Refusal of application for a European Union trade mark

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

Alicante, 07/08/2017

Rafael Hostettler

Marschallstrasse 9

D-80802 Munich

ALEMANIA

Application No:	16 542 921
Your reference:
Trade mark:	Think. Make. Start.
Mark type:	Word mark
Applicant:	Rafael Hostettler Marschallstrasse 9 D-80802 Munich ALEMANIA Annette Böhmer Wirtsbreite 6 D- München ALEMANIA

The Office raised an objection on 11/04/2017 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 18/04/2017, which may be summarised as follows:

1. The mark is seen as an indication of commercial origin

2. The mark is already a strong memorable brand, established since 2015

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.

1. The mark is seen as an indication of commercial origin

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).

In addition, in view of the nature of some of the 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 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).

Applicant´s remarks

The applicant contended that the sign ‘Think. Make. Start.’ Indicates the focus on the three phrases: Think. Make. and Start. and differentiates from the equivalent English sentence ‘think, make and start’.

In that respect the Office would like to point out that the combination with or the addition of punctuation marks – or other symbols commonly used in trade – in general does not add distinctive character to a sign consisting of descriptive/non-distinctive word elements.

The applicant contended that the sign is in no way laudatory but describes the core formula of the product. Moreover, the applicant contended that the sign ‘Think. Make. Start.’ goes the whole way in its workshop format from an ideation phase where product ideas are developed and tested, through a make-phase where products are being developed to the start-phase where a business model is being created. Therefore, the applicant concluded that the sign is seen as a descriptive indication of commercial origin.

The Office has taken note of the applicant´s interpretation of the current sign as being the core formula of the product/in relation to the services applied for. Therefore, the Office is of the opinion that the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, namely that they are workshops., etc., where new ideas are developed in order to create new products or prototypes and to develop or start up with new business models or concepts.

2. The mark is already a strong memorable brand, established since 2015

The applicant contended that the sign ‘Think. Make. Start.’ originates as a laboratory course at the Technical University in Munich offered since 2015 and has run five times since then. Moreover, the applicant referred to a flyer from BMW AG regarding a prototype workshop with the BMW Employee Scholarship. Moreover, the applicant made reference to its web-site domain www.thinkmakestart.com apart from its Facebook page www.facebook.com/think/makestart/

Moreover, the applicant concluded that in its perspective, the sign ‘Think. Make. Start.’ is not laudatory but an indication of commercial origin which is capable of distinguishing the services within the meaning of Art. 7(1)(B) EUTMR and art. 7(2) EUTMR.

Primarily, the Office would like to point out - with point of departure in the Office´s Guidelines - that advertising slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public perceives them as a mere promotional formula. However, they are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question.

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:

• has a number of meanings and/or

• 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.

None of the above-cited requirements or characteristics is met with the current sign. In relation to the services for which registration is sought, the mark ‘Think. Make. Start’ consists of a meaningful expression for the steps or phases involved with the services as the applicant stated in its comments: ‘the core formula of the product’.

Therefore, the Office still maintains its position that the sign ‘Think. Make. Start.’ among the relevant public simply will be seen as an indicator of qualities or positive aspects with the services in question, namely that the workshops are incentives to develop new ideas or thoughts in order to make or create new prototypes and to start up business concepts which match the product ideas. Consequently, the Office maintains its position that the sign ‘Think. Make. Start.’ seen as a whole is devoid of any distinctive character and is not capable of distinguishing the services in question within the meaning of Art. 7(1)(b) EUTMR and art. 7(2) EUTMR.

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 16 542 921 is hereby rejected for all the 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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