Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 30/08/2018

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	017236704
Your reference:	T44803EU/RAC/ECM/rcu
Trade mark:	CLEAN GREEN
Mark type:	Word mark
Applicant:	Michael Harry Maurice Dixon 91 Benfleet Road Benfleet Essex SS7 1QF REINO UNIDO

The Office raised an objection on 09/11/2017 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 02/02/2018 and 22/06/2018, which may be summarised as follows:

1. There is a degree of lexical inventiveness in the mark applied for, moreover, the expression at issue does not follow the normal rules of English grammar. The mark, examined as a whole, is sufficiently far removed from the mere combination of meanings lent by its elements.

2. The sign is not descriptive of the goods. It is merely allusive.

3. The combination ‘GREEN CLEAN’ may be perceived as conveying other meanings than those indicated by the examiner.

4. Registration of a sign as a trade mark does not require a specific level of creativity or imaginativeness from the applicant. A minimum degree of distinctiveness is sufficient for the provisions of Article 7(1)(b) EUTMR not to apply.

5. The applicant invokes previous EUTM and UK registrations of ‘CLEAN GREEN’ trade marks for classes 3, 21, 35 and 37 respectively.

6. The applicant reserves the right to file evidence of acquired distinctiveness through use as a subsidiary claim under Article 7(3).

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.

General remarks on Article 7(1)(b) EUTMR

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 to the applicant’s arguments

1. There is a degree of lexical inventiveness in the mark applied for, moreover, the expression at issue does not follow the normal rules of English grammar. The mark, examined as a whole, is sufficiently far removed from the mere combination of meanings lent by its elements.

The Office does not share the applicant’s view.

It is clear that the expression ‘CLEAN GREEN’ consists of the combination of two readily identifiable and ordinary words from the English language, namely clean and green.

The verb ‘CLEAN’ will be understood as to make or become free of dirt, filth, etc.

‘GREEN’ will be immediately perceived by the relevant public as ‘not harmful to the environment’, ‘concerned with or supporting protection of the environment’ or being ‘environmentally friendly’ (judgment of 27/02/2015, T-106/14, ‘Greenworld’, EU:T:2015:123, § 24; ‘Greenline’ for goods in Classes 1, 5, 6, 8, 20 and 21 that can conform to a philosophy of care for the environment (decision of 30/03/2007, R 125/2007-2 ‘GREENLINE’, § 15-22)).

There is nothing unusual about the structure of that sign. The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive it as extraordinary but rather as a meaningful expression that is not sufficiently unusual, ambiguous or fanciful to require a measure of interpretation, thought or analysis by the relevant consumer.

Furthermore, the message expressed by the sign is clear, direct and immediate (as set out in the attached initial notice of absolute grounds for refusal) to the relevant public and in relation to the objectionable goods and services. The term ‘CLEAN GREEN’ is not vague or akin to an allusive fanciful sign in relation to the goods and services claimed.

It follows that the sign for which registration is sought, ‘CLEAN GREEN’, would simply be seen in the relevant market sector as a laudatory slogan, the function of which is to communicate a 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 that the applicant’s goods enable the consumers to clean in an environmentally responsible way, and that the retail services in question relate to such goods.

As to the grammatical structure of the expression ‘CLEAN GREEN’ composing the sign, the Office points out that advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (inter alia, judgment of 24/01/2008, T-88/06, Safety 1st, EU:T:2008:15, § 40). Therefore, the use of unorthodox grammatical forms may not always be sufficient to make the slogan distinctive. In the present case, the grammatical structure is not sufficiently unorthodox to add distinctiveness to the mark. The expression ‘CLEAN GREEN’ is not vague or impenetrable for the relevant consumers with regard to the goods and services applied for.

2. The sign is not descriptive of the goods. It is merely allusive.

With regard to the above argument, the Office would like to point out that its notice of absolute ground for refusal was based only on Article 7(1)(b) EUTMR.

At no point did the Office claim that the mark in question is merely descriptive with regard to characteristics of the goods and services claimed, and as a result falls within the scope of Article 7(1)(c) EUTMR.

As explained in the initial notice of absolute grounds for refusal, due to the impression produced by the mark in connection with the relevant goods and services, the slogan is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR. The Office therefore considers that it is highly unlikely that, without a substantial use, the consumer could perceive it as a badge of origin to distinguish the applicant’s goods and services beyond the motivational information conveyed.

As the Office demonstrated in its initial notice of 09/11/2017, the sign for which protection is sought, ‘CLEAN GREEN’, will simply be seen in  the relevant market sector as a motivational slogan, the function of which is to merely call to action to clean in an environmentally responsible way.

The sign at issue will simply be seen by the relevant English-speaking public as a promotional statement indicating that the goods and services offered are intended for cleaning and conform to a philosophy of care for the environment.

In this context, it is apparent that the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed (C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

Only a mark which departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) EUTMR (see judgment of 24/05/2012, C-98/11 P, ‘Hase’, paragraph 42 and the case-law cited therein).

3. The combination ‘GREEN CLEAN’ may be perceived as conveying other meanings than those indicated by the examiner.

With regard to this argument, it is pointed out that it is irrelevant whether or not there are other meanings or interpretations that could be ascribed to the word mark applied for, as a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods and services concerned or is non-distinctive in relation to the goods and services covered by the mark, as was confirmed with regard to the meaning of the word element ‘SAFE’ in the judgment of 25/03/2009, T‑343/07, ‘AllSafe’ (§ 28).

4. Registration of a sign as a trade mark does not require a specific level of creativity or imaginativeness from the applicant. A minimum degree of distinctiveness is sufficient for the provisions of Article 7(1)(b) EUTMR not to apply.

Absolute grounds for refusal of a trade mark are examined based on a perception of the relevant consumer of the goods or services claimed, who is reasonably well‑informed and reasonably observant and circumspect.

The Office agrees that Article 7(1)(b) EUTMR provides clearly that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply.

However, in the present case, the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of  the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product or services as originating from a particular undertaking and, therefore, being able to fulfil the essential function of a trade mark.

According the established case-law, there are a number of criteria to be used when assessing the distinctive character of a slogan (judgments of 21/01/2010, C‑398/08 P ‘VORSPRUNG DURCH TECHNIK’, para. 47, and of 13/04/2011, T‑523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, para. 37).

After due consideration of the sign in question and the applicant’s observations, it has been found that the mark applied for does not meet the criteria set by the Court of Justice.

In the case at issue the sign ‘CLEAN GREEN’ is composed of commonplace English words. No stylistic devices such as alliteration, metaphor or paradox have been used to design the slogan. Additionally, the combination of elements does not constitute a play on words nor does it introduce elements of conceptual intrigue. Quite the opposite, from a semantic point of view, the combination of words can only be interpreted as a direct and meaningful expression: clean, cleanse, wash up in an environmentally friendly way.

The fact that the words ‘CLEAN’ and ‘GREEN’ rhyme with each other is not enough to endow the mark with a distinctive character. Despite the rhyme and the slightly unusual grammatical structure, the expression does not require from the relevant public an interpretative effort. Contrary to the applicant’s contention, the interpretation of the sign in the context of the goods and services covered by the application does not require a considerable mental effort of the relevant consumers.

It follows that the relevant public will not be able to distinguish, without any possibility of confusion, the goods and services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 21).

In view of the above, the present sign is devoid of distinctive character in respect of the goods and services for which the objection was raised. It follows that the sign is unable to fulfil the essential function of a trade mark, that is to identify the goods and services as originating from a particular undertaking.

Therefore, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional and motivational information conveyed.

5. The applicant invokes previous EUTM and UK registrations of ‘CLEAN GREEN’ trade marks for classes 3, 21, 35 and 37 respectively.

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).

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 a fact that the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal. However, apart from the fact that registration practices develop over time, it is unfortunately inevitable that doubtful trade marks are sometimes registered. Nevertheless, 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 its claim, on unlawful acts committed in favour of another’ (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, paragraph 67).

In this regard, the Office would like to point out that it in fact refused registration of previous trade mark applications composed of the words ‘CLEAN GREEN’ and ‘Clean&Green’ (decision of 27/06/2006, EUTMA 004824967, ‘Clean&Green’ refused for goods in class 21; decision of 15/10/2015, EUTMA 013639182, ‘CLEAN GREEN’ refused for services in class 37).

6. The applicant reserves the right to file evidence of acquired distinctiveness through use as a subsidiary claim under Article 7(3).

The Office takes note of the applicant’s subsidiary claim under Article 7(3) EUTMR and Article 2(2) EUTMIR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 017236704 is declared to be non-distinctive pursuant to Article 7(1)(b) in the territory of Ireland, Malta and the United Kingdom for the following goods and services:

Class 3

Cleaning, polishing, scouring and abrasive preparations; non-medicated soaps; washing preparations; wipes impregnated with cleaning preparations; wipes incorporating cleaning preparations; varnish removing preparations; agents for removing wax; drain cleaning preparations; detergents; abrasive papers; oven cleaners; upholstery and carpet shampoos; stain removers; cleaning sprays; canned pressurised air for cleaning and dusting purposes; spray cleaners for household use; paint removers; wallpaper cleaning preparations; degreasing sprays.

Class 35

Retail services and store, on-line, telephone and mail order retail services connected with the sale of cleaning, polishing, scouring and abrasive preparations, non-medicated soaps, washing preparations; retail services and store, on-line, telephone and mail order retail services connected with the sale of wipes impregnated with cleaning preparations, wipes incorporating cleaning preparations, varnish removing preparations, agents for removing wax, drain cleaning preparations, detergents, abrasive papers, oven cleaners; retail services and store, on-line, telephone and mail order retail services connected with the sale of upholstery and carpet shampoos, stain removers, cleaning sprays, canned pressurised air for cleaning and dusting purposes, spray cleaners for household use, paint removers, wallpaper cleaning preparations, degreasing sprays; retail services and store, on-line, telephone and mail order retail services connected with the sale of articles for cleaning purposes, cloths, scourers, sponges, dusters, steel wool, abrasive and non-abrasive pads for cleaning, brushes, lubricants, dust absorbing compositions, air fresheners, chemicals for use in the home and garden.

The application may proceed for the remaining good and services, namely:

Class 3

Bleaching preparations and other substances for laundry use; prepared wax for polishing; polishes.

Class 35

Retail services and store, on-line, telephone and mail order retail services connected with the sale of bleaching preparations and other substances for laundry use; retail services and store, on-line, telephone and mail order retail services connected with the sale of prepared wax for polishing, polishes; business assistance; providing information, management services, consultancy services, business assistance and advisory services relating to franchising.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Anna MAKOWSKA

Attachment: Notice of 09/11/2017 of absolute grounds for refusal