Refusal of application for a European Union trade mark

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

Alicante, 28/07/2017

FLADGATE LLP

16 Great Queen Street

London WC2B 5DG

REINO UNIDO

Application No:	016543902
Your reference:	BCM/26016.0002
Trade mark:	HEADSPACE GET SOME / GIVE SOME
Mark type:	Word mark
Applicant:	Headspace Meditation Limited Unit B-C, 7 Papermill Building City Garden Row London N1 8DW REINO UNIDO

The Office raised an objection on 13/04/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 18/05/2016, which may be summarised as follows:

1. The applicant’s company, Headspace Meditation Limited, formed in 2009 to distribute its digital meditation platform. It has currently reached 12 million users and claims ownership of over 60 trade mark applications worldwide, all with the same Headspace logo. The initiative HEADSPACE GIVE SOME GET SOME (HGSGS) was set up as a charitable initiative to provide free access to its subscribers, and has been operating in the United Kingdom since 2012 and the rest of the world since 2013.

2. The applicant disputes the argument that the element ‘HEADSPACE’ is non-distinctive and descriptive, and that the elements ‘GET SOME/GIVE SOME’ lack inherent distinctiveness because they do not have a strong visual and aural impact.

3. The objection may not have attributed proper significance to the mark’s global assessment.

4. The incorrect analysis of the promotional laudatory message erroneously overlooked the originality and inherent distinctiveness of the mark; it has a certain amount of conceptual intrigue and there are no links between the sign at issue and the goods and services.

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.

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services’ 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 Office now replies to the applicant’s arguments.

1. The applicant’s company, Headspace Meditation Limited, formed in 2009 to distribute its digital meditation platform. It has currently reached 12 million users and claims ownership of over 60 trade mark applications worldwide, all with the same Headspace logo. The initiative HEADSPACE GIVE SOME GET SOME (HGSGS) was set up as a charitable initiative to provide free access to its subscribers, and has been operating in the United Kingdom since 2012 and the rest of the world since 2013.

The applicant confirms the examiner’s findings by claiming that the goods and services at issue help consumers to attain a calm state of mind and also enable exchange with other consumers or partners to multiply this effect: ‘Headspace initiative provides free access to the same headspace services that are offered to its paying subscribers’. The meditation platform enables exchange in the following way: for every individual who becomes a paying subscriber to these meditation services, the applicant will donate a free subscription.

Furthermore, the applicant failed to submit any substantial evidence to prove that the trade mark applied for possesses inherent distinctiveness for the relevant public, as claimed in its observations. It is on the basis of acquired experience that the Office submits that relevant consumers would perceive the trade mark for which registration is sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark for which registration is sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark for which registration is sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Tablette ovoïde, EU:T:2003:53, § 48).

As regards previous registrations, the Office claims that not all the trade marks containing the word element ‘HEADSPACE’ are comparable to the trade mark applied for in the present case, and they were registered in 2009, 2011 and 2013. Since then, the Office’s practice has altered considerably and new guidelines have been implemented. Furthermore, the Office strives to be consistent and always has regard to its previous registrations; however, each examination must be taken on its own merit and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence backing them. In addition, even if all the earlier cases were comparable, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, §76 and case-law cited therein). Apart from the fact that registration practices develop over time, even bearing in mind that several of the EUTMs cited are recent, it is unfortunately inevitable that doubtful trade marks are sometimes registered. The observance of the principle of equal treatment must be reconciled with observance of the principle of legality (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

2. The applicant disputes the argument that the element ‘HEADSPACE’ is non-distinctive and descriptive, and that the elements ‘GET SOME/GIVE SOME’ lack inherent distinctiveness because they do not have a strong visual and aural impact.

The meaning of the sign is especially relevant in view of the nature of the goods and services in question, because when consumers see the sign ‘HEADSPACE GET SOME/GIVE SOME’, they will expect to purchase goods and services that assist them in achieving a tranquil state of mind, free from mental pressure, via meditation offered in the form of DVDs, audiobooks, computer apps, software (Classes 9 and 38), instruction, teaching and information on meditation practices (Classes 41 and 44). They will also expect this exchange to facilitate charitable fundraising services (Class 36). Indeed, contrary to the applicant’s assertions, the expression in question conveys a clear and unequivocal message that does not require any interpretative effort on the part of the relevant consumers.

As confirmed by the Court, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

3. The objection may not have attributed proper significance to the mark’s global assessment.

The Office has justified its objections sufficiently by examining the meaning of the expression, first, by reference to the goods and services, for which registration is sought and, second, by reference to the perception of the relevant public.

The Office examines trade marks in their entirety, never dissecting their elements and examining them in isolation. Even if the words ‘HEADSPACE’ and ‘GET SOME/GIVE SOME’ were suitable for registration, the result would not change, as the combination of a descriptive term and an expression is not registrable under Article 7(1)(c) EUTMR. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn 19/09/2001, T‑118/00, Tabs (3D.), EU:T:2001:226, § 59).

4. The incorrect analysis of the promotional laudatory message erroneously overlooked the originality and inherent distinctiveness of the mark; it has a certain amount of conceptual intrigue and there are no links between the sign at issue and the goods and services.

As mentioned above, the mark’s semantic content is straightforward and direct and will be perceived immediately by the English-speaking consumer targeted. The expression does not deviate from general English grammar, is not a lexical invention and does not require any specific thought to understand its meaning.

The most common interpretation of ‘HEADSPACE GET SOME/GIVE SOME’ would be the idea of providing or attaining a calm state of mind and mental clarity by practising meditation and fostering exchange with others, possibly by subscribing to the existing meditation platform/apps, etc. The mark as a whole simply advocates achieving a calm state of mind, free from any mental pressure, which can foster or enable exchange with others. It does not involve any wordplay or covert meaning, or any elements of conceptual intrigue, surprise or originality. No interpretative effort is required to discern the meaning and it does not involve any linguistic devices.

The Office is not obliged to demonstrate that the meaning of the expression is immediately apparent to the relevant consumers targeted by the goods and services. It suffices that the expression is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which registration is sought, or of a characteristic of those goods and services (17/09/2008, T‑226/07, Pranahaus, EU:T:2008:381, § 36-39). It is not necessary for the Office to demonstrate that there is a present or future need for third parties to use the descriptive expression applied for (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230 § 35; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 61).

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 16 543 902 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

Gordana TRIPKOVIC