Refusal of application for a European Union trade mark

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

Alicante, 22/06/2017

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	16 370 603
Your reference:	71.77.M111061
Trade mark:	MADE TO MOVE YOU
Mark type:	Word mark
Applicant:	Otis Elevator Company One Carrier Place Farmington Connecticut 06032 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/02/2017 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 applicant submitted its observations on 27/04/2017, which may be summarised as follows:

1. Assessment of the distinctive character and its elements

2. Similar marks registered by the Office

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.

1. Assessment of the distinctive character and its elements

General remarks

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).

Applicant´s comments

The applicant contended that the mark ‘MADE TO MOVE YOU’ constitutes a play on words which triggers a cognitive process in the minds of the relevant public in the way that the mark can be understood as meaning individuals being moved emotionally while traveling in an elevator and being moved into new phases of their lives. In that respect the applicant referred to its short film https://www.youtube.com/watch?v=Lebati0PFr8

featuring a both physical and emotional journey while traveling in an elevator.

The Office acknowledges that the wording of the sign can refer to both being physically moved and being emotionally moved. However, the Office would like to reiterate with reference to case-law that the distinctive character of a trade mark must be assessed, first, in relation to the goods or services applied for, and, secondly, in relation to the perception of the relevant public which is composed of the consumers of those goods or services. In the current case, the objectionable goods in Class 7 comprehend, inter alia, elevators, moving walkways, escalators, lifts, moving stairways. The Office respectfully contends that the primary, evident and logical characteristics of the goods in question is that they are made to move you physically from one point to another or to keep you moving from one floor of a building to another within buildings rather than that the goods are manufactured with a view to stirring up emotions in people. For the relevant public, being both average consumers and the professional public, the assurance of the reliability - including not least the safety aspects - of the goods in question in order to keep people moving and to carry people between floors continuously and without interruptions is evidently paramount.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant contended that it is inaccurate that goods in Class 7 such as electric motors (not for land vehicles); electric generators can move you from one point to another.

The Office respectfully contends that elevators/lifts in general are powered by electric motors and that electric generators are commonly used as emergency generators for operating safety systems such as elevators in high-rise buildings.

Moreover, the applicant emphasized that the notice of grounds for refusal was based on the lack of distinctive character, thus considering the examiner´s phrasing:

….perceive the expression ‘MADE TO MOVE YOU’ as a promotional function of which is to descrIbe a characteristic of the goods…….

as misplaced with the wording ‘describe’ in the context.

The Office does agree that the term ‘describe’ in the context of the assessment of distinctive character can be misunderstood. However, the phrasing serves to communicate: … a promotional function of which is to give you or indicate a characteristic of the goods……

2. Similar marks registered by the Office

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; and 09/10/2002, T 36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 370 603 is hereby rejected for the following goods:

Class 7 Conveyors (machines); elevators; moving walkways; moving platforms (machines); escalators; lifts; hoists; moving stairways; electric motors (not for land vehicles); electric generators; parts and fittings for all the aforesaid goods.

The application may proceed for the remaining services, namely:

Class 37 Installation, servicing, maintenance, repair, modification and renovation services, all relating to ventilation apparatus and equipment, conveyors (machines), elevators, moving walkways, moving platforms (machines), escalators, lifts, hoists and moving stairways; maintenance of electronic equipment; information, advice and consultancy in respect of all of the aforesaid services.

Further proceedings

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.

Finn PEDERSEN