Refusal of application for a European Union trade mark

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

Alicante, 16/06/2017

FORRESTERS

Rutland House

148 Edmund Street

Birmingham B3 2JA

REINO UNIDO

Application No:	016376411
Your reference:	B25749EM-JCH
Trade mark:	MAKE GOOD
Mark type:	Figurative mark
Applicant:	Birmingham Innovations Limited 3 Caroline Court, 13 Caroline Street Birmingham B3 1TR REINO UNIDO

The Office raised an objection on 20/02/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that this trade mark is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 20/04/2017, which may be summarised as follows:

1. The additional figurative elements of the mark add distinctive character, so that the mark is not simply a laudatory message. The ‘thumbs-up’ device adds sufficient distinctive character to the mark, as it is larger than the word element and visually striking. It will therefore catch the eye of the relevant consumer. This argument is strengthened by the fact that the ‘thumbs-up’ device has no connection with the goods for which registration is sought.

2. The words ‘MAKE GOOD’ have no connection to the goods for which registration is sought. Upon hearing the words ‘MAKE GOOD’, the relevant consumer would not perceive the mark as connected with sealants, fillers, adhesives or plaster. There is therefore no connection between the mark and the goods in question.

3. The goods specified in the application are specialised and are mainly aimed at a professional public. The relevant public will therefore have a high degree of awareness of both the goods that they are purchasing and the branding of those goods. The relevant consumers will not view the mark as simply a laudatory message, as they will spend time assessing the mark, and will perceive its distinctive elements.

4. The mark has the minimum degree of distinctiveness required for registration.

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, for the reasons set out below.

Article 7(1)(b) EUTMR – 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; 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; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, , is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and, instead, will perceive it as a promotional message that merely serves to highlight positive aspects of the goods concerned, namely that, in purchasing the applicant’s goods, you will not make a mistake and, instead, you will be successful with them.

The mark is composed of the expression ‘MAKE GOOD’ written in slightly stylised upper case letters between two grey rectangles. On the right-hand side of the words is a ‘thumbs-up’ device. It will be immediately obvious to any English speaker that the mark applied for is composed of the English expression ‘make good’, a ‘thumbs-up’ device and two rectangles. Accordingly, the examination of its registrability must be based on the words and figurative elements and their combination as a whole.

The trade mark contains the words ‘make good’ with the following meaning:

Make good ‘to be successful’ (information extracted from Collins English Dictionary on 20/02/2017 at www.collinsdictionary.com).

The combination of the words follows linguistic rules. This grammatically correct and ordinary combination of words, in the context of the goods for which registration is sought, will have a direct and immediate meaning for the relevant English-speaking public, in that it will be perceived as a laudatory message stating that you can only be successful if you purchase the applicant’s goods.

The goods to which an objection has been raised and which are covered by the mark applied for are sealants (chemicals) for the sealing of surfaces; sealants (chemicals) for tiles; anti-damp insulating compositions (other than paint); fillers for use in industry; reinforcing fillers; synthetic resin fillers; seals, sealants and fillers; joint sealants; sealants for buildings; adhesive sealants for general use; plaster for building purposes; insulating plaster; plaster for use in buildings; finishing plasters; fillers for repairing walls.

These are specialised goods that mainly target a professional public. In view of the nature of the goods in question, the degree of awareness of the relevant public will be rather high.

The sign for which registration is sought, without any additional or graphic element that would result in the sign significantly deviating from being, as a whole, a mere promotional message, is incapable of performing the essential function of a trade mark and does not enable the consumer who purchased the goods and services in question 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 (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20). The target public will perceive the sign applied for as a general promotional message without regarding it as containing an indication of commercial origin referring to a specific undertaking.

In addition, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is specialist 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 (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The words ‘MAKE GOOD’ are not imaginative, metaphorical or unusual, as this expression is no more than the sum of its parts and consists exclusively of the simple and clear combination of two immediately identifiable words. This combination of words does not contain, in relation to its separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods at issue.

The Office also maintains that the figurative elements of the mark do not endow the trade mark applied for, as a whole, with the necessary degree of distinctive character. The figurative elements of the mark, namely the ‘thumbs-up’ device and two grey rectangles, only reinforce the message conveyed by the verbal element and, therefore, these elements do not add anything to the mark that would allow it to fulfil its essential function in relation to the goods for which registration is sought.

Furthermore, the Office’s practice has evolved and changed during its existence. Recently, the Office has become more stringent with regard to the acceptance of marks consisting of a combination of words and figurative elements when the figurative elements are considered to reinforce the message conveyed by the words.

The message expressed by the sign applied for will be clear, direct and immediate for the relevant public. It is not vague in any way, does not lend itself to different interpretations and is not imprecise or akin to an ‘evocative’ sign. The expression ‘MAKE GOOD’ is not sufficiently unusual that it requires a significant measure of interpretation, thought or analysis on the part of the relevant consumer.

Furthermore, it is true that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR. It is also true that the mark applied for is a figurative mark – composed of two verbal elements and figurative elements – with no distinctive character. The trade mark does not have any additional distinctive elements, such as a figurative element or a distinctive verbal element, that would allow the mark to distinguish the goods for which registration is sought from those of competitors.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, § 19; 12/02/2004, C‑363/99, Postkantoor, § 86).

Conclusion

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 16 376 411 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.

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