Refusal of application for a European Union trade mark

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

Alicante, 24/05/2017

LADAS & PARRY LLP

Temple Chambers, 3-7 Temple Avenue

London EC4Y 0DA

REINO UNIDO

Application No:	016192916
Your reference:	1T16688966
Trade mark:	YOUR PET GURU
Mark type:	Word mark
Applicant:	WAPI, LLC VIPSAL 834, P.O. Box 025364, Miami Florida 33102 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 25/01/2017 pursuant to Article 7(1)(b) 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 09/03/2017, which may be summarised as follows:

1. The mark is sufficiently distinctive

2. The mark has been accepted by the USPTO

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).

The mark is sufficiently distinctive

The applicant argues that the mark is sufficiently distinctive for registration. The applicant points out that the Office did not adequately explain the descriptive nature of the mark in relation to the services applied for. The applicant claims that a sign is only descriptive when it provides immediate and direct information about the services. It also holds that the mark applied for does not describe the essential characteristics or qualities of the services.

In this regard the Office finds it imperative to remind the applicant that the objection in the case at hand is not based on the descriptive nature of the mark, but solely on the non-descriptiveness of the mark applied for. Therefore, naturally, all the arguments raised by the applicant claiming that the mark applied for is not descriptive are irrelevant at the case at hand, because the objection is solely based on the Article 7(1)(b) EUTMR. The objection was only raised because the Office firmly believes that the mark is non-distinctive. It is a long established practice in trade mark law, that the descriptiveness and non-distinctiveness grounds are fully independent of each other. Therefore the fact that the mark is not descriptive does not automatically mean that the mark is distinctive. This has also been confirmed time and time again by the Courts and the Boards of Appeal. In this respect the Office refers the applicant to a recent decision by the Boards of Appeal of 27 March 2017 R1974/2016-5 paragraphs 24-26:

24 Each of the grounds for refusal listed in Article 7(1) EUTMR are independent of the others and calls for a separate examination (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). Furthermore, the various grounds for refusal must be interpreted in light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (29/04/2004, C-456/01 P & C-457/01 P, Tabs, EU:C:2004:258, § 45-46; 02/07/2002, T-323/00, SAT.2, EU:T:2002:172, § 25).

25 Each of the absolute grounds for refusal connected with lack of distinctiveness, descriptiveness and customary usage has its own sphere of application and they are neither interdependent nor mutually exclusive (29/04/2004, C-456/01 P & C- 457/01 P, Tabs, EU:C:2004:258, § 45-46). Even if those grounds are applicable separately, they may also be applied cumulatively.

26 According to settled case-law, 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).

The Office believes that the mark applied for lack distinctiveness, and therefore cannot operate as a trade mark. The mark itself lacks any imagination and English speaking consumers will not see the mark applied for as a trade mark. There is nothing which suggests that the mark is a play on words or will be seen as a business identifier, but is quite simply a combination of words which lack distinctiveness.

The mark has been accepted by the USPTO

As regards the national decisions 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).

Registrations by offices in non-EU countries are not binding and cannot give rise to a claim for equal treatment, even when they are from countries where the same language is an official language (26/10/2000, T-345/99, ‘Trustedlink’, EU:T:2000:246, § 41; 30/9/2015, T-610/13, ‘GREASECUTTER’, EU:T:2015:737, § 41; 25/9/2015, T-366/14, ‘2good’, EU:T:2015:697, § 42). This is precisely so because the legal norms or

practice in the US might be different. It is not the task of the Office to assess the legality of the decision taken by the USPTO, the outcome of which is completely irrelevant for the case at hand.

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 16 192 916 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.

Alistair BUGEJA