Refusal of application for a European Union trade mark

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

Alicante, 18/01/2017

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	015730013
Your reference:	PAT3Z/T78388EM
Trade mark:	THE WORLD`S ONLY LUXURY RIVER CRUISE LINE
Mark type:	Word mark
Applicant:	Crystal Brand Company Limited Fort Anne Douglas, Isle of Man IM1 5PD ISLE OF MAN

The Office raised an objection on 25/08/2016 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 25/10/2016, which may be summarised as follows:

1. Distinctive character

Although there may be some promotional element to the applicant’s mark, consumers are used to this type of slogan being used in connection with service providers. The relevant public will see the mark not only as a promotional slogan but also as a ‘strapline’ that is distinctive for the applicant’s services. The mark, taken as a whole, has some originality or resonance and would trigger a cognitive process in the mind of the relevant consumer or would require an interpretative effort.

According to case-law (21/01/2010, C‑398/08P, Vorsprung durch Technik, EU:C:2010:29), an expression can function both as a promotional formula/expression and as an indication of origin for the relevant consumer. Consumers will perceive the mark as a distinctive ‘strapline’ that will enable them to determine the origin of the applicant’s services.

2. The relevant public and the level of attention

The applicant argued that the services for which registration is sought, although not highly specialised, target a more discerning consumer, as they are very luxurious in nature and expensive. The relevant public in this instance will be well informed as well as highly observant and circumspect. Therefore, the level of attention of the relevant public will be high, due to the investment required to purchase such services.

3. Similar marks have already been registered by the Office

The applicant argued that the following similar registrations have been accepted by EUIPO:

- EUTM 5 948 468 THE WORLD’S LEADING RIVER CRUISE LINE ... BY FAR

- EUTM 3 352 408 TAKING ON THE WORLD’S TOUGHEST ENERGY CHALLENGES

- EUTM 2 607 091 THE WORLD’S LOCAL BANK

- EUTM 7 337 256 THE WORLD’S MOST FORGIVING LENS

- EUTM 8 110 538 MANAGING THE WORLD’S INFRASTRUCTURE

- EUTM 12 039 161

- EUTM 12 994 539 THE ONLY WAY IS SLOTS

- EUTM 1 263 284 TAKING CARE OF THE WORLD’S WATER...AND YOURS

- EUTM 9 491 366 THE WORLD’S FAVOURITE AUTO WEBSITE

- EUTM 753 095 THE ONLY BISCUIT WITH EATING INSTRUCTIONS

- EUTM 8 939 753 THE WORLD’S GREATEST HOT SANDWICH

- EUTM 810 267 THE WORLD’S LIVING GUIDE

- EUTM 9 077 116 Bringing the world’s ideas online.

- EUTM 2 684 017 HANDLING THE WORLD’S MOST IMPORTANT PRODUCTS EVERYDAY

- EUTM 734 111 THE WORLD’S AQUARIUM

- EUTM 9 561 069 THE WORLD’S BIGGEST HOTEL FAMILY

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. Distinctive character

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; 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 applicant argues that the mark applied for functions as both a promotional statement and an indication of commercial origin, and is distinctive for the applicant’s services.

The Office agrees that a trade mark can function as both a promotional statement and an indication of origin, as long as consumers will perceive it in both ways.

However, the Office finds that, in the present case, the consumer will perceive the mark not as an indication of origin but as a promotional formula. Therefore, the objection is based on the fact that the consumer will perceive the mark merely as a promotional statement and not also as an indication of origin.

Furthermore, 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 has assessed the individual components of the mark, but the objection is based on an assessment of the mark as a whole. On this basis, the Office maintains its position and finds that the current mark is a promotional, laudatory message, highlighting the positive aspects of the services, namely that they are outstandingly luxurious cruise line services on rivers. Therefore, the Office finds the mark to be non-distinctive.

2. The relevant public and the level of attention

The applicant argued that the services, which are very luxurious in nature and expensive, target a more discerning public and that the level of attention will be high. However, the Office finds that the services applied for in Class 39 – cruise ship services – are services for mass consumption, mainly aimed at average consumers with at least an average level of attention. Although the services are aimed at wealthy consumers, this is not in itself an indication of a higher or lower level of attention. The level of attention of the average consumer may vary from average to high due to the cost of the services.

3. Similar marks have already been registered by the Office

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).

The earlier European Union trade mark registrations are:

EUTM 5 948 468 THE WORLD’S LEADING RIVER CRUISE LINE ... BY FAR

- EUTM 3 352 408 TAKING ON THE WORLD’S TOUGHEST ENERGY CHALLENGES

- EUTM 2 607 091 THE WORLD’S LOCAL BANK

- EUTM 7 337 256 THE WORLD’S MOST FORGIVING LENS

- EUTM 8 110 538 MANAGING THE WORLD’S INFRASTRUCTURE

- EUTM 12 039 161

- EUTM 12 994 539 THE ONLY WAY IS SLOTS

- EUTM 1 263 284 TAKING CARE OF THE WORLD’S WATER...AND YOURS

- EUTM 9 491 366 THE WORLD’S FAVOURITE AUTO WEBSITE

- EUTM 753 095 THE ONLY BISCUIT WITH EATING INSTRUCTIONS

- EUTM 8 939 753 THE WORLD’S GREATEST HOT SANDWICH

- EUTM 810 267 THE WORLD’S LIVING GUIDE

- EUTM 9 077 116 Bringing the world’s ideas online.

- EUTM 2 684 017 HANDLING THE WORLD’S MOST IMPORTANT PRODUCTS EVERYDAY

- EUTM 734 111 THE WORLD’S AQUARIUM

- EUTM 9 561 069 THE WORLD’S BIGGEST HOTEL FAMILY

However, although these marks were accepted for registration, it should be noted that, for example, the marks ‘THE WORLD’S LOCAL BANK’ and ‘THE WORLD’S MOST FORGIVING LENS’ are fanciful slogans that play on words.

is a figurative and distinctive mark and, furthermore, its verbal elements are not descriptive of the goods and services for which it is registered. The mark ‘Bringing the world’s ideas online.’ is considered a sufficiently vague or allusive expression and therefore not descriptive in relation to the goods and services for which it is registered. Moreover, the mark ‘THE WORLD’S FAVOURITE AUTO WEBSITE’ was subject to a partial refusal.

Furthermore, the Office notes that the following two similar European Union trade marks were refused for similar services:

• EUTMA 1 958 289 Spanish Cruise Line.

• EUTMA 5 622 212 ANY CRUISE LINE. ANY TIME.

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 15 730 013 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.

Finn PEDERSEN