Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/07/2018

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	017240102
Your reference:	81824805
Trade mark:	VAPING MADE SIMPLE
Mark type:	Word mark
Applicant:	Nicoventures Holdings Limited Globe House 1 Water Street London WC2R 3LA REINO UNIDO

The Office raised an objection on 03/10/2017 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 06/12/2017, which may be summarised and quoted as follows:

1. According to 16/09/2004, C - 329/02 P , SAT.2, EU:C:2004:532, § 41, the registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness. When assessing the distinctive character of a slogan it is inappropriate to apply stricter criteria than those applicable to other types of signs; the criteria which should be used are indicated in 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47, and 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 37. Accordingly, an advertising slogan is distinctive when it constitutes a play on words and/or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or has some particular originality or resonance and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort. In addition, the use of unusual syntactic

structures and linguistic and stylistic devices may contribute towards a finding of distinctiveness.

2. The mark is a combination of three words with a known meaning in the English language, the word ‘VAPING’ is a commonly used term in relation to electronic cigarette smoking and the words ‘MADE SIMPLE’ are actually a clever and surprising mark which has no context or meaning in relation to the products in Class 34 applied for. In fact, smoking is an everyday and easy activity and there is no need to make it simple so that consumers will not perceive any suggestion or laudatory message from the mark. Therefore the allusion to simplicity is ironic. Furthermore, the relationship between the word ‘MADE SIMPLE’ alongside a functional word element such as ‘VAPING’ results in an overall structure which gives the mark an element of distinctiveness. Finally, neither the definition of ‘VAPING’ or ‘MADE SIMPLE’ has reference to a ‘positive aspect’.

3. Four prior trade mark marks with the same structure ( i.e. XXXXX MADE SIMPLE) which have been accepted by the EUIPO in relation to goods and/or services for which the additional word element is descriptive.

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 withdraw the objections partially in relation to the following goods:

Class 34: Cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products.

For the remaining goods the objection is maintained for the following reasons

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered. Article 7(2) of that Regulation provides that Article 7(1) EUTMR is to apply notwithstanding that the grounds of non-registrability obtain in only part of the EU.

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).

In the case at stake, the goods applied for are mass consumption products which consist of electronic cigarettes and vaping devices, as well as parts, fittings and components of those goods, including cases and boxes in Class 34 . The target public of the said goods is generally considered to be the end user of the goods, who is deemed to be loyal to their brand of cigarettes and to have a higher degree of attention when buying tobacco goods. Therefore, the awareness and level of attention of the relevant public will be relatively high (15/09/2016, T-633/15, PUSH/PUNCH et al. EU:T:2016:492 § 19). On the other hand, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers (29/01/2015, T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27; 06/06/2013, T-126/12, Inspired by efficiency, EU:T:2013:303, § 27).

Therefore, the level of attention of the relevant public will vary from a high degree to an average degree. In addition, since the trade mark applied for comprises three English words account must be taken of the public in the English-speaking territory of the European Union.

Contrary to the applicant’s view the meaning of the expression as a whole is indeed straightforward and immediately intelligible to English speakers. The message is unambiguous and evident, without any particular mental exertion being required on the part of the public in order to grasp its meaning and specifically that the act of “VAPING” is somehow “MADE SIMPLE” which can be a desirable characteristic.

The Office agrees with the applicant that an application is not subject to a finding of specific level of linguistic or artistic creativity, but on the other hand such application must be able to distinguish the goods/ services as originating from a company, which is not the case here.

The act of vaping can be made simple in many ways, such as for example by providing easy to use devices, easy to carry devvices, or easy to fit cartridges, or specific cases of boxes for the vaping devices etc.

If so, in relation to the goods at issue in Class 34, the sign is nothing more than a laudatory reference to a product thanks to which vaping is MADE SIMPLE. As a consequence, the sign ‘VAPING MADE SIMPLE’ contains a simple laudatory promotional message and will not be perceived as an indication of the commercial origin of the goods, but rather as indicating to consumers a characteristic of the products relating to their market value which comes from promotional or advertising information which the relevant public will perceive first and foremost as such (see, by analogy: 25/05/2012 – R 2259/2011-2 – REIMAGINE PRINTING § 15-16).

The message is unambiguous, without any particular mental exertion, on the part of any public. Indeed, the slogan appears to be a banal one, with a simple and direct laudatory message.

As regards the applicant’s argument at number 2 above specified, the Office fails to see why the relationship between ‘MADE SIMPLE’ and ‘VAPING’ would render distinctive the whole expression, as the applicant argues. For the English-speaking consumer the expression in relation to the contested goods will clearly be understood as a reference to goods related to amongst others electronic cigarettes and vaping devices and their sale. The applicant argues that the word ‘MADE SIMPLE’ has no context or meaning in relationship to the products in Class 34 applied for. On the contrary, the Office considers that the relevant public are more likely to understand the application by its dictionary definition, which would not require any particular thought, rather than think about terms which may be more commonly used in connection with the goods applied for. In this respect, it should be pointed out that a sign must be refused registration under Article 7(1)(b) EUTMR if it lacks any distinctiveness in one of its possible meanings, as in this very case (29/04/2010, T-586/08, BioPietra, EU:T:2010:171, § 35; 23/01/2014, T-68/13, Care to care, EU:T:2014:29, § 41; 02/12/2015, T-528/14, Growth Delivered, EU:T:2015:920, § 46).

As regards the applicant’s argument at number 3 above specified, 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 17 240 102 is hereby rejected for the following goods

Class 34 Electronic cigarettes; cartridges for electronic cigarettes; liquids for electronic cigarettes; cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products; cigarette cases; cigarette boxes.

The application may proceed for the remaining goods, namely:

Class 34: Cigarettes containing tobacco substitutes; tobacco substitutes; cigarettes; tobacco; tobacco products.

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.

Michele M. BENEDETTI - ALOISI