Refusal of application for a European Union trade mark

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

Alicante, 11/04/2017

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

REINO UNIDO

Application No:	016064321
Your reference:	IAS/CM/T108081EM
Trade mark:	BELIEVE IN MUSIC
Mark type:	Word mark
Applicant:	National Association of Music Merchants, Inc. 5790 Armada Drive Carlsbad California 92008 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/12/2016 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 mark applied for is BELIEVE IN MUSIC and is considered objectionable for all the services claimed.

The applicant submitted its observations 13/02/2017, which may be summarised as follows:

• The applicant’s trade mark BELIEVE IN MUSIC is currently in use under licence by The Recording Academy (a US organisation of musicians, producers, recording engineers and other recording professionals) in relation to the promotion of the well-known and long established Grammy Awards, the honours awarded to recognise outstanding achievement in the music industry.

• The printouts submitted in ‘Annex 1’ are taken from the website www.grammy.com showing the trade mark use of BELIEVE IN MUSIC.

• The ™ (Trade Mark) symbol appears after the term BELIEVE IN MUSIC in each of the video clips displayed and in the text of the printouts, and also to the identification of BELIEVE IN MUSIC as a trade mark and/or registered trade mark of National Association of Music Merchants, Inc.

• The submitted printouts submitted in ‘Annex 1’ are not an attempt to demonstrate that the mark has acquired distinctiveness through use. The applicant is merely showing how the mark BELIEVE IN MUSIC is currently being used in a trade mark sense.

• The 59^th Grammy Awards were presented this year on 12 February 2017 by the well-known British host, performer, writer and producer, James Corden. James Corden has been involved in the promotion of the Grammy Awards by featuring in a number of short videos in which the trade mark BELIEVE IN MUSIC appears.

• James Corden’s role in this year’s Grammy Awards ceremony has been widely publicised in the UK. The submitted Annex 3 is a printout of a Google search result showing the different UK online publications announcing his role as host.

• As a result of James Corden’s involvement in the promotion of the Grammy Awards and the emphasis placed on the term BELIEVE IN MUSIC as a brand used in relation to the promotion of the business interests of the applicant the UK public (including professionals/specialists) will have become aware of the use of BELIEVE IN MUSIC in a trade mark sense.

• The services covered by the application are specialised services mainly aimed as a professional/specialist public who will have a high level of awareness/attentiveness when viewing the mark.

• The fact that the relevant public is a specialist one and its degree of attention is higher than average may influence the legal criteria used to assess the distinctive character of a sign.

• The services covered by this mark relate to the promotion of business interests of members of an organisation of companies (association services). The mark cannot be said to be descriptive of the services.

• The mark BELIEVE IN MUSIC does not send a positive message nor is it commonly used in advertising, thus it is difficult to understand how the relevant public would perceive the mark as a meaningful expression or as a promotional/inspirational laudatory message in relation to the services at issue.

• Even if the mark does have a promotional function, this does not preclude the mark also having distinctive character (C-398/08 P, Vorsprung durch Technik).

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).

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).

Furthermore, the marks referred to in Article 7(1)(b) EUTMR are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services covered by the mark to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (29/09/2009, T-139/08, Smiley, EU:T:2009:364, § 14).

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).

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).

Furthermore, marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 25).

It is therefore acknowledged that a mark must be recognised as having distinctiveness if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question (25/03/2014, T-539/11, Leistung aus Leidenschaft, EU:T:2014:154, § 29).

However, it has to be put forward that for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods or services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods and services (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

Having taken into account of all the above, in the present case the Office remains of the opinion that contrary to what the applicant says, the term BELIEVE IN MUSIC is indeed devoid of distinctive character in relation to the contested services.

The objectionable services covered by the mark applied for are specialised services mainly aimed at a professional/specialist public. In view of the nature of the services in question, the awareness of the relevant public will be high.

Moreover, since the mark BELIEVE IN MUSIC is composed of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union, that is in Ireland, Malta and the United Kingdom (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

It remains the opinion of the Office that taken as a whole, the meaning of the expression BELIEVE IN MUSIC 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 services in respect of which registration is sought. The expression BELIEVE IN MUSIC is readily intelligible when taken in conjunction with the contested services and viewed by the relevant consumer on the basis that the words, as a whole, would be perceived by the relevant public as a promotional/inspirational laudatory message.

Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the inspirational information conveyed, which merely serves to deliver an inspirational message encouraging the relevant consumer to have faith/confidence in music (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; and 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

The sign BELIEVE IN MUSIC does not contain any imaginative, surprising or unexpected elements so as to confer on it, in the minds of the relevant public, distinctive character. The expression has an understandable meaning and the way in which the words contained in the mark are used do not depart from English grammar rules. Thus, there is nothing about the expression BELIEVE IN MUSIC that might, beyond its obvious promotional/inspirational laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

The Office notes from the applicant’s submissions that the trade mark BELIEVE IN MUSIC is currently in use under license by the Recording Academy (a US organisation of musicians, producers, recording engineers and other recording professionals) in relation to the promotion of the well-known and long established Grammy Awards, the honors awarded to recognise outstanding achievement in the music industry. It is also noted from the applicant’s submissions that the ™ (Trade Mark) symbol appears alongside the slogan BELIEVE IN MUSIC which acts as an indication that the slogan is a trade mark and/or registered trade mark of National Association of Music Merchants, Inc.

However, it has to be put forward that the fact that the slogan BELIEVE IN MUSIC is in use by a US organisation of musicians, producers, recording engineers and other recording professionals) in relation to the promotion of the well-known and long established Grammy Awards does not automatically render the mark distinctive in the European Union. Furthermore, the fact that the ™ (Trade Mark) symbol appears alongside the slogan does not denote that the mark is registrable as a trade mark, it merely informs consumers that the slogan is being used/claimed as a ‘trade mark’ by the provider, etc. If a trade mark is deemed to be eligible for registration by the appropriate authorities, the proprietor of the trade mark will be entitled to use the ‘®’ symbol next to their trade mark.

Consequently, it is maintained that the relevant public will recognise the clear link between the semantic content of the sign and the services at issue and will clearly see and understand the word combination BELIEVE IN MUSIC as a promotional/inspirational expression encouraging the consumer to choose the services in question instead of other competing services, for the reasons previously given.

As such, the Office is unable to agree with the applicant that the slogan applied for is distinctive. The words BELIEVE IN MUSIC do not require an interpretative effort by consumers and accordingly, the Office believes that the sign applied for is in fact devoid of elements which could, apart from its promotional function, enable the relevant consumer to easily and immediately memorise it as a trade mark for the services referred to (21.01.2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44, 45 and 56 to 59).

Consequently, the subject mark will not immediately designate to the consumer the origin of the services concerned, but rather will provide them with a promotional/inspirational message. Indeed, when used in connection with the services concerned, the slogan BELIEVE IN MUSIC is banal with a simple and direct laudatory message (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 29 and 30; 06/12/2013, T-428/12, Valores de future, EU:T:2013:629, § 46 and 54) and it is therefore devoid of any distinctive character.

It should be recalled that the relevant public does not expect promotional slogans to be precise or to fully describe the characteristics of the services at issue. Rather, it is a common characteristic of promotional slogans to convey only abstract information which allows every consumer to appreciate that his or her individual needs are addressed. Accordingly, case-law has consistently refused registration of slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (03/07/2003, T-122/01, Best Buy, EU:T:2003:183; 11/12/2012, T-22/12, Qualität hat Zukunft, EU:T:2012:663; 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460; 23/09/2011, T-251/08, Passion for better food, EU:T:2011:526; 07/09/2011, T-524/09, Better homes and gardens, EU:T:2011:434; of 08.02.2011, T-157/08, Insulate for life, EU:T:2011:33; 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301; 17/11/2009, T-473/08, Thinking ahead, EU:T:2009:442). Furthermore, advertising slogans are often written in a simplified form, in such a way so as to make them more concise and snappier (24/01/2008, T-88/06, Safety 1st, EU:T:2008:15, § 40).

The Office considers that it has sufficiently justified the objection. The mark is composed of commonplace words which will be understood by the relevant public as a laudatory/inspirational formula and not as an indication of the commercial origin of the services. There is nothing about the sign BELIEVE IN MUSIC that might, beyond its promotional/inspirational meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services

In the Office’s opinion, the mark applied for can be considered as a slogan and as previously stated it is acknowledged that slogans are often of a laudatory nature. Their very purpose is to persuade potential customers to buy/use services of the enterprise in question. Even though an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness, a slogan that is banal, commonplace or directly descriptive of a characteristic of the relevant services is unlikely to possess any distinctive character because it probably will not be perceived immediately as an indication of the commercial origin of the services in question. As such, no undertaking should be given a monopoly right to use banal, commonplace or everyday terms to promote its commercial activities. On the other hand, a slogan that is for example original, imaginative and fanciful can be protected. Such a slogan is also far more likely to be able to perform the essential function of a trade mark.

However, in the present case as previously mentioned, the Office finds that the joint use of the words BELIEVE IN MUSIC conveys a clear message with promotional/inspirational laudatory connotations in respect to the contested services in Class 35. In particular, the word combination may be perceived by the relevant public as providing information about the positive aspects of the services concerned, as previously mentioned. This unambiguous message is evident, without any particular mental exertion, on the part of any public. Indeed, it is maintained that the slogan appears to be a banal one, with a simple and direct promotional/inspirational laudatory message, which may potentially be applied to services with the same characteristics as those of the applicant.

It has to be put forward that a trade mark must 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, for which it must be remembered as a distinctive mark for the services concerned. However, even if the consumer would remember the sign, this does not imply that they assign it to an undertaking. The word sequence in the present case is so ordinary that it is devoid of distinctive character. The statement BELIEVE IN MUSIC is so clear that no analytical effort on the part of the relevant consumer is required in order to recognise the meaning of the sign.

Insofar as the applicant refers to judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, the Office stresses that the sign 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. As already stated, apart from its promotional meaning, it does not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the services at issue (06/06/2013, T-515/11, Innovation for the real world, EU:T:2013:300, § 53, confirmed by order of 12/06/2014, C 448/13 P, Innovation for the real world, EU:C:2014:1746 § 36-37).

Furthermore, it cannot be said that the Court’s considerations in ‘Vorsprung durch Technik’ have radically changed the law in relation to verbal expressions serving as promotional or advertising messages. Although that judgment indeed clarifies certain questions relating to the acceptability of slogans as trade marks, it cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can be registered as a trade mark, merely because it is presented in the form of an advertising slogan. The fact that some slogans have been accepted by the Office or the Courts merely shows that there is no per se ban on slogans in EUTM law. What matters is the semantic content of the slogan and its relationship to the goods or services claimed.

Moreover, with regard, specifically, to the ‘Vorsprung durch Technik’ judgment, it is not comparable to the present sign applied for, for a number of reasons. First of all, in ‘Vorsprung’, the Court found that the particular characteristics of the slogan ‘Vorsprung durch Technik’ led to the conclusion that the relevant public would perceive it immediately as an indication of the commercial origin of the goods and services covered by that mark. The existence of characteristics such as a play on words, fancifulness and resonance are not sufficient per se, but often contribute greatly to the likelihood of endowing distinctive character upon a slogan (see 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47). However, in the case at hand the Office is unable to see any play on words, fancifulness, or resonance due to long-term use, or an otherwise creative element in the expression BELIEVE IN MUSIC. It is therefore entirely irrelevant what degree of fancifulness might have been necessary to convince the Court in ‘Vorsprung durch Technik’ to conclude on its distinctiveness, since the aforementioned factors are altogether absent in the case at hand.

Furthermore, it should be noted that in the said ‘Vorsprung durch Technik’ judgment the Court refers to the fact that ‘Vorsprung durch Technik’ was a widely known slogan which had been used by Audi (the applicant) over many years, and that it could therefore not be excluded that the circumstance that the members of the relevant public were used to establishing the link between that slogan, and the goods manufactured by Audi would also play a decisive role in making that public identify the commercial origin of the goods or services covered. This element is also not present in the case at hand, since the relevant public for the services for which protection is claimed under the slogan BELIEVE IN MUSIC, being the English language-speaking consumer in the Union, that is in Ireland, Malta and the United Kingdom do not have that prior knowledge needed to perceive the slogan as anything other than in its promotional sense. Whilst it is noted that the slogan BELIEVE IN MUSIC has been used in the American market in connection with The Grammy Awards, contrary to the applicant’s submissions, this cannot be taken by the Office as proof of the mark’s distinctive character on the basis that this use is not in relation the relevant public concerned. Whilst the applicant submits that the mark has also received exposure in the United Kingdom, from the evidence submitted the Office can only deduce that this use has been extremely limited and appears to relate to very recent use (after the filing date of the application) and as such this information is not persuasive to demonstrate that the mark has been sufficiently exposed in the relevant English speaking territories in the European Union.

Accordingly, the Office remains of the viewpoint that it is hard to see what could cause the public to take in and remember the expression BELIEVE IN MUSIC as a sign intended to distinguish the commercial origin of the services covered by the sign. When the sign is used in respect of those services, the targeted public will merely perceive it as a meaningful expression, with an obvious meaning of a vague positive inspirational statement, but not as a trade mark.

The applicant submits that the 59th Grammy Awards were presented this year on 12 February 2017 by the well-known British host, performer, writer and producer, James Corden, adding that James Corden was involved in the promotion of the Grammy Awards by featuring in a number of short videos in which the trade mark BELIEVE IN MUSIC appeared adding that the US (United States) based Grammy Awards ceremony was widely publicised in the UK. In support of their submissions the applicant filed evidence in the forms of Annex 1 through to 3 demonstrating the mark in use in relation to the 59^th Annual Grammy’s of 12 February 2017, along with James Corden’s association with the awards. However, the applicant stresses that the evidence has not been submitted in an attempt to demonstrate that the mark has acquired distinctiveness through use but rather to merely show that the mark applied for is currently used in a trade mark sense.

The Office acknowledges that the mark has clearly been used by the applicant, however, it is important for the applicant to note that mere use of a mark does not determine whether or not the mark is acceptable for registration under Article 7(1)(b) and 7(2) EUTMR. Furthermore, the fact that the mark has been used in connection with this year’s Grammy Awards, hosted by the British personality James Corden, cannot have a decisive influence on the registrability of the mark BELIEVE IN MUSIC under Article 7(1)(b) and 7(2) EUTMR.

Furthermore, it is noted from the applicant’s submissions that the services covered by the application are specialised services mainly aimed as a professional/specialist public who will have a high level of awareness/attentiveness when viewing the mark. Moreover, the applicant submits that it is on this basis that the fact that the relevant public is a specialist one and its degree of attention is higher than average may influence the legal criteria used to assess the distinctive character of a sign. As such, the applicant appears to be suggesting that that relevant public would view the sign BELIEVE IN MUSIC as a badge of sole trade origin and not as a non-distinctive term in relation to the services concerned. The Office cannot agree with this viewpoint.

There is no evidence to suggest that the relevant consumer in the area of the services concerned would be particularly trade mark ‘educated’ or savvy and would instantly perceive BELIEVE IN MUSIC as a trade mark in relation to the contested services rather than as a non-distinctive promotional/inspirational laudatory message in relation to the services.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional/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 public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, § 48).

The Office notes from the applicant’s submissions that the services covered by this mark relate to the promotion of business interests of members of an organisation of companies (association services), and as such the mark BELIEVE IN MUSIC cannot be said to be descriptive of the services at issue. In response the applicant is reminded that the mark was not objected to because the Office deemed it to be descriptive, but rather it was objected to under Article 7(1)(b) and 7(2) EUTMR, on the basis that the mark is devoid of any distinctive character and thus incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the services at issue, thus enabling the consumer who acquired the services covered by the mark to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (29/09/2009, T-139/08, Smiley, EU:T:2009:364, § 14).

Consequently, for the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for the European Union trade mark BELIEVE IN MUSIC 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.

Sam CONGREVE