Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/05/2018

FREISCHEM & PARTNER Patentanwälte mbB

Salierring 47 - 53

D-50677 Köln

ALEMANIA

Application No:	017187824
Your reference:	HO05EM1705
Trade mark:	BUILDING COMPUTERS. EMPOWERING PEOPLE. CHANGING LIVES
Mark type:	Word mark
Applicant:	Bak USA Technologies Corp. 425 Michigan Avenue Buffalo New York 14203 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/10/2017 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, after an agreed extension of time, submitted its observations on 27/02/2018, which may be summarised as follows:

1. The applicant’s goods are not adapted for “constructing certain kinds of electronics”. The phrase “building computers” which is the first phrase of the mark is not addressed to the relevant consumers as they do not build the computers themselves.

2. The applicant argues that the mark reminds the consumers of “the people-centric business” operated by him as he seeks “to employ the underprivileged and the immigrant communities to hold good paying jobs building computers”.

3. The sign at issue can be interpreted in different ways and therefore has different meanings. The applicant argues that: ‘building computers’ calls to mind the ‘dark factories’ where machines (not people) labour continuously. Such dark factories do not empower people, or change lives. Consequently the mark presents a paradox which renders it distinctive.

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).

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).

As a preliminary remark, the Office notes that the mark ‘BUILDING COMPUTERS. EMPOWERING PEOPLE. CHANGING LIVES’ would simply be seen in the relevant market sector as a laudatory slogan, the function of which is to communicate a customer service and a mission statement as 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 goods in question, namely that the company builds certain types of electronics that enable people to change and progress. It was never implied that the phrase BUILDING COMPUTERS’ which is the first part of the sign is addressed to the buyer of the goods in class 9 not does it expect the relevant consumer to build tablet computers and notebooks on its own.

The applicant argues that the mark reminds the consumers of “the people-centric business” operated by him as he seeks “to employ the underprivileged and the immigrant communities to hold good paying jobs building computers”. This does not contract the Office’s findings. More and more companies nowadays promote ethically produced products. Ethical consumerism is gaining momentum and consumer’s choice is influenced not only by the cost, performance and features of their computers and tablets but also if the companies that produce them respect the environment as well as workers lives. Therefore, the Office reconfirms its findings that the mark at issue has the sole function to communicate a mission statement and cannot not be perceived as a badge of origin.

The Office fails to make the connection between the phrase ‘BUILDING COMPUTERS’ and the dark factories where machines are working nonstop. On the contrary, the Office sees the clear laudatory message that was analysed above.As there are no additional elements which might contribute to the distinctive character of the sign ‘BUILDING COMPUTERS. EMPOWERING PEOPLE. CHANGING LIVES’, such as elements of fancifulness, a play on words, a subliminal message, etc., and it has a clear meaning in relation to the goods applied for, the Office maintains that the trade mark application does not have any distinctive character.

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 so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Due to the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR (see also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that, without a substantial use the consumer could perceive it as a badge of origin to distinguish the applicant the origin of the goods applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 187 824 is hereby rejected for all the goods 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.

Aliki SPANDAGOU