Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/03/2018

IPAMARK

Paseo de la Castellana, 72-1º

E-28046 Madrid

ESPAÑA

Application No:	16 956 807
Your reference:
Trade mark:	GROWTH EDGE
Mark type:	Word mark
Applicant:	SINEQUANON LIMITED 1 Northumberland Avenue Trafalgar Square London London, City of WC2N 5BW REINO UNIDO

The Office raised a partial objection on 09/08/2017 pursuant to Article 7(1)(b) 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.

Upon request from the applicant, the Office extended on 11/10/2017 the time limit for submitting observations with two/2 months till 09/12/2017.

The applicant submitted its observations on 11/12/2017¹ which may be summarised as follows:

1. Distinctive character

2. Relevant public

3. The mark assessed in relation to the services at issue

Pursuant to Article 94 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. Distinctive character

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).

Applicant´s remarks

With reference to EU-case-law (13/04/2011, T-523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, EU:T:2011:175; - 08/02/2011, T‑157/08, ‘INSULATE FOR LIFE’, EU:T:2011:33), a mark consisting of an advertising slogan must be recognised as having distinctivenesss if, apart from its promotional function, it may be perceived immediately as an indication of the commercial origin of the goods or services in question.

Moreover with reference to EU case law (21/10/2004, C-64/02 P, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, EU:C:2004:645, §§31 and 32) a slogan cannot be required to display 'imaginativeness' or even 'conceptual tension which would create surprise and so make a striking impression' in order to be regarded as having the minimum degree of distinctive character.

Office´s comments

The Office does agree with the applicant in the principles of the EU case-law cited above from the European Union General Court.

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).

However, 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).

The Office maintains its position that the current sign, ‘GROWTH EDGE’, will simply be perceived by the relevant public in the relevant market sector as a laudatory expression highlighting positive aspect in relation to the services applied for, namely that these provide you with or result in a qualified growth advantage in your business as well as in vocational and personnel training and development. The structure of the sign is grammatically correct and does not trigger any mental process in order to arrive at its meaning, namely growth resulting in or giving you the edge over others.

Applicant´s remarks

With reference to case-law (27/02/2002, T-34/00, ‘EUROCOOL’, EU:T:2002:41, §43), the fact that the sign at issue is made up of components which may allude to certain features of the services referred to in the application for registration and that the combination of those components complies with linguistic rules is not sufficient to justify application of the absolute ground for refusal under art. 7(1)(b) EUTMR. Moreover, the applicant contended that the examiner has failed to establish that the term ‘GROWTH EDGE‘, considered as a whole, would not enable the relevant consumer to distinguish the applicant´s services from those of the competitors´.

In relation to the services at issue, one or more mental steps are needed by the relevant public and others to reach a conclusion as to the nature of the services associated with the mark. The fact that after mental steps a certain meaning of a mark can be perceived by the targeted public in relation to the services at issue does not serve as an absolute bar to protection since the mark is not purely descriptive/ or lacking distinctiveness. In that respect, the applicant referred to the following case law from Board of Appeal (decision of 11/02/1998, R 73/1998-2, ‘Beauty isn´t about looking young² but looking good’; decision of 13/09/2000, R 208/1999-1, ‘Component User’s Conference’. Moreover, the applicant referred to the following EU case law (21/10/2004, C-64/02 P, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, EU:C:2004:645).

Office´s comments

The Office does agree with the principles of the EU case law cited by the applicant. However, the Office respectfully disagrees with the applicant that the current sign ´GROWTH EDGE´ only alludes to certain features of the services at issue and that it would require several mental steps for the relevant public to perceive a certain meaning of the mark. The sign would straightforwardly be understood as ‘growth to the limits’ or ‘growth advantage’. As a whole, the sign is a simple message that could be attributed to any service provider of edge strategies for businesses with profitable growth in focus and/or professional personnel training and coaching services with the aim of striving for the growth edge which could make the difference to you in your professional development and in the management of your business.

Moreover, reference can be made to the following internet results relating to growth edge coaching in businesses and organizations and edge strategies with profitable growth in mind for companies and businesses:

https://www.growthedgecoaching.com/coaching/coaching-for-leaders

https://hbr.org/product/edge-strategy-a-new-mindset-for-profitable-growth/15026-HBK-ENG

http://www.freshbusinessthinking.com/business-edge-strategies-for-growth-2/

Therefore, the Office finds that the sign in question as a whole is devoid of any distinctive character under art. 7(1)(b) EUTMR and consequently cannot serve as an indicator of commercial origin in relation to the services at issue.

2. Relevant public

Applicant´s remarks

The relevant public targeted by the services at issue is composed of a specialised and sophisticated public, namely professional seeking assistance in understanding information affecting their businesses.

Office´s comments

The Office does agree with the applicant that the services in question are targeting mainly professionals seeking assistance with running their businesses, including vocational and personnel training.

But even if the awareness of the relevant public is fairly high, given the relatively high professional 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).

3. The mark assessed in relation to the services at issue

Applicant´s remarks

The contested services in Class 41, training services and consultancy, personnel training, are related with the other services in Class 35, business assistance and management, business consulting and business analysis, in the way that the services in Class 41 are complementary services, included in this management service in Class 35. Moreover, the services at issue in Class 35 are not related directly with the wording ‘GROWTH EDGE’ without performing additional operations. Therefore, the mark will easily be remembered by the relevant public and perceived as an indicator of commercial origin in relation to the services at question.

There is no clear link between the mark and the characteristics of the services at issue. The mark requires a degree of interpretative effort on the part of the relevant public in order to arrive at the services applied for. Therefore, the mark cannot be regarded as being completely devoid of any distinctive character.

Office´s comments

The Office does agree with the applicant that the services at issue in Class 41 education and training services and consultancy; personnel training; vocational skills training; coaching; conducting workshops [training]; arranging and conducting of symposiums may be considered as complementary to the business assistance and management services in Class 35. However, the Office respectfully disagrees with the applicant that the latter services at issue in Class 35 are not related directly with the wording ‘GROWTH EDGE’ without performing additional operations. As reasoned above the sign will direct and straightforwardly be perceived by the relevant public as a simple message that could be attributed to any service provider of edge strategies for businesses with profitable growth in focus in order to create and capture extra value and profit.

Therefore, the Office maintains its position the link between the sign at issue, ‘GROWTH EDGE’ and the characteristics of the services at issue is so clear that the sign is not capable of serving as an indicator of commercial origin in relation to the services at question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No  16 956 807 is hereby partially rejected for the following services:

Class 35 Business assistance and management; business consulting and advisory services; business analysis; business research and information services; collection and systemization of business data.

Class 41 Education and training services and consultancy; personnel training; vocational skills training; coaching; conducting workshops [training]; arranging and conducting of symposiums.

.

The application may proceed for the remaining goods and services, namely:

Class 9 Software; interactive computer systems; interactive computer software.

Class 35 Business research and information services; collection and systemization of business data.

Class 41 Conducting workshops [training]; arranging and conducting of symposiums.

Class 42 Software development, programming and implementation; data duplication and conversion services, data coding services.

Class 44 Consultancy relating to integral psychology; individual and group psychology services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Finn PEDERSEN