Refusal of application for a European Union trade mark

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

Alicante, 15/02/2017

Reiser & Partner Patentanwälte mbB

Weinheimer Str. 102

D-69469 Weinheim

ALEMANIA

Application No:	015811615
Your reference:	RA02M034EM
Trade mark:	DEEPLY WHITE
Mark type:	Word mark
Applicant:	Ranir, LLC 4701 East Paris Avenue, S.E. Grand Rapids, Michigan 49512 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 20/10/2016 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 19/12/2016, which may be summarised as follows:

• The subject mark ‘DEEPLY WHITE’ is an oxymoron and is not a meaningful expression. The term ‘DEEPLY’ contained in the mark has several dictionary meanings and these definitions do not make any sense if taken in combination with the word ‘WHITE’ and especially in connection with the goods applied for.

• The mark ‘DEEPLY WHITE’ has been registered in respect of toothpastes, dentifrices and other products in Class 3 and 5’ by the USPTO.

• The Office has previously registered other similar marks

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 (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).

In its submissions the applicant has argued that the subject mark ‘DEEPLY WHITE’ is an oxymoron and is not a meaningful expression. The term ‘DEEPLY’ contained in the mark has several dictionary meanings and these definitions do not make any sense if taken in combination with the word ‘WHITE’ and especially in connection with the goods applied for.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the expression ‘DEEPLY WHITE’ consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the positive aspects of the goods concerned, and as such, a characteristic of the goods related to their market value.

As stated in the notification of 27/04/2016, the expression ‘DEEPLY WHITE’ is a promotional laudatory message, the function of which is to indicate a characteristic of goods. The term transmits the message that the goods at issue are products which will enable the user to whiten their teeth to an extreme degree, and it is considered highly improbable that the relevant public would fail to grasp the signs promotional laudatory message.

Taken as a whole, the meaning of the expression ‘DEEPLY WHITE’ is clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the objectionable services in respect of which registration is sought. It is, therefore, the Office’s view that the expression ‘DEEPLY WHITE’ is readily intelligible when taken in conjunction with the goods applied for and viewed by the relevant consumer.

Furthermore, there is nothing in the expression ‘DEEPLY WHITE’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 26).

The above findings do not contradict the relevant case law on which the applicant relies. The Office stresses that the sign applied for is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning. The case law on which the applicant relies cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 27).

As regard to the applicant’s arguments relating to the various meanings of the

‘DEEPLY’ element contained within the mark, the Office would advise that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32.)

As regards the national decision 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.

(See judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47.)

Finally, 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).

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 15 811 615 is hereby rejected for all the goods applied for.

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.

Andrew CARTER