Refusal of application for a European Union trade mark

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

Alicante, 04/08/2017

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	016304115
Your reference:	HOO27.UEU2
Trade mark:	AMPLIFY
Mark type:	Word mark
Applicant:	Hootsuite Media Inc 5 East 8th Avenue Vancouver British Columbia V5T 1R6 CANADÁ

The Office raised an objection on 18/11/2016 pursuant to Article 7(1)(b) and 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, after an extended deadline, on 17/01/2017, which may be summarised as follows:

1. The applicant refutes analysis of the mark as too stringent, strict and abstract, where its laudatory character is questionable.

2. The applicant claims the mark to be at most merely suggestive, or evocative, and does not enable the relevant public as to immediately perceive, the relevant services from one of their characteristics.

3. The mark possesses a minimum, sufficient degree of originality and resonance, distinctiveness in relation to such services.

4. The applicant concludes by claiming the mark’s inherent distinctiveness where consumers are able to identify goods/services and distinguish from other undertakings in the same market.

5. In conclusion, the applicant attaches a list of previously accepted registrations for ‘AMPLIFY’ for a variety of goods and services.

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 Office now replies to the applicant’s comments.

1. The applicant refutes analysis of the mark as too stringent, strict and abstract, where even its laudatory character is questionable.

The Office notes that the relevant consumer will never perceive the mark alone but in relation to the goods and services for which registration is sought. Even when being confronted for the first time with the sign in question in the context of the goods and services at issue, the relevant public will not require any analytical effort to grasp the common meaning of a plainly one word. As already stated in the objection letter, the term ‘AMPLIFY’ has generic relevance in relation to, for instance, computer software platform for social media management and services providing such use, as to intensify, foster or increase it further.

The sign applied for ‘AMPLIFY’ does indeed not enable the consumer to imagine to what type of goods or services it refers, though the fact nevertheless remains that word sign cannot be regarded as appropriate for the purpose of identifying the commercial origin of the goods and services which it designates and, therefore, of performing the essential function of a trade mark (see for reference, 30/05/2017, R 2360/2016-2, BOLSTER,§45; 20/01/2009, T-424/07, Optimum, EU:T:2009:9, §29).

2. The applicant claims the mark to be at most merely suggestive, or evocative, and does not enable the relevant public as to immediately perceive, the relevant services from one of their characteristics.

The Office reminds that the sign was applied not only for services but for goods in Class 9 as such. Further, the word ‘AMPLIFY’ clearly conveys a clear message, which will be perceived by the relevant consumer as promotional and laudatory, the function of which is simply to emphasise the positive characteristics of the goods and services, namely that the goods and services applied for are helping them foster, intensify social networking experience, here extend their social media engagement, offered via goods such as computer software platforms for social media management and services providing such use.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

Even if taken alone and analysed in isolation, with no reference to the goods in question, the relevant public would still see the slogan as a mere advertising promotional formula. Accordingly, the Office has consistently refused registration to slogans that could appear, a priori, as ‘vague and indefinite’ when seen in the abstract (for example, see judgments of 03/07/2003, T-122/01, Best Buy, EU:T:2003:183; 11/12/2012, T-22/12, Qualitat 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; 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).

3. The mark possesses a minimum, sufficient degree of originality and resonance, distinctiveness in relation to goods and services.

The Office cannot concur with this notion as the sign ‘AMPLIFY’ simply carries a laudatory connotation, even if the nature of goods or services involved are indifferent, the word itself still suggests encouraging or helping consumers foster, intensify social networking experience. Therefore, it simply informs the public that the goods and services offered help intensify, foster social networking (21/03/2014, T-81/13, BigXtra, EU:T2014:140, §33).

4. The applicant concludes by claiming the mark’s inherent distinctiveness where consumers are able to identify goods/services and distinguish from other undertakings in the same market.

The sign applied for ‘AMPLIFY’ is nothing else than a plain word producing a correct and fully understandable meaning is a very common term in relation to goods and services at issue. The word ‘AMPLIFY’ here is commonly used in the context of ‘to support or reinforce; strengthen’, for which no interpretation by the relevant public is required in relation to any of the goods or services concerned, since in relation to all of them it can be perceived to foster, intensify social networking experience (30/05/2017, R 2360/2016-2, BOLSTER,§45).

The applicant failed to submit any evidence to prove that the trade mark for which registration is sought possesses inherent distinctiveness for the relevant public, as it claimed in its observation on several instances. Accordingly, the sign applied for would not allow the relevant public to distinguish the commercial origin of the goods from those of other undertakings providing identical or similar ones and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

5. In conclusion, the applicant attaches a list of previously accepted registrations for ‘AMPLIFY’ for a variety of goods and services.

Most of the listed trade marks were granted protection as far back as 2001 or 2005. Since then, the Office’s practice has altered considerably and new guidelines have been implemented. Furthermore, the Office strives to be consistent and always has regard to its previous registrations; however, each examination must be taken on its own merit and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence backing them. 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; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 16 304 115 is hereby rejected for all the goods and 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.

Gordana TRIPKOVIC