Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/02/2018

STOBBS

Endurance House, Vision Park, Chivers Way

Cambridge CB24 9ZR

REINO UNIDO

Application No:	017162421
Your reference:	2007/10012/jxs/fn1
Trade mark:	GROWTH CATALYST PARTNERS
Mark type:	Word mark
Applicant:	Growth Catalyst Partners, LLC 318 W. Adams Street, 16th Floor Chicago Illinois 60606 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/10/2017 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.

The applicant submitted its observations on 19/02/2018, which may be summarised as follows:

1. The word ‘catalyst’ has several meanings; when the relevant consumer encounters the mark ‘Growth Catalyst Partners’, the word ‘catalyst’ will stand out from the others, as it will be perceived as a reference to substances that speed up chemical reactions.

2. The mark is a fanciful expression; the expression ‘growth catalyst partners’ creates an impression that is sufficiently different from that produced by the simple combination of words.

3. The applicant’s services are highly specialised and therefore the relevant consumer is a specialist and is well-informed about the relevant services and their providers.

4. The mark has the minimum level of distinctiveness required to function as a trade mark.

5. The Oxford Dictionary of Finance and Banking online does not contain the expression ‘Growth Catalyst’.

6. The Office has previously registered several trade marks that have the same construction as ‘Growth Catalyst Partners’.

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.

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).

In the present case, the sign for which protection is sought, ‘Growth Catalyst Partners’, would be perceived in the relevant market sector as simply a laudatory slogan, the function of which is to communicate an inspirational or motivational statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign; the mark as a whole would be perceived merely as a descriptor indicating that the services on offer will help the relevant consumer in stimulating financial and/or business growth.

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

As regards the applicant’s observations, the Office replies as follows:

1. The word ‘catalyst’ has several meanings; when the relevant consumer encounters the mark ‘Growth Catalyst Partners’, the word ‘catalyst’ will stand out from the others, as it will be perceived as a reference to substances that speed up chemical reactions.

The applicant’s argument that the word ‘catalyst’ can have many meanings is not decisive. The Office explains that the sign’s meaning should be assessed, first, in relation to the services for which the registration is sought and, second, in relation to the perception of the relevant public. The only relevant meaning is always the one that makes most sense for the prospective consumer. In the present case, the relevant consumer will logically select the meaning adjusted to the context, excluding the irrelevant meanings, which have no connection with such services.

As stated above in the context of the services for which registration is sought, the relevant consumer will understand the expression as a whole as information about a characteristic of the services, namely that they will help the relevant consumer in stimulating financial and/or business growth.

2. The mark is a fanciful expression; the expression ‘growth catalyst partners’ creates an impression that is sufficiently different from that produced by the simple combination of words.

The sign applied for is composed of ordinary words that are immediately understandable by any English-speaking consumer. The mark has a clear meaning resulting from the use of a combination of words that can be found in dictionaries; it is composed of words that could easily be used as part of everyday spoken language and is constructed in accordance with the basic rules of English grammar. 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).

3. The applicant’s services are highly specialised and therefore the relevant consumer is a specialist and is well-informed about the relevant services and their providers.

The Office considers that a high level of attention alone does not establish that the consumer will recognise an indication of origin when encountering such a clearly non-distinctive term. Consumers do not tend to carry out complex analyses and will perceive the sign merely as a promotional, laudatory message, indicating a positive characteristic of the services for which registration is sought. Moreover, the sign applied for is simple and basic and therefore lacking in additional distinguishing features or graphic elements; therefore, it cannot carry out the function of a trade mark, even if the attention of the relevant public is higher than average.

The Office notes that, in view of the nature of the services in question, even if the awareness of part of the relevant public for this kind of services could be high, 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).

Consequently, the Office finds that the applicant, which argues that the consumer can distinguish between a trade mark and a laudatory slogan, cannot rely on the mere fact that the consumer is a specialist.

4. The mark has the minimum level of distinctiveness required to function as a trade mark.

It is common to use motivational statements in marketing to urge consumers to buy goods and employ services. These motivational statements are commonly used by various traders for the purpose of encouraging consumers to buy goods or employ services. The relevant consumers are familiar with this fact and are used to these expressions.

Therefore, they are perceived only as motivational and promotional statements, which might be used by various traders with the purpose of influencing and motivating consumers. That means that these motivational expressions will be perceived as fairly commonplace in the language of marketing and it follows that they do not have the ability to distinguish services. Contrary to the applicant’s statements, the Office cannot find anything unusual or distinctive about the mark applied for. The sign is composed of words in standard upper case letters. There is no figurative element that could add any distinctive character to this expression and the combination of the words follows linguistic rules. This grammatically correct and normal combination of words in the context of the services for which registration is sought will have a direct and immediate meaning for the relevant English-speaking public.

Therefore, 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 merely promotional message, is incapable of performing the essential function of a trade mark and does not enable the consumer who purchases 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).

5. The Oxford Dictionary of Finance and Banking online does not contain the expression ‘Growth Catalyst’.

The Office has to analyse the mark as a whole and to decide how the words it consists of will be understood in this overall context. In the present case, it is considered that the mark as a whole would be perceived merely as a descriptor indicating that the services on offer will help the relevant consumer in stimulating financial and/or business growth. It is considered that this conclusion remains valid irrespective of variations between dictionary definitions. According to the case-law of the Court of Justice, it is not necessary to prove that the word is the subject of a dictionary entry in order to refuse a sign. It suffices that the term is meant to be used or could be understood by part of the relevant public as a characteristic of the goods and services (17/09/2008, T‑226/07, Pranahaus, EU:T:2008:381, § 36).

If a trade mark, with even one connotation, describes the goods and services for which registration is sought, the Office must refuse the trade mark’s registration. This statement has been supported by the Court of Justice, which stated that a sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

6. The Office has previously registered several trade marks that are similar to the sign ‘Growth Catalyst Partners’.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 162 421 is hereby rejected for all the services claimed.

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.

Liina PUU