Refusal of application for a European Union trade mark

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

Alicante, 11/01/2017

Stèphano Sabetti

Edificio Can Toni 347 carretera san jose-es cubells

E-07830 ibiza

ESPAÑA

Application No:	015608516
Your reference:
Trade mark:	center for heartfulness
Mark type:	Word mark
Applicant:	Stèphano Sabetti Edificio Can Toni 347 carretera san jose-es cubells E-07830 ibiza ESPAÑA

The Office raised an objection on 22/07/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 25/07/2016.

The observations submitted can be interpreted that the applicant claims having acquired distinctiveness for the sign ‘center for heartfulness’ based on his usage from 2013.

To prove this, a training brochure and two screen shots from the website http://heartful.one, as well as a certificate of the registration of the company name ‘CENTER FOR HEARTFULNESS, SOCIEDAD LIMITADA’ are added.

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.

1) Article 7(1)(c) EUTMR

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office still has the view that the sign ‘center for heartfulness’ immediately informs consumers without further reflection that the content of the services in question refer to all aspects of the fact or quality of being heartful. The sign therefore conveys obvious and direct information regarding the kind and intended purpose of the services in question and the applicant has not brought forward any argument to refute this point.

2) Article 7(1)(b) EUTMR

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).

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character, which is clearly applicable to the present case.

3) Article 7(3) EUTMR

The Office interprets the applicant´s observations as a claim for acquired distinctiveness under Article 7(3) EUTMR as a result of the use of the sign since 2013.

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

Considering the observations of the applicant, it should be stated that the documents submitted are not enough to conclude that the sign ‘center for heartfulness’ has an acquired distinctiveness through use.

A sole advertising for a training submitted as a “training brochure” regarding a ‘Heartfulness training’ in Copenhagen is not enough to conclude that at least a significant proportion of the relevant section of the public identifies the services in question as originating from the applicant.

Considering the two screen shots of the website http://heartful.one are also not enough to conclude that the sign has acquired distinctiveness. These screen shots do not show any dates or even that the website relates to the applicant. Accordingly, neither the training brochure nor the other evidence comply with the aforementioned requirements and the applicant hasn’t filed any further evidence.

In its observation the applicant also submitted a certificate for the company name ‘CENTER FOR HEARTFULNESS, SOCIEDAD LIMITADA’ dated 21/06/2016 in Spain. This certificate is also not enough as the evidence does not show any use neither of the trademark nor in relation to the services applied for.

The documents submitted by the applicant are not sufficient to have an idea regarding the fulfilment of the aforementioned factors to be taken into account for the examination of acquisition of distinctiveness through use. Accordingly, in the light of these submissions, it cannot be concluded that the relevant class of persons, or at least a significant proportion thereof, identify the services in question as originating from the applicant because of the sign in question.

Since the applicant did not submit any further observations apart from above mentioned documents, the Office maintains its objection.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 608 516 is hereby rejected for all the services 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.

Kubilay ÖZDEMIR