Refusal of application for a European Union trade mark

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

Alicante, 01/06/2017

HOYNG ROKH MONEGIER LLP

Avenue des Nerviens, 9-31

B-1040 Brussels

BÉLGICA

Application No:	016322513
Your reference:	31578
Trade mark:	LIFE MAPPING
Mark type:	Word mark
Applicant:	Unlikely Collaborators 40 E. Main Street #1221 Newark Delaware DE 19711 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/02/2017 pursuant to Article 7(1)(b) and (c) and 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 mark applied for consists of the words LIFE MAPPING and is considered objectionable for all the services claimed:

Class 35 Business management and consultation services in the field of business management.

Class 41 Educational services, namely, conducting seminars in the field of business management and distribution of training materials used in conjunction therewith; research and development and consultation related thereto in the field of education.

The applicant submitted its observations on 13/04/2017, which may be summarised as follows:

• The mark LIFE MAPPING is distinctive and not merely descriptive in relation to the specific services at issue, all relating to business management.

• The relevant members of the public are professionals as confirmed in the Office’s Notice of Refusal.

• The combination of LIFE and MAPPING taken as a whole is unusual in light of the services applied for.

• The suggestion that LIFE MAPPING would mean to chart and plan one’s life is very disputable precisely because of the specific well defined specialised services for professionals that are the subject of the application at issue.

• For a professional public the expression LIFE MAPPING does not immediately inform the relevant public without any further reflection on the services at issue because it is very allusive and unusual in a business context.

• The mark requires imagination and a reasoned step to make an association with a possible characteristic regarding the nature of the services concerned. The relevant consumer will not be able to ascertain a clear meaning of the expression.

• Similar marks starting with the term LIFE have been accepted for registration by the EUIPO.

• The mark meets the minimum required degree of distinctiveness to be registered as a European trade mark.

• The sign does not describe the services or their characteristics.

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)(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 service’ 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 which underlies 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).

By prohibiting the registration as European 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 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, the signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, §34).

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

Moreover, since the mark applied for contains the English language words LIFE and MAPPING, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (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).

The Office remains of the opinion that, contrary to what the applicant says, the mark LIFE MAPPING is indeed descriptive of characteristics of all the services claimed.

The applicant is of the opinion that the combination of LIFE and MAPPING taken as a whole is unusual especially in relation to the services at issue Furthermore, the applicant submits that the objection raised by the examiner is disputable due to the specific well defined specialised services which are aimed at professionals. The Office cannot agree with this viewpoint.

The expression applied for consists of the combination of two readily identifiable and ordinary words from the English language, namely ‘LIFE and ‘MAPPING’. There is nothing unusual about the structure of that expression. The words applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer, being the English-language speaking consumer, will not perceive it as unusual but rather as a meaningful expression.

Furthermore, the expression LIFE MAPPING is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer, in fact the examiner produced evidence in the Notice of Refusal demonstrating that the expression LIFE MAPPING is actually in use in relation to services such as those claimed.

As a result, the Office maintains that the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the contested services, namely that that the contested services are directly concerned with the process of planning and charting of one’s life, and/or the life of a business in order, for example, to ensure that future goals are achieved. Therefore, the mark consists essentially of an expression that conveys obvious and direct information regarding the kind and intended purpose of the services in question. Thus, given that the mark has a clear descriptive meaning in relation to the services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. As such, the words LIFE MAPPING would merely be seen as a descriptor in relation to the objectionable services rather than an indicator of sole trade origin.

According to the Oxford English Dictionary the word ‘LIFE’ means, inter alia, A particular manner or course of living; the condition or attribute of living or being alive; as regards to the meaning of the word ‘MAPPING’ this means, inter alia, charting, recording, or setting out on or as on a map; planning. Thus, it is apparent from these definitions that the combination of the two words LIFE MAPPING clearly indicates to the relevant public certain characteristics of the services in question bearing these words, as previously discussed. Consequently, the Office remains of the opinion that the relevant consumer will understand the word combination as a meaningful expression, as previously mentioned.

It has to be put forward that a mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the services at issue to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said services from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services, thus enabling the consumer who acquired them 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 (see 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 33 and the case-law cited; 03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

Thus the Office cannot agree that on seeing the expression LIFE MAPPING used in relation to the services concerned, the consumers would not consider the combination of terms as descriptive of the kind and intended purpose of the services at issue, but rather would associate the sign with the commercial origin of the services in question.

The applicant argues that expression LIFE MAPPING is an unusual and thus a distinctive expression. However, it is important for the applicant to note that whether or not the sign is used on the market at the time of the application is irrelevant, for the purposes of Article 7(1)(c) EUTMR and as follows from Article 7(1)(c) EUTMR itself, 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 services such as those in relation to which the application is filed, or of characteristics of those services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A word sign must thus be refused registration under that provision if at least one of its possible meanings designates a characteristic of the services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

Likewise, for a mark to fall under the prohibition of Article 7(1)(c) EUTMR, it is not necessary that the characteristics of the services concerned are described in full detail and in a quantified way. Therefore, a sign does not become ‘vague’ or ‘merely allusive’, merely because it does not provide a full and comprehensive description of the characteristics of the services. Rather, for a sign to be refused registration under Article 7(1)(c) EUTMR, what is essential is whether or not it contains an unequivocal message serving to identify a characteristic of the services in question and that the sign can be used for descriptive purposes (see 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 97).

Furthermore, it is important to recall that it is irrelevant whether or not the expression in question has more than one meaning. When considering the possible meanings of a sign, it is necessary to ascertain whether, in normal usage, from the relevant public’s point of view, that sign may serve to designate, either directly or by reference to one of their essential characteristics, the services in respect of which registration is sought (see, to that effect, ‘Baby-Dry’, at § 39). Accordingly, for the purpose of deciding that a part of a sign is descriptive, it is sufficient that, as in the present case, one of the possible meanings of a component of the sign designates a characteristic of the services concerned.

The mere combination of the terms LIFE and MAPPING each of which are descriptive of characteristics of the services concerned remains descriptive of those characteristics. Merely bringing such elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve in trade to designate characteristics of the services concerned. It is irrelevant whether or not the term ‘LIFE MAPPING’ is an existing English expression used in connection to the services claimed. As the Court of Justice has stated, a trade mark consisting of a neologism composed of word elements each of which is descriptive of characteristics of the services (or goods) in respect of which registration is sought, is itself descriptive of those characteristics unless there is a perceptible difference between the neologism and the mere sum of its parts. That assumes that, because of the unusual nature of the combination in relation to the services (or goods) the neologism creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. This is clearly not the case here, since the merging of the two words ‘Life’’ and ‘Mapping’ is nothing more than the sum of the two components.

It is thus maintained that the relevant public will immediately and without further thought understand the sign LIFE MAPPING as a reference to characteristics of the services at issue, namely the kind of services and their intended purpose. Furthermore, it can be reasonably argued that, other competitors would legitimately wish to use the same combination of words for the promotion of their own services. It must remain possible for competitors to use, separately or combined the words ‘LIFE MAPPING’ when services comparable to those applied for are offered to the relevant public.

The contested services in Classes 35 and 41 are Business management and consultation services in the field of business management; Educational services, namely, conducting seminars in the field of business management and distribution of training materials used in conjunction therewith; research and development and consultation related thereto in the field of education. The Office maintains that all of these services are capable of facilitating a LIFE MAPPING process. Thus, the Office remains of the viewpoint, that the business management related services are directly concerned with the process of planning and charting one’s life and/or the life of a business in order, for example, to ensure that future goals are achieved.

Furthermore, in the Notice of Refusal the Office provided the applicant with Internet extracts which revealed that the expression LIFE MAPPING is used. For ease of reference the Office re-produces the evidence:

Information from the Internet extracted on 01/06/2017:

http://www.telegraph.co.uk/lifestyle/wellbeing/10687542/Life-mapping-will-set-you-on-the-road-to-contentment.html

http://www.zest4life-coaching.co.uk/what-is-life-coaching/what-is-life-mapping/

http://www.scottishnaturalclinic.com/index.php/treatments/life-coaching-life-mapping

http://mazeway.com/category/life-mapping/

Thus, in light of the foregoing, it is clear that the expression applied for conveys obvious and direct information regarding specific characteristics of the services at issue in Classes 35 and 41. There is nothing subtle, indirect, concealed or vague, about the message conveyed by the mark. For the English-speaking consumer the expression in relation to the contested services concerned will be clearly understood without the relevant public being required to undertake any mental steps, in order to ascertain the meaning of the mark applied for. Furthermore, relevant consumers will not require a high degree of sophistication to make a sufficiently clear link between the mark and the services at issue and therefore to perceive the descriptive message of the mark on the basis that the expression LIFE MAPPING, directly and unambiguously indicates characteristics of the services at issue which are easily recognisable by the relevant consumers.

Therefore, the sign serves to designate a property, easily recognisable by the relevant consumer and it is reasonable to believe that it will actually be recognised as a description of one of those characteristics of the services (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 49-50).

It is noted from the applicant’s submissions that the services in question directed at a professional public. As such the applicant submits that the expression applied for would be perceived as an indication of origin and not as a description as to the characteristics of the services. However, whilst the Office notes the applicant’s claims regarding the relevant public, it remains of the viewpoint that the objection should be maintained.

It has to be put forward that there is no evidence to suggest that the relevant consumer in the area of the services claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive LIFE MAPPING as a trade mark in relation to the contested services rather than a non-distinctive promotional/marketing message.

Furthermore, on a similar note, it must be held that the fact that the services in question are specialised, 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 may be high, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the awareness of the relevant public is high.

Thus, the Office remains of the opinion that as far as the services in question are concerned, it is reasonable to accept that relevant consumers would not require a high degree of sophistication to make a sufficiently clear link between the mark and the services and therefore to perceive the promotional positive message conveyed by the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the services in question, but is also an expression that might profitably be employed for such services.

Moreover, It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the services in question. However, that said, it is not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).

Thus, given that the mark has a clear descriptive meaning in relation to the services concerned, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, taken as a whole, the mark LIFE MAPPING is also devoid of any distinctive character and is not capable of distinguishing the contested services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

As regards to the argument that other similar applications containing the word LIFE have been accepted by the EUIPO, it has to be put forward that according to settled case law, ‘decisions concerning the 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).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 67).

In any case, as to the applicant’s reference to other registered marks, it must be stated that the EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law. Even though the principle of equal treatment must be applied, it must be applied in a way consistent with the principle of legality. For reasons of legal certainty and precisely 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.

Moreover, such an examination must be undertaken in each individual case depending on the factual circumstances and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T- 248/11, Pure Power, EU:T:2013:333, § 50; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 73 to 77). Consequently, an applicant cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76, 77; 12/02/2009, C-39/08 & C-43/08, Volks. Handy, EU:C:2009:91, § 18).

In conclusion, the argument in the present case concerns whether LIFE MAPPING can be registered as a trade mark for the contested services claimed in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the term is likely to convey to a relevant consumer of those services, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated.

The Office confirms, for the reasons already given, that the mark LIFE MAPPING conveys obvious and direct information regarding the kind and intended purpose of the services in question. The Office has to put forward that when the mark LIFE MAPPING is used in connection with the contested services it is reasonable to accept that the relevant consumer is highly likely to perceive the expression in a descriptive non-distinctive sense rather than as a badge of sole trade origin.

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 LIFE MAPPING as a sign intended to distinguish the commercial origin of the contested 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 descriptive message, but not as a trade mark.

Consequently, 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 LIFE MAPPING 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