Refusal of application for a European Union trade mark

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

Alicante, 13/01/2017

TRADEMARKROOM LIMITED

4 Brunswick Place

Southampton, Hampshire SO15 2AN

REINO UNIDO

Application No:	015701816
Your reference:	JC/TMR/LIHIFI/WO/03
Trade mark:	Love It! Feel it! Hold it!
Mark type:	Word mark
Applicant:	Kristine Martinenko Flat 3 Tudor Lodge, 95 Bromley High street London E3 3DS REINO UNIDO

The Office raised an objection on 11/08/2016 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 21/09/2016, which may be summarised as follows:

1. The mark is distinctive.

2. Similar marks have previously been registered.

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.

As a preliminary remark it can be mentioned that the applicant’s specification of the goods and services following a deficiency of the list of goods and services, does not affect the refusal based on the mark’s distinctiveness, as the amendment does not change the substantial character of the goods and services.

General remarks

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).

1. The mark is distinctive

Firstly, the Office points out that the refusal of the mark is based on Article 7(1)(b) EUTMR and Article 7(2) EUTMR, and not on the national legislation of the United Kingdom, namely the Trade Mark Act 1994. Therefore, Article 3(1)(c) of the Trade Mark Act 1994 is irrelevant.

Secondly, the refusal is not based on Article 7(1)(c) EUTMR, and it is not the Office’s opinion that the mark describes any characteristics of the goods. However, in its previous communication the Office submits that the mark cannot be registered as it will merely be perceived as a promotional and laudatory message and not as an indication of the goods’ and services’ commercial origin.

The Office agrees with the applicant, who argues that slogans can be registered as trade marks, however, it disagrees that slogans should be registered as long as they are not comprised of signs or indications which directly describe the goods or services or their essential characteristics. A slogan should only be registered if it by the relevant public will be perceived as an indication of the goods or services commercial origin. Slogans that are devoid of any distinctive character, as the one at hand, cannot be registered as trade marks.

The applicant argues that there is no link between the meaning of the mark and the goods and services in question. The Office finds that, on the contrary, in connection with the goods and services in question, the mark simply encourages consumers to love, touch and hold their goods. All the objected goods (and the goods for which the online retail store services are related to) are physical objects that can be hold and touched, and as also indicated by the applicant, the mark makes a reference to a physical contact between the goods and its user; consumers could, for example, perceive the mark as indicating that the goods are, in some way, very pleasant to touch and hold. Furthermore, the element ‘Love it!’ will merely be perceived as indicating that the goods and services are lovable and the addition of this element does not render the mark distinctive.

It is submitted by the applicant that the mark does not lack imagination and unexpectedness, as it does not indicate the goods it is linked to.

It has not been submitted by the Office that the mark lacks imagination and unexpectedness; it is not a requirement that a slogan is imaginative or unexpected for it to be registered. Even if this slogan does not indicate the kind of goods or services applied for, it does not perform the essential task of a trade mark, namely to enable consumers to repeat or avoid a purchase based on the trade mark, as it does not allow consumers to differentiate one undertaking from another; in other words – the slogan in question lacks distinctiveness.

2. Similar marks have previously been registered

The applicant argues that similar trade marks have been registered and refers to trade marks denominated ‘Love it! Feel it! Want it!’ and ‘THE SHOES YOUR FEET HAVE BEEN ACHING FOR’.

The Office has not been able to find the registration for ‘Love it! Feel it! Want it!’. Furthermore, as regards the UK decision ‘THE SHOES YOUR FEET HAVE BEEN ACHING FOR’ 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

The practice in the national offices might differ from the practice of EUIPO, which is why EUIPO is not bound by such decisions.

Further proceedings

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 15 701 816 is hereby rejected for the following goods and services:

Class 9: Mobile phones; car holders for mobile phones, bicycle holders for mobile phones; desk stands for mobile phones; hands free devices and kits for mobile phones; headphones; audio speakers; display screen protectors for providing shade and privacy specially adapted to electronic devices such as mobile phones, smartphones, computers, tablets and laptops; computer stylus light pens; data transmission cables; flash card readers and power adaptors; memory cards; computer memory cards; carrying cases and covers for mobile phones, computer tablets and electronic book readers; head clip holders, stands and docking stations for mobile phones, computer tablets and electronic book readers; straps for mobile phones, computer tablets and electronic book readers; keyboards for mobile phones, computer tablets and electronic book readers; batteries and battery chargers for mobile phones, computer tablets and electronic book readers; radiation shields for electronic products; fitted plastic films known as skins for covering and protecting electronic apparatus; selfie sticks; batteries; battery cables; computer stands specially designed for holding a computer.

Class 35: Online retail store services relating to mobile phones and accessories for mobile phones, car holders for mobile phones, bicycle holders for mobile phones, desk stands for mobile phones, hands free devices and kits for mobile phones, headphones, audio speakers, display screen protectors for providing shade and privacy specially adapted to electronic devices and mobile phones; Online retail store services relating to computer stylus light pens, data transmission cables, flash card readers and power adaptors, memory cards, computer memory cards, carrying cases and covers for mobile phones, computer tablets and electronic book readers, head clip holders, stands and docking stations for mobile phones, computer tablets and electronic book readers; Online retail store services relating to straps for mobile phones, computer tablets and electronic book readers, keyboards for mobile phones, computer tablets and electronic book readers; Online retail store services relating to batteries and battery chargers for mobile phones, computer tablets and electronic book readers, radiation shields for electronic products, fitted plastic films known as skins for covering and protecting electronic apparatus, selfie sticks, batteries, battery cables, computer stands specially designed for holding a computer, printer and accessories, parts and accessories for all of the aforesaid goods.

The application may proceed for the remaining goods and services, namely:

Class 9: Downloadable software for mobile phones, computer tablets and electronic book readers for stock trading; downloadable graphics software for mobile phones, computer tablets and electronic book readers.

Class 35: Online retail store services relating to downloadable software for mobile phones, computer tablets and electronic book readers for stock trading, downloadable graphics software for mobile phones, computer tablets and electronic book readers, parts and accessories for all of the aforesaid goods.

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.

Cecilie Leth BOCKHOFF