Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 09/11/2017

HGF LIMITED

4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West

Manchester M1 5WG

REINO UNIDO

Application No:	016461824
Your reference:	LKS/T241706EP
Trade mark:	WASTE NO MORE
Mark type:	Word mark
Applicant:	Renewi Plc 16 Charlotte Square Edinburgh EH2 4DF REINO UNIDO

The Office raised an objection on 20/03/2017 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.

Following a two-month extension of the period allowed for the applicant to submit its observations, the time limit set by the Office was 20/07/2017.

The applicant submitted its observations on 20/07/2017, which may be summarised as follows:

1. The trade mark ‘WASTE NO MORE’ must be assessed as a whole and not broken down into individual features that are then overanalysed.

2. The trade mark is capable of acting as a badge of origin and, as a result, is distinctive for the goods and services for which registration is sought.

3. The mark applied for creates a holistic, fanciful and memorable impression on the average consumer.

4. To be grammatically correct in English, the expression ‘NO MORE’ generally has to precede a noun. In the case of ‘WASTE NO MORE’, the noun ‘WASTE’ precedes the expression ‘NO MORE’, which is unusual and would make an impression on average consumers.

5. The goods and services are all highly specialised and are not goods and services to which promotional or laudatory phrases are usually assigned or commonly used by traders. Therefore, a higher degree of attention would be paid to any branding of such goods or services, including secondary branding or memorable strap lines. The target public for the applicant’s goods and services is composed of highly educated and discerning professionals who would not simply dismiss the trade mark ‘WASTE NO MORE’ as a motivational statement.

6. The trade mark ‘WASTE NO MORE’ is already being used by the applicant as a badge of origin on the market (see the submitted screenshots from the applicant’s website www.renewi.com and Twitter, LinkedIn and YouTube accounts, a fact sheet for customers and a customer brochure).

7. The EUIPO has recently accepted, without argument or the need for supporting evidence of acquired distinctiveness, the following trade marks: No 14 937 189 ‘SCRATCHNOMORE’, No 14 857 452 ‘HOLD NO MORE’, No 14 405 302 ‘MESS NO MORE!’, No 13 430 046 ‘thinknomore’ and No 1 006 755 ‘FLAWS NO MORE’.

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.

In relation to the first point, the Office does not agree that the examiner has not considered the mark as a whole. In the communication sent by the Office, the examiner refers to the mark as ‘the expression’. This term means ‘a word or group of words forming a unit and conveying meaning’. Therefore, the assessment of the examiner was based on the mark as a whole and not on the individual meanings of each word in the expression ‘WASTE NO MORE’. The examiner did define the meaning of each word, but the purpose of this was to understand better the sense of the mark as a whole.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘WASTE NO MORE’, is devoid of any distinctive character, as consumers will not perceive it as an indication of trade origin. It will instead 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 these stop the useless consumption of different resources, or the goods can be recycled or made of recycled material.

The mark is composed of the expression ‘WASTE NO MORE’ 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 ‘waste’ and ‘no more’. Accordingly, the examination of its registrability must be based on the words and their combination as a whole.

The trade mark consists of the words ‘WASTE’ and ‘NO MORE’ with the following meaning(s):

Waste ‘Useless expenditure or consumption, squandering (of money, goods, time, effort, etc.); Refuse matter; unserviceable material remaining over from any process of manufacture; the useless by-products of any industrial process; material or manufactured articles so damaged as to be useless or unsaleable’ (information extracted from Oxford English Dictionary on 17/03/2017 at www.oed.com).

No more ‘Not any more; no further; no longer; never again; nevermore’ (information extracted from Oxford English Dictionary on 17/03/2017 at www.oed.com).

Although the order of the words is unusual (the words ‘no more’ precede the noun ‘waste’), this expression in the context of the goods and services for which registration is sought will have an obvious, direct and immediate meaning for the relevant English-speaking public, in that it will be perceived as a laudatory message indicating that the goods and services enable consumers to stop the useless consumption of different resources, or the goods can be recycled or made of recycled material.

The goods and services to which an objection has been raised and which are covered by the mark applied for are, for example, manures, compost; fuels; metals, metal alloys, metal containers; recycling installations, collection machines for waste; water purification, desalination and conditioning installations; vehicles; building materials, not of metal; non-metallic building materials made from waste, used goods and recyclable products and materials; non-metallic transportable containers; non-metallic tanks for the storage and transport of liquid and gas; underground and ground level non-metallic containers; non-metallic rubbish bins; litter bins; recycle bins; waste, refuse and recycling bag holders; woven fabrics for the control of weeds; agricultural, horticultural and forestry products; auditing services in relation to waste, used goods and recyclable products and materials; business consultancy and mediation of contracts for the purchase, sale, import and export of waste, used goods and recyclable products and materials; financial management services; investment services; construction, installation and repair of apparatus for the reception, treatment, recycling and disposal of waste, used goods and recyclable products and materials; construction, installation and repair of apparatus for the reception, treatment, recycling and disposal of hazardous waste, used goods and recyclable products and materials; cleaning of tanks, containers, storage spaces, buildings, drains, sites, coolers, vessels, columns and pipework; collection, unloading, sorting, storage, shipment, removal, disposal, distribution (delivery) and transport of waste, used goods and recyclable products and materials; collection, unloading, sorting, storage, shipment, removal, disposal, distribution (delivery) and transport of hazardous waste, used goods and recyclable products and materials; collection, unloading, sorting, storage, shipment, removal, disposal, distribution (delivery) and transport of glass, sand, stones, soil and slag; recycling services; disposal, incineration, destruction, sorting, recycling, compaction, treatment and processing of waste, used goods and recyclable products and materials; training services in connection with the management and disposal of waste, used goods and recyclable products and materials; design of waste treatment apparatus and apparatus for the reception, treatment, recycling and disposal of waste, used goods and recyclable products and materials; design of waste treatment apparatus and apparatus for the reception, treatment, recycling and disposal of hazardous waste, used goods and recyclable products and materials; technical consultancy in the field of the exploitation of recycling installations; services in the field of agriculture, horticulture and forestry.

These are specialised goods and services that mainly target the professional public but also target the average consumer. In view of the nature of the goods and services 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 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).

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 sign ‘WASTE NO MORE’ 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 ‘WASTE NO MORE’ 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).

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).

Furthermore, the mere fact that the Office has at some point registered a trade mark, from a different point of view or perhaps in error, does not entitle even the same applicant to stake a claim for subsequent registrations. ‘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).

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which protection is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods and services from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods and services. 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 16 461 824 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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