitors’ services of the same kind that are offered elsewhere (12/07/2012, C-311/11 P, Smart Technologies, EU:C:2012:460, § 34).

As far as the applicant’s final argument is concerned, it is settled case law that ‘signs that are commonly used in connection with the marketing of the goods and services concerned are devoid of distinctive character’ (03/07/2003, T-122/01, BEST BUY, EU:T:2003:183, § 20). Such marks are not capable of performing the essential function of a trade mark in relation to the goods and services covered, because customers are accustomed to seeing these marks in relation to the advertising of goods and services and, therefore, do not accord them any value as trade marks. In the present case, even a simple “Google” search reveals that the expression ‘POSITIVE MOMENTUM’ has already been used in the relevant market to advertise and promote business and educational services, as already shown in the examples submitted of the use to which the applicant refers. Therefore, the relevant public, when encountering the mark in relation to any of the services concerned, would perceived it merely as an advertising slogan, and not as a trade mark.

The Office does not find the trade mark to have even the minimal degree of distinctiveness required to overcome an Article 7(1)(b) EUTMR objection (21/10/2001, C-64/02 P, DAS PRINZIP DER BEQUEMLICHKEIT, EU:C:2004:645) and concludes that it will not be capable of performing the essential function of a trade mark in respect of the services for which registration is sought.

For all the reasons given above, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 15 438 005 is hereby refused for all the services for which registration is sought.

4. Right to appeal

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 with the Office within two months of the date of notification of this decision. 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.

Mirjana PUSKARIC