Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/02/2018

Katarzyna Binder-Sony

First Floor, 3 More London Riverside

London SE1 2RE

REINO UNIDO

Application No:	017229311
Your reference:	1057514
Trade mark:	MORNING RECOVERY
Mark type:	Word mark
Applicant:	82 LABS, INC. 3470 Wilshire Blvd, Suite 535 Los Angeles California 90010 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 05/10/2017 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and 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. There is no immediate connection between the mark and the goods applied for. There is low probability that the average consumer will be able to identify the exact scope of the goods applied for as the mark itself does not have any obvious inclination towards nutritional supplements.

2. Even if the European consumer would identify the meaning of the mark in a way proposed by the Office, the process would require a few mental steps for which the consumers in the vast majority of cases simply do not have enough time. The consumer will see the mark only for a couple of seconds and do not analyse the meaning of each of the words. The mark ‘MORNING RECOVERY’ will not be considered as descriptive but as a new and fanciful expression. The mark is catchy and it takes a mental effort and several mental steps to make any sense of the mark. The mark possess a considerable degree of originality.

3. The phrase ‘MORNING RECOVERY’ is unusual for English native speakers and it is virtually absent in the contemporary English. The search results provided by Google are almost exclusively related to the product of the applicant. The mark ‘MORNING RECOVERY’ is new composition of words which constitutes an innovative and distinctive term.

4. The mark ‘MORNING RECOVERY’ has no precise meaning since its components have quite different meanings and their combination is more than ambiguous. Thus, the mark is not purely descriptive with respect to the goods applied for. The word ‘RECOVERY’ has a few quite different meanings. It is contemporary most commonly used in relation to some economic circumstances. It is inseparably linked to some kind of prolonged struggles and difficulties. The meaning of the mark ‘MORNING RECOVERY’ presented by the Office could be regarded as one of many, and not necessarily the obvious one, interpretation of the mark.

5. Even if dietary and nutritional supplements really provide their consumers with some health benefits, it is never an instant occurrence. They are not able to prevent or treat any disease. There is a difference between pharmaceuticals and supplements. Therefore European consumers will not associate the word ‘RECOVERY’ with nutritional supplements because it is obvious that supplements have to be consumed for the prolonged period of time and even that they can barely support normal functions of the human body but are unable to provide any cure. So they are unable provide recovery. The mark ‘MORNING RECOVERY’ can be associated with some pharmaceuticals or some financial institutions but not with nutritional supplements.

6. A trade mark consisting of a combination of elements which on their own are devoid of any distinctive character can be distinctive as a whole. The fact that the words ‘MORNING’ and ‘RECOVERY’ have own meanings does not automatically mean that the relevant public would immediately understand the mark and associate it with the goods in question.

7. The mark ‘MORNING RECOVERY’ is already distinctive because of the publicity it has gained not only in the United States but also in Europe.

8. The applicant referred to the registration of the same sign in Canada and in the United States.

9. The applicant referred to EUTMs that contain the word ‘RECOVERY’.

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.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

1. As regards the applicant’s first argument, the Office states that the descriptive character and distinctiveness of a mark have to be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. The consumers will not perceive the mark separately but in relation to the goods for which registration is sought. Therefore the relevant public will perceive the mark ‘MORNING RECOVERY’ in relation to the nutritionally fortified beverages for use as dietary and nutritional supplements and will understand it as obvious and direct information that the goods enable them to feel good again after the night.

2. Regarding the applicant’s second argument, the Office examined the mark as a whole in relation to the goods applied for and in relation to the perception of the relevant public. The mark applied for is made up of two common words which are not linked in one unit in a catchy or unusual way. The mark ‘MORNING RECOVERY’ is a combination of words which has clear message and the relevant consumers would understand the mark with no additional mental effort. The mark applied for has no additional element which would endow the mark with distinctiveness. The Office maintains its opinion that the mark is descriptive and devoid of any distinctive character in relation to the goods for which registration is sought.

3. Regarding the applicant’s third argument, the Office reiterates its response to point 2. Furthermore the Office states that ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 88).

4. As regards the applicant’s fourth argument, the Office does not contest that the words ‘MORNING’ and ‘RECOVERY’ have more meanings than the one provided by the Office, however for trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

5. As regards the applicant’s fifth argument, the Office reiterates its response to point 1.

6. Regarding the applicant’s sixth argument,

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The mark in question is made up of two common words that would be understood by relevant consumers with no additional mental effort. The Office considers the mark in question as a mere sum of its parts since it does not contain any additonal elements that would endow the mark with distinctive character. Therefore the Office maintains its opinion that the mark is descriptive and devoid of any distinctive character.

7. Regarding the applicant’s argument that the mark ‘MORNING RECOVERY’ is already distinctive because of the publicity it has gained not only in the United States but also in Europe, the Office states that the applicant did not claim that the mark has become distinctive in relation to the goods or services for which registration is requested as a consequence of the use which has been made of it and that the applicant did not submit any evidence from which it would be possible to conclude it. The applicant submitted merely few documents of the use of the mark however the applicant did not submit any evidence about acquired distinctiveness of the mark. The fact that the mark is used does not automatically mean that it has distinctive character.

8. 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.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

9. 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 229 311 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.

Klara BOUSKOVA