Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 20/12/2017

URQUHART-DYKES & LORD LLP

Cale Cross House, Pilgrim Street

Newcastle-Upon-Tyne NE1 6SU

REINO UNIDO

Application No:	016389421
Your reference:	T405773EM/IJB
Trade mark:	BUILT FOR THOSE WHO KNOW
Mark type:	Word mark
Applicant:	RIDGID, Inc. 850 Library Avenue, Suite 204-I Newark, Delaware 19711 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/06/2017 pursuant to Article 7(1)(b) 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 22/08/2017, which may be summarised as follows:

1. The mark ‘BUILT FOR THOSE WHO KNOW’ triggers in the mind of the relevant public a cognitive process and requires an interpretive effort and is therefore registrable. The mark is a step removed from a straightforward value statement, because it introduces an element of uncertainty.

2. There are many different interpretations which could be made of this term, all being different to the meaning explained by the Office. Even professional consumers would be required to interpret the mark.

3. According to the Office’s objection the respective goods are usually ‘built’, that is, constructed by putting parts or material together. However, many of the goods in classes 6, 7 and 8 are not built or constructed by the assembling of parts, and in many cases are simply formed as a single part by processes such as moulding or forging.

4. The applicant finally requested the Division of the application in relation to the goods and services to which the objections did not relate.

Preliminary remark

On 22/09/2017 the Office confirmed the request for division of the application. The goods and services in classes 4, 16, 35, 38, 39 and 42 were divided out and the new EUTM application number 17249343 was allocated.

D E C I S I O N

Pursuant to Article 94 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.

Legal background

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 applicant’s arguments in detail

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).

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 a specialist one 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 applicant argues that the term triggers in the mind of the relevant public a cognitive process and requires an interpretive effort and that, furthermore, he mark is a step removed from a straightforward value statement, because it introduces an element of uncertainty, since it is not clear what it is that the person knows.

The Office cannot agree with the applicant’s view. In the present case, the sign is made up of five words ‘BUILT, ‘FOR’, ‘THOSE’, ‘WHO’ and ‘KNOW’. These five elements are juxtaposed in accordance with the rules of English grammar and common parlance and form a single expression meaning, ‘constructed for persons with knowledge’. Contrary to the applicant’s view, this meaning is evident and it does not require any cognitive process to understand that the persons with knowledge, are the ones with expertise in a given field, that is, professionals. It should also be noted that, although the phrase has no specific descriptive meaning, it is nevertheless made up of a set of words which, taken as a whole, has an independent meaning. The phrase will thus easily be understood as meaning that the applicant’s products have been manufactured for consumers who are professionals, in the sense that purchasing the goods will enable them to achieve a benefit because of their qualities and performance, in other words to achieve a benefit as regards the market value of the relevant goods.

Consequently, the sign consists of a sequence of words praising the positive properties of the goods and indicating, in a manner that is obvious to the relevant consumer, a beneficial relationship between these goods and their market value. It mainly fulfils the function of a promotional and laudatory message, the predominant purpose and function of which is to attract the attention of the relevant public to the positive aspects of the relevant goods. It will therefore be directly and immediately perceived by the relevant consumer as a commercial incitement and not as an indication of origin.

As regards the applicant’s argument, that the English verb ‘build’ refers to construction by putting parts or material together, and that some of the goods in classes 6, 7 and 8 for which the objection has been raised are rather made by moulding or forging than by the assembling of parts, the Office notes that the applicant’s definition of said verb is too strict, since the word may be applicable to anything at all which is manufactured (‘built’), as confirmed by the Court (1609/2009, T‑80/07, BUILT TO RESIST, EU:T:2009:332, § 32). Therefore, the word means ‘to fabricate’ in a broad sense, that is, a term used for consumer goods and referring to an industrial process resulting in a product, regardless of the strict technical aspect of this process (assembly, moulding, forging, etc.). Moreover, the Board of Appeals have rejected the similar mark ‘BUILT FOR THESE TIMES’ even for immaterial services in classes 35 and 36, being a mere laudatory slogan and, thus, unable, to fulfil the essential function of a trade mark (21/01/2014 – R 570/2013-5 – BUILT FOR THESE TIMES).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, and given that the goods and services, which were not subject of the objection, have been divided out, the application for European Union trade mark No 16 389 421 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Konstantinos MITROU