Refusal of application for a European Union trade mark

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

Alicante, 08/05/2017

LOUIS · PÖHLAU · LOHRENTZ

Postfach 3055

D-90014 Nürnberg

ALEMANIA

Application No:	016159907
Your reference:	56302EU/AW/NU/su/ge
Trade mark:	OPTIMUM
Mark type:	Word mark
Applicant:	Wilbar International, Inc. 50 Cabot Court Hauppauge New York 11788 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/01/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 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 02/03/2017, which may be summarised as follows:

• According to settled case law a minimum degree of distinctiveness is sufficient for a trademark to be registered.

• The examiner raised an objection by applying strict criteria, whereas the mark ‘OPTIMUM’ has already been registered in the US Patent and Trademark Office for the same list of goods and services.

• The objection is based on incorrect subjective assumptions and is not well founded, since the examiner used one of the various versions of the Collins Dictionary without taking into account that the word ‘OPTIMUM’ is vague and requires a significant degree of interpretation as from whose point of view and in which respect or context the goods are supposed to be ‘most favourable, advantageous or best’.

• A vague and indirect link between the sign in question and the goods and services applied for is not sufficient to prohibit the registration of the mark on the grounds of descriptiveness.

• The sing ‘OPTIMUM’ is sufficiently distinctive for the goods applied for. Consumers do not expect that an above-ground swimming pool will be the best conceivable from all points of view. Therefore, the term ‘OPTIMUM’ introduces elements of conceptual intrigue or surprise and can be considered imaginative and, thus, a reference to the origin of the goods in question.

• The Office has registered in the past, several comparable trademarks such as 000644591 - OPTIMUM MEDIA, 001767011 - OPTIMUM, 002891018 - , 002928851 - OPTIMUM WELLNESS PLANS, 003822211 - OPTIMUM OIL THERAPY, 004452116  -  , 004596797 - , 004865374 - Optimum Distribution, 008583205 - , 008728792 - , 011425311 - OPTIMUM VITA, 014446711 - , 015304959 - ).

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.

According to settled case-law, separate examination of each of the grounds for refusal to register listed in Article 7(1) EUTMR is required. 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 (judgment of 16/09/2004, C 329/02 P, ‘SAT.1’, paragraph 25).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. 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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

Moreover, 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’ (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

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 services’ are not to be registered.

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 (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 31).

On this basis, it must be established whether the word ‘OPTIMUM’ will be understood by the relevant public as descriptive either directly or by reference to one of the characteristics of the goods applied for, or if it is reasonable to believe that it might be understood in this way in the future.

As the Office previously demonstrated in its objection dated 03/01/2017, the slogan ‘OPTIMUM’ consists of a common English word that does not differ from the general English grammar, is not a lexical invention and does not require any specific thinking to understand its meaning. Furthermore, it follows that, because of its structure and its meaning, the sign in question does not contain any fancy elements and cannot provoke an effect of surprise on the part of the relevant public.

As the applicant correctly notes, the word ‘OPTIMUM’ tends to exalt in an unspecified manner qualities of any product. However, the fact remains that precisely because it is commonly used in everyday language, as well as in trade, as a generic laudatory term, the word ‘OPTIMUM’ will be perceived by the relevant public as a term indicating that the goods applied for are the ‘most favourable, advantageous or best’ choice that accumulates not just some, but all the advantages that the consumer is looking for when purchasing the goods concerned.

In particular, taking into consideration the goods applied for, the English-speaking consumer will perceive the trade mark as a word describing the quality of these goods, meaning that the metal swimming pools; metal above ground swimming pools; swimming pools made primarily of metal; swimming pools made primarily of metal having a wall with a foam core (Class 6) possess all the appropriate characteristics which render them the ‘most favourable, advantageous or best’ of the options available.

Therefore and according to established case law, ‘OPTIMUM’ is considered to be a banal and widespread laudatory term, a common word which can be used by any undertaking for the purpose of advertising its goods or services, as an indication of a promotional nature. Derived from Latin, but also in common use in most EU languages, it is one of the category of superlatives meaning ‘most favourable or advantageous’ or ‘best’ (judgment of 20 January 2009, T 424/07, ‘OPTIMUM’, paragraph 24).

In any event, even if, as the applicant states, the sign at issue would not be customary in use, the Office notes 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 (judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32).

Furthermore, despite the applicant’s argument that the word has a multitude of meanings, the Office points out that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for describing goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. 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, emphasis added).

In that sense, there is nothing unusual neither about the structure nor about the meaning of the sign at issue, even if the term in question could be further interpreted in a slightly different way. As stated by Advocate General Jacobs, “it is immediately possible to think of many other instances of general characteristics which may require further definition before the consumer can be sure of what is referred to but which none the less quite clearly remain characteristics of the product in question. To take but one example, to qualify a product as natural is undoubtedly to designate one of its characteristics, whilst leaving any consumer in considerable doubt as to the precise nature of that characteristic, unless further details are provided. Indeed, it is relatively difficult to find indications which may serve to designate characteristics which do not call at some level for further precision (see, for example, the Opinion of Advocate General Jacobs delivered on 10 April 2003 in Case C-191/01 P-Doublemint- paragraph 43).

Moreover, as the applicant points out, it is also clear from the wording of Article 7(1)(b) EUMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that article (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 68).

It should be borne in mind that the registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the holder of the trade mark. It suffices that the trade mark should enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (16/09/2004, C-329/02 P, SAT/2, EU:C:2004:532, § 41).

Nevertheless, a basic non-distinctive and descriptive sign can fulfil the function of identification only if it contains elements which set it apart from other commonly used non-distinctive and descriptive slogans (by analogy decision of 13/04/2011, T-159/10, Parallélogramme, § 24 ). This is not the case for the sign at stake.

In addition, it has to be mentioned that 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 marks than for others (judgment of 29/04/2004, joined cases C‑456/01 P and C‑457/01 P, ‘Henkel’, paragraph 38).

Moreover and in relation to the way in which the relevant public perceives a trade mark, it is settled case-law that the level of attention is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d'une bouteille’, paragraph 34).

At this point, it has to be noted that contrary to the applicant’s argumentation, in the objection dated 03/01/2017, it has been clearly indicated that the relevant public consists of both average consumers and a professional public.

As regards the professional public, in view of the nature of the goods in question, it has been established that even if the awareness of the relevant public is high, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a 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 specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48). This applies in the case at hand, as the word ‘OPTIMUM’ functions as a purely promotional laudatory message. It is therefore more likely that the relevant professional public will perceive the sign as promotional information rather than an indication of commercial origin.

As far as the average consumer is concerned, the sign at issue will be perceived by the relevant public as a non-distinctive slogan with the above mentioned meaning, rather than the trade mark of a particular proprietor indicating the commercial origin of the applicant’s goods.

Contrary to the argument that the Examiner based her objection on assumptions by finding that the laudatory term ‘optimum’ is likely to produce in the mind of consumers the idea that the goods in question are of optimum quality, the generic meaning of the sign does not make it possible for consumers, even specialised ones, to associate the sign with specific goods, with the result that the sign is not able to fulfil the essential function of a trade mark, namely that of guaranteeing the identity of the origin of the marked goods to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods from those which have a different origin (judgment of 20 January 2009, T 424/07, ‘OPTIMUM’, paragraphs 32-33).

It follows from the foregoing considerations that, from the point of view of the relevant public, the word mark ‘OPTIMUM’ constitutes a principally promotional message that is used to market the goods concerned. Therefore, the trademark cannot be accepted since it is the qualitative characteristic of the goods applied for and not its commercial origin that is primarily perceived by the relevant trade circles (see judgment of 13 January 2011, C-92/10 P, ‘Best Buy’, para. 53).

As regards the US registration of the word ‘OPTIMUM’ 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 mark must be assessed by reference only to the relevant European Union rules. Accordingly, the Office and, if appropriate, the European Union judicature are not bound by a decision given in 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 (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47).

As regards the applicant’s invocation of the principle of equal treatment, the Office notes that, in their majority, the EUTMs mentioned were either subject to partial refusal such as OPTIMUM WELLNESS PLANS and 004865374 - Optimum Distribution or contained fanciful figurative elements that rendered the mark distinctive, such as 002891018 - , 004596797 - , 008728792 - .

In any event, it should be stressed that, the validity of a decision that is inherently well-reasoned and has been made in accordance with the EUTMR cannot be called into question on the basis of the fact that less restrictive criteria were applied in other cases. According to 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 European Union’s 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).

Indeed, the Office must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case (judgment of 03/12/2015 T-628/14, ‘FORTIFY’ paragraphs 33-37 and judgment of 25/09/2015 T-591/14, ‘PerfectRoast’ paragraphs 65 and 57).

Therefore, although the Office is obliged to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, these principles must be reconciled with observance of the principle of legality according to which no person may rely, in support of his/her claim, on unlawful acts committed in favour of another (27.02.2002, T-106/00, Streamserve, EU:T:2002:43, § 67; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 57).

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 16 159 907 is hereby rejected for all the goods 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.

Eamonn KELLY

[Enclosures: L110 notification, 3 pages.]