Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/02/2018

CSY London

10 Fetter Lane

London GB_LND EC4A 1BR

REINO UNIDO

Application No:	017131021
Your reference:	65214EM1
Trade mark:	THE POWER TO TRADE SMARTER
Mark type:	Word mark
Applicant:	BANK OF AMERICA CORPORATION 100 North Tryon Street Charlotte, North Carolina 28255 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 31/08/2017 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.

2. The applicant was granted an extension for two months and submitted its observations on 15/12/2017; these may be summarised as follows:

• The applicant refers to the Office´s Guidelines and points out that slogans are 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.

• Reference to case law is also made, such as to the case C-398/08 P, Vorsprung durchTechnik.

• Consumers of financial services will generally pay high attention to signs used in relation to such services and will differentiate between those signs.

• There is no clear and direct link between the mark THE POWER TO TRADE SMARTER and the services specified. To arrive at an interpretation of the mark to mean ‘”he ability to engage in trade in a more intelligent way” would require a considerable mental effort on the part of the average consumer. The mark only alludes to some non-specific connection between a favourable financial position and having some sort of power.

• Novelty, imaginativeness or creativity on the part of the proprietor is not a requirement for distinctive character under Article 7(1)(b). A minimum degree of distinctiveness is sufficient to prevent application of the absolute ground for refusal provided for in Article 7(1)(b).

• Examples are given of earlier registered marks containing the word element POWER for services in class 36.

3. 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)(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).

The Office cannot find anything distinctive about the slogan mark applied for in relation to the financial services applied for.

The message conveyed by the phrase THE POWER TO TRADE SMARTER will immediately be understood by the relevant English-speaking consumers as referring to the capacity to trade (in stocks, bonds etc.) in a more intelligent way. Its structure is that of a typical advertising slogan with a clear and direct meaning in relation to the services in question.

The word elements THE POWER TO simply refer to a capacity or aptitude to engage in something, in this case to TRADE SMARTER. There is not one element in the mark that stand out as distinctive.

Any consumer engaged in the financial field will easily grasp the meaning of the mark without making any mental effort. A consumer looking to trade and invest will perceive the message of the mark means to give him or her increased power/capacity to make better and smarter financial deals (and thus having a greater chance of increasing wealth). The service provided by the applicant, such as financial advice, planning, information etc., can give the consumers the power to trade smarter.

There is nothing allusive about the mark at all. It is highly unlikely that the consumer will have to stop and think about the meaning of the mark or find it unexpected or unusual. In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark as an indication of the commercial origin of the services.

A sign can be both promotional and distinctive, in so far as the public perceives the mark as an indication of origin. See paragraph 45 in the Audi case referred to by the applicant. In the case at hand, the applicant has not showed that the sign in question will be perceived as an indication of commercial origin.

The Office is aware that the General Court has held that a trade mark does not need to be imaginative or creative. However, it does not mean that such matters are irrelevant when appraising the distinctiveness of a sign. On the contrary, a sign which is imaginative, original, unusual and fanciful is far more likely to be able to do the job of distinguishing the goods or services of a specific undertaking than a sign which lacks imagination. In this case, the mark does not contain any element whatsoever that would make it distinctive.

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).

The Office has also rejected a number of marks containing the word POWER for services in class 36, such as the following EUTM applications:

003607884  - The positive power of capital

006206197  - PowerAsset

014770788  - REALIZE THE POWER OF PARTNERSHIP

4. 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 017131021 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.

Cecilia ALIN