Refusal of application for a European Union trade mark

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

Alicante, 04/08/2017

DWF LLP

Great North House

Sandyford Road

Newcastle upon Tyne NE1 8ND

REINO UNIDO

Application No:	016433708
Your reference:	EDM/2008365-12
Trade mark:	BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE
Mark type:	Word mark
Applicant:	Young Presidents' Organization, Inc. 600 East Las Colinas Blvd, Suite 1000 Irving, TX 75039 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 14/03/2017 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 25/04/2017, which may be summarised as follows:

1. The applicant is the premier leadership organisation for chief executives in the world. It is a global platform for engagement, learning and growth. The applicant has more than 24 000 members in more than 130 countries.

2. Around 2000, the applicant started to use the mark ‘BETTER PRESIDENTS THROUGH EDUCATION AND IDEA EXCHANGE’. This mark was changed in 2003 to ‘BETTER LEADERS THROUGH EDUCATION AND IDEA EXCHANGE’. Recently, the mark has been changed again, to its present form, that is, ‘BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE’, which is the mark applied for. Accordingly, the applicant has been identified with the mark or a highly similar variant of the mark throughout the world for over 17 years.

3. The applicant’s clients view the phrase as a trade mark and they are already familiar with the services offered by the applicant. The mark can be used in a variety of different contexts and its meaning is not specific.

4. The mark was registered by the USPTO.

5. The mark has acquired distinctiveness through use.

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, ‘BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and, instead, it will be understood by the relevant public as a promotional message that merely serves to highlight positive aspects of the goods and services concerned, namely that the goods and services offered by the applicant, which relate to lifelong learning and idea exchange, can help a person to become a better leader.

The mark is composed of the expression ‘BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE’ in standard upper case letters. There is no figurative element that could add any distinctive character to this expression. It will be immediately obvious to any English speaker that the mark applied for is composed of the English words ‘BETTER’, ‘LEADERS’, ‘THROUGH’, ‘LIFELONG’, ‘LEARNING’, ‘AND’, ‘IDEA’ and ‘EXCHANGE’. Accordingly, the examination of its registrability must be based on the words and their combination as a whole.

The combination of the words follows linguistic rules. This grammatically correct and normal combination of words, in the context of the goods and services for which registration is sought, will have a direct and immediate meaning for the relevant English-speaking public, in that the sign will be perceived as a laudatory message stating that the goods and services in question make it possible to learn, develop and grow in order to become a better leader.

The goods and services to which an objection has been raised and which are covered by the mark applied for are, inter alia, downloadable software and downloadable electronic publications in different fields, such as leadership education, economics and business; printed instructional, educational and teaching materials, newsletters, books and guides; association services, the organisation of conferences, business networking and counselling in different areas; and educational services’.

These are specialised goods and services that mainly target a professional public. In view of the nature of the goods and services in question, the degree of awareness of the relevant public will be 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 purchases 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 an indication of commercial origin that refers to the specific undertaking behind that indication.

In addition, in view of the nature of some of the goods and services 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).

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 sign ‘BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE’ cannot be perceived as anything other than an indication of the characteristics of the goods and services in question. The message expressed by the sign for which registration is sought 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 ‘BETTER LEADERS THROUGH LIFELONG LEARNING AND IDEA EXCHANGE’ is not sufficiently unusual that it requires a significant measure of interpretation, thought or analysis by the relevant consumer.

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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant argues that the mark has been accepted in the United States of America

As regards the USPTO decision referred to by the applicant, according to case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (12/02/2009, C‑39/08 and C‑43/08, Volks.Handy, EU:C:2009:91, § 17-19; 13/02/2008, C‑212/07 P, Hairtransfer, EU:C:2008:83, § 44; 05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant European Union rules. Accordingly, the Office is not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43 § 47).

In the present case, the decision cited originates not from a national office in a Member State, but from outside the European Union, in a jurisdiction with different conditions for the registration of trade marks.

Article 7(3) EUTMR – Acquired distinctiveness

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark holder. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader …

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages …

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation …

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied …

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect …

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63.)

In line with the judgment of 09/03/2011, T‑190/09, 5 HTP, EU:T:2011:78, § 47, the following may, inter alia, be taken into account to establish whether or not the use of a mark has reached the necessary threshold to render it distinctive:

1. the market share held by the mark;

2. how intensive, geographically widespread and long-standing use of the mark has been;

3. the amount invested by the undertaking in promoting the mark;

4. the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;

5. statements from chambers of commerce and industry or other trade and professional associations;

6. opinion polls;

7. distinctive character, including that acquired through use, must be assessed in relation to the goods and services for which registration is sought (§ 65);

8. the applicant must demonstrate to the Office that its trade mark had acquired distinctive character before the filing date of the mark.

The applicant did not file any evidence concerning acquired distinctive character. Therefore, its argument in this regard must be dismissed.

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 16 433 708 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.

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