Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 16/04/2018

DESPACHO GONZÁLEZ-BUENO, S.L.P.

Calle Velázquez 19, 2º Dcha.

E-28001 Madrid

ESPAÑA

Application No:	017181819
Your reference:	CE-09279
Trade mark:	PROJECT WORLDWIDE
Mark type:	Word mark
Applicant:	Project: WorldWide, Inc. 3600 Giddings Road Auburn Hills, Michigan 48326 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 25/10/2017 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 05/12/2017, which may be summarised as follows:

1. In English-speaking countries, signs similar to ‘PROJECT WORLDWIDE’ have been registered (e.g. word mark No 5155020 ‘PROJECT: WORLDWIDE’ in the USA, figurative mark No 1422210 ‘PROJECT: WORLDWIDE’ in Australia and word mark No 3255191 ‘PROJECT WORLDWIDE’ in the United Kingdom). They have been considered sufficiently distinctive and registered. The Intellectual Property Office of the UK applies the same criteria of examination as the EUIPO.

2. Whenever English-speaking consumers consider a trade mark sufficiently distinctive, ‘it should be assessed in the same manner in the remaining countries of the EU, where it would not be easily understood’ and would therefore be more fanciful.

3. The Office has previously registered trade marks for the same expression, such as the figurative EUTM No 014 325 336 ‘PROJECT: WORLDWIDE’ for services in Classes 35, 37, 41 and 43.

4. The assessment of the distinctiveness and descriptiveness of a mark may be based on the examination of its parts but must also take into consideration the sign as a whole. The word ‘PROJECT’ is both a noun and a verb. The English-speaking public will perceive it rather as a verb. The sign lacks grammatical correctness and may have different meanings. Therefore, its meaning will not be immediately perceived by the relevant public, especially in connection with the services for which registration is sought. The expression is not a synonym of ‘worldwide projects’.

5. The mark ‘PROJECT WORLDWIDE’ does not describe the goods/services or any characteristics of the services for which registration is sought. ‘It does not have any immediate and descriptive meaning in the context of such services’ (18/02/2010, R 1583/2009-2, B-RELAXED; 20/04/2015, R 2805/2014-5, Silver-to-go; 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247). The Office did not prove that the sign has such a meaning. The sign is ‘a vague and evocative message that they [the services for which registration is sought – MT] are designed for consumers having a particular interest in advertising services, or event planning, marketing services …’. The expression as a whole is ‘imprecise’ in relation to the services for which registration is sought.

6. Based on 21/01/2010, C‑398/08P, VORSPRUNG DURCH TECHNIK, EU:C:2010:29, and similar judgments, no stricter criteria should be applied to slogan marks. In addition, a sign can at the same time be a promotional formula and convey the commercial origin of the goods and services for which registration is sought. It does not have to be imaginative or creative. ‘PROJECT WORLDWIDE’ is an ‘abstract message making reference to the interest of the potential consumers in something global, general, universal, …’. The sign as a whole requires analysis and interpretation (25/08/2015, R 2810/2014-2, WHEN PASSION MEETS INNOVATION).

7. The sign is original, likely to be perceived as a metaphor and easy to remember. It is capable of indicating commercial origin (07/08/2012, R 0103/2012-2, Passion for people).

8. When used in connection with services, the sign may be perceived as ‘an incitement to contract the services in question on the basis that they lend themselves to produce something important, universal … even worldwide. According to case-law, a mark consisting of an incitement to purchase is not automatically barred from registration’ (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645).

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).

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).

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 will now address the applicant’s arguments.

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Following 15/03/2018, R 2472/2017-4, PROJECT: WORLDWIDE, § 25:

Even registrations obtained in a Member State are not binding on the Office (06/06/2013, T‑515/11, Innovation for the real world, EU:T:2013:300, § 72), let alone registrations in non-EU jurisdictions. This is the case even for previous registrations or allowed applications of an identical trade mark by the Office (25/09/2015, T‑707/14, DetergentOptimiser, EU:T:2015:696, § 32; 05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 31).

Therefore, the earlier registrations are irrelevant due to the autonomy of the EU system. In addition, although the national registrations submitted by the applicant present analogous or similar verbal elements (as parts of the word or figurative marks) to those of the sign applied for, every application, like the present one, is examined by this Office based on its own merits and characteristics, in the light of the current practice of the EUIPO, and always in compliance with the applicable EUTMR provisions and relevant case-law.

Moreover, the Office in its communication of 25/10/2017 stated that:

The distinctive character of a trade mark is assessed in relation to the goods or services for which protection is sought and the perception of the relevant public. In the present case, the average English-speaking consumer (including the professional public) would understand the sign as having the following meaning: An individual or collaborative enterprise that is carefully planned to achieve a particular aim extending or reaching throughout the world. Present or promote (a particular view or image) or present (someone or something) throughout the world in a particular way.

Therefore, the assessment of the sign is based on the English-speaking part of the public of the European Union, which consists of the public in Ireland, Malta and the United Kingdom.

It suffices for a refusal if the trade mark is descriptive, or lacks distinctive character, in any one of the official languages of the EU (03/07/2013, T‑236/12, Neo, EU:T:2013:343, § 57).

Therefore, the assessment in other EU countries, where English is not understood by a significant section of the relevant public, is not pertinent.

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 pointless to compare figurative marks, such as EUTM No 014 325 336 ‘PROJECT: WORLDWIDE’, with word marks, such as the mark at issue, as the figurative element may result in a sufficient degree of distinctiveness, even when the verbal element is weak. The principle of equal treatment cannot be applied to the comparison of different types of mark.

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).

Furthermore, the fact that that the combination of words used is not usual does not mean that the juxtaposition is a violation of English grammar rules, or that an expression thus created will be not understandable to the relevant public.

Nevertheless, slogans, especially those used in advertising, are often provided in a simplified form; they are shorter and more concise than expressions used in normal interaction. They are often unorthodox as regards their grammatical form. Therefore, the target public is used to such advertising arrangements and will understand the message of the slogan and will not perceive it as departing from the normal standards.

The Office in the communication of 25/10/2017 provided the definitions of the words composing the trade mark applied for and also explained the meaning of the sign as a whole in relation to the services for which registration is sought:

The sign for which protection is sought, ‘PROJECT WORLDWIDE’, would simply be seen in the relevant market sector as a laudatory slogan, the function of which is to communicate a value statement or 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 beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in Classes 35 (advertising services, including agencies, namely, promoting and marketing the goods and services of others through all public communication means, public relations, business marketing consulting services, branding services, namely, consulting, development, management and marketing of brands for businesses, market analysis and research services, customer relationship management, event planning and management for marketing, branding, promoting or advertising the goods and services of others, arranging and conducting trade show exhibits for others for commercial and advertising purposes, business management and business consulting services in the field of event planning for others, providing marketing and promotion of special events for others, providing office support staff services, namely, providing administrative and business support services to event organizers and exhibitors at trade shows, special event planning consultation for commercial, promotional or advertising purposes, arranging and conducting special events for commercial, promotional or advertising purposes, publicity and sales promotion services, business to business direct marketing services, advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, shareable or viral communications channels, among others), 41 (special event planning consultation for social entertainment purposes, arranging and conducting special events for social entertainment purposes) and 42 (design, development, and consulting services related thereto in the field of websites for others, packaging design for others, graphic design services, computer graphics design services, namely, creating animations for others, designing theme graphics and multimedia shows for trade show exhibits) in question, namely that they are all enterprises or the necessary parts of such initiatives of diverse nature which aim at extending worldwide or which guarantee to reach the public/customers throughout the world. The aim of the services is to project/promote/make visible and known the goods and/or services and brands of the customers world widely, by offering a wide range of holistic and complimentary services to build a brand, promote it together with the related goods/services, maintain the desired image and attract worldwide interest.

The Office has therefore proven the meaning of the mark applied for and shown its connection with the services. In addition, as stated in 15/03/2018, R 2472/2017-4, PROJECT: WORLDWIDE, § 18:

First of all, a worldwide project may exist in any field and it may apply to any goods or services. Secondly, even if there are other ways to express the same idea, it does not matter. Thirdly, whether the element ‘PROJECT’ has other meanings, for instance as a verb, is irrelevant. A word sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 34). That case-law, which was first developed in connection with Article 7(1)(c) EUTMR, is also applicable to Article 7(1)(b) EUTMR (29/04/2010, T‑586/08, BioPietra, EU:T:2010:171, § 35).

Even if the expression is not a synonym of ‘worldwide projects’, it is composed of two simple and commonly used words, the combination of which, as stated above, does not require any analysis or interpretation in relation to the services for which registration is sought, and therefore no mental effort is required from the relevant public.

The applicant is of the opinion that the sign in question is not descriptive of the goods/services for which registration is sought.

The Office agrees with the applicant on this point, although registration has not been sought for any goods, but recalls that it objects to the registration of the sign in question not because of its descriptiveness but because of the lack of distinctive character. Therefore, this argument is irrelevant in the present case and cannot be taken into account.

It is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark 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 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, Soap device, EU:T:2003:53, § 48). Therefore, the Office is not obliged to prove the non-descriptive and non-distinctive character of the mark.

With regard to the evocativeness and imprecision of the sign in relation to the services for which registration is sought, the Office has already established and proven that the relevant public will create a concrete link between the sign and the services within the framework of the pertinent market reality.

Furthermore, it was held that the slogan ‘Vorsprung durch Technik’ was distinctive in relation to a wide range of goods and services not only but also due to its distinctiveness acquired through long-standing use as a slogan for promoting the sale of cars (see judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, paragraph 59; and decision of 08/07/2011, R 1798/2010-G – ‘La qualité est la meilleure des recettes’, paragraphs 28 and 29). Thus, the applicant’s reference to the judgment of 21/01/2010, C‑398/08 P, ‘Vorsprung durch Technik’, does not change the outcome in the case in question and, in fact, serves to confirm the finding.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The sign is a banal statement that conveys an obvious promotional laudatory meaning. It merely serves to highlight positive aspects of the services for which registration is sought, but it will not be perceived by the relevant public as a badge of origin. Therefore, it is neither original nor abstract, nor it is capable of distinguishing in the relevant consumers’ minds the services from those of another undertaking.

With regard to the last argument, following 15/03/2018, R 2472/2017-4, PROJECT: WORLDWIDE, § 10-11:

For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the goods or services which, whilst not specific, represents promotional or advertising information, which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 30; 06/06/2013, T‑126/12, Inspired by efficiency, EU:T:2013:303, § 25).

However, registration of a trade mark which consists of 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 for that reason. In the case of such trade marks, it must always be examined whether there are elements which, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services designated (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 19; 11/12/2012, T‑22/12, Qualität hat Zukunft, EU:T:2012:663, § 15).

In conclusion, the applicant failed to prove that the trade mark applied for ‘PROJECT WORLDWIDE’ is an expression that will enable the relevant public to memorise it and repeat the selection of the services for which registration is sought. Therefore, there is nothing that sets the mark apart from its banal, promotional message; the mark lacks any distinctive character in relation to the services for which registration is sought.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 017 181 819, ‘PROJECT WORLDWIDE’, 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.

Monika TOMCZYNSKA