Refusal of application for a European Union trade mark

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

Alicante, 03/08/2017

HGF LIMITED

1 City Walk

Leeds, Leeds LS11 9DX

REINO UNIDO

Application No:	016452311
Your reference:	JML/T241614EP
Trade mark:	BRING MUSIC TO LIFE
Mark type:	Word mark
Applicant:	Logitech Europe S. A. EPFL - Quartier de l'Innovation Daniel Borel Innovation Center CH-1015 Lausanne SUIZA

The Office raised an objection on 16/03/2017 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 14/07/2017, which may be summarised as follows:

1. The applicant denies that the mark BRING MUSIC TO LIFE is merely an advertising slogan. Music itself is neither alive nor dead, thus the mark cannot be directly descriptive or non-distinctive of the goods for which registration is sought. Music cannot be brought to life, if can merely be recreated to different standards. Therefore the mark is merely suggests that the sounds reproduced by the goods are more lifelike or realistic.

2. The goods do not relate solely to the reproduction or amplification of music alone. They can also reproduce other sounds such as the broadcasting of sports events commentary, audio books, comedy shows, political debates etc. Thus the mark cannot be considered descriptive of goods which can and will be used in relation to a wider range of applications.

3. The term BRING MUSIC TO LIFE is not commonly used in the trade or is a term which other traders would legitimately wish to use to describe services identical with or similar to those against which the objection has been raised. At the time of filing, the applicant was and remains the only party seeking to use the term in respect of the goods applied for.

4. There exist a number of prior registrations for similar marks, a list of which is cited.

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.

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).

Specific remarks concerning the observations of the applicant

1. The applicant denies that the mark BRING MUSIC TO LIFE is merely an advertising slogan. Music itself is neither alive nor dead, thus the mark cannot be directly descriptive or non-distinctive of the goods for which registration is sought. Music cannot be brought to life, if can merely be recreated to different standards. Therefore the mark is merely suggests that the sounds reproduced by the goods are more lifelike or realistic.

The Office agrees with the applicant in that the mark indicates to the consumer that the goods may make the sounds reproduced more lifelike; however, the phrase BRING MUSIC TO LIFE is considered more than just a suggestive statement.

The Court of Justice has provided the following criteria that should be used when assessing the distinctive character of a slogan (judgments of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47; 13/04/2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 37).

An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:

• constitutes a play on words and/or

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or

• has some particular originality or resonance and/or

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness:

• unusual syntactic structures

• the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.

However, the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (inter alia, judgment of 24/01/2008, T-88/06, Safety 1st, EU:T:2008:15, § 40). This means that a lack of grammatical elements such as definite articles or pronouns (THE, IT, etc.), conjunctions (OR, AND, etc.) or prepositions (OF, FOR, etc.) may not always be sufficient to make the slogan distinctive. In ‘Safety 1st’, the Court considered that the use of ‘1st’ instead of ‘FIRST’ was not sufficiently unorthodox to add distinctiveness to the mark.

In the case of the subject mark, the Office does not consider the phrase BRING MUSIC TO LIFE to possess any of the requisite elements listed above to function as an indicator of trade source. The applicant has stated that “the sounds reproduced by the goods may be more lifelike or realistic”; in light of this there is nothing intriguing, surprising or imaginative in the phrase that would require considerable mental effort on the part of the relevant consumer to come to the conclusion that the goods in question will make the reproduced sounds more lifelike.

With regard to the statement “Music itself is neither alive nor dead, thus the mark … cannot be directly descriptive or non-distinctive of the class 9 goods for which registration is sought”, the Office responds that the consumer is unlikely to take such a literal approach to understanding the mark. The relevant consumer would have a degree of sophistication to comprehend that music is not a living entity and therefore the mark would refer to characteristics of the goods, i.e. that they are of a quality which will make the music more lifelike or have greater vitality.

2. The goods do not relate solely to the reproduction or amplification of music alone. They can also reproduce other sounds such as the broadcasting of sports events commentary, audio books, comedy shows, political debates etc. Thus the mark cannot be considered descriptive of goods which can and will be used in relation to a wider range of applications.

The Office does not dispute that the goods in question can reproduce a multiplicity of sounds. However, this does not preclude the fact that the reproduction of music is one of those sounds which the goods may reproduce. The mark clearly communicates to the consumer that music is brought to life (that is more lifelike and with greater vitality) by use of the goods, and the fact that they reproduce other sounds is irrelevant in consideration of the mark.

Furthermore, the objection raised against the mark is on the grounds of non-distinctiveness, not descriptiveness:

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (30/06/2004,T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

3. The term BRING MUSIC TO LIFE is not commonly used in the trade or is a term which other traders would legitimately wish to use to describe services identical with or similar to those against which the objection has been raised. At the time of filing, the applicant was and remains the only party seeking to use the term in respect of the goods applied for.

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

4. There exist a number of prior registrations for similar marks, a list of which is cited.

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 016452311 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.

Lance EGGLETON