Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/05/2018

Iceni Law Limited

Duncan Andrew Welch

45 Moorfields

London EC2Y 9AE

REINO UNIDO

Application No:	17 278 921
Your reference:	88
Trade mark:	FUTURE-FACING LAW
Mark type:	Word mark
Applicant:	CMS Cameron McKenna Nabarro Olswang LLP Cannon Place, 78 Cannon Street, London EC4N 6AF REINO UNIDO

The Office raised a partial 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.

On 20/12/2017 the applicant filed an application to register a declaration of division, creating a new EUTM application no. 17 701 038 as from 15/01/2018 for the goods in Class 9 and 16 and for the services in Class 35, 36, 38 and 41 which were not objected to by the Office.

Upon request of 20/12/2017 from the applicant, the Office extended the time limit for submitting observations till 19/03/2018.

The applicant submitted its observations on 19/03/2018, which may be summarised as follows:

1. Meanings of the sign and its individual verbal elements; - the combination of the individual words of the mark/the sign seen as a whole

2. Similar marks registered by the Office

3. Similar mark of the applicant registered by a national office

4. Straplines and positioning statements/slogans: assessing distinctive character (the sign is not a slogan, is not laudatory but acts as a trade mark as an indicator of origin

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.

1. Meanings of the sign and its individual verbal elements; - the combination of the individual words of the mark/the sign seen as a whole

General remarks

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).

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).

In addition, in view of the nature of the services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Applicant´s remarks

The applicant does not disagree with the examiner in the definitions of the individual words ‘future’, ‘facing’ and ‘law’ of the sign at issue. However, the applicant contends that it is the combination of those three non-distinctive words which forms a fanciful combination with no obvious or meaningful definition. It is a coined term, a set of words, used collectively, in an uncommon manner which creates something more than the individual elements.

With reference to EU-case law (26/02/2016 T-543/14, ‘HOT SOX’, EU:T:2016:102, §19 and §64) the applicant cited that the unusual combination of words forms a sufficiently original whole to have a minimal distinctive character to avoid the absolute grounds for refusal under art. 7(1)(b) EUTMR. Moreover, the applicant contended that it is the connection and inter-play between the three words at the sign at issue which offers more than the sum of its individual parts. Thus, a mark is more than the sum of its parts and the current sign needs to be assessed as a whole.

Office´s comments

The Office does agree with the applicant that 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).

However, the Office does not find the EU case-law cited comparable with the current application. In 26/02/2016 T-543/14, ‘HOT SOX’, EU:T:2016:102, the word ‘HOT’ was found unusual for the goods at issue (hosiery in Class 25) while the word ‘SOX’ was regarded as a non-standard and fanciful spelling of the word ‘socks’.

The Office is of the position that the sign at issue ‘FUTURE-FACING LAW’ is not an unusual combination of verbal elements which offers more than the sum of its individual parts. The sign - seen in relation to the various legal services within intellectual and industrial poperty right in Class 45 – will simply be perceived by the relevant public as highlighting positive aspects of these services, namely that these are taking into consideration or orientated towards future law and legislation. Therefore, the Office maintains its position that the sign at issue is devoid of any distinctive character within the meaning of art. 7(1)(b) and art. 7(2) EUTMR.

2. Similar marks registered by the Office

Applicant´s remarks

The applicant referred to its trade mark ‘YOUR WORLD FIRST’, registered with the Office on 23/08/2013 for the same or similar services in Class 45 and referred to that the practise and laws were entirely similar and consistent with the position of today. The applicant stated that it is the unusual juxtaposition of those words that creates something more than the individual meaning of the words by themselves and that the situation with that mark is entirely consistent with the situation at hand.

Moreover, the applicant referred to other registrations by third parties which include, inter alia, the word ‘FUTURE’ as follows:

EUTM no. DENOMINATION

• 05 755 418 FUTUREBRAND

• 12 820 726 Pioneering the future together

• IR/WO894 441 FUTURE MAKERS

Office´s comments

Firstly, in relation to EUTM 12 820 726 - Pioneering the future together, the Office would like to point out that this sign is only allusive in the way that the term ‘pioneering the future together’ does not quite make sense as you cannot ‘pioneer the future’ or at least only in a fairly vague way or figurative sense.

As to the two other trade marks, EUTM no. 05 755 418, FUTUREBRAND, and IR/WPO no. WO894 441, FUTURE MAKERS, these are registered as long back in time as 2006, respectively in 2006.

Moreover, 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).

In addition, it is clear that the market, the perception of the consumers and,

moreover, the practice of the Office could have changed during this period. The

Court of Justice is also aware of this market and practice evolution and has

stated 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).

3. Similar mark of the applicant registered by a national office

Applicant´s remarks

The applicant referred to the fact that the same mark of the applicant has been registered with the UK national trade mark office/UKIPO under reg.no. UK00003232488 for, inter alia, the same services in Class 45. The applicant referred in this context that the mark is conveying a play on words, conceptual intrigue, originality and resonance.

Office´s comments

As regards the national decision 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).

4. Straplines and positioning statements/slogans: assessing distinctive character (the sign is not a slogan, is not laudatory but acts as a trade mark as an indicator of origin)

Applicant´s remarks

Primarily, the applicant contended with reference to the EU Court of Justice that it is inappropriate to apply any stricter criteria to slogans, when assessing the question of distinctiveness of a sign.

Next, the applicant referred to so-called straplines (external statements used in marketing activities) and positioning statements (internal use) being used by UK law firms, with reference to a research conducted by THE UK marketing company Telia:

https://tela.uk/2017/07/straplines-positioning-statements-top-100-law-firms

The applicant contended that these so-called straplines are statements suggesting a company´s more personal, maybe less austere approach. The current sign ‘FUTURE-FACING LAW’ is not in the same category as these straplines because it does not convey the same advertising ‘puff’ as the straplines do, exemplified by the applicant in its observations.

Office´s comments

Firstly, the Office does agree with the applicant that it is inappropriate to apply

any stricter criteria to slogans, when assessing the question of distinctiveness

of a sign.

Thus, 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).

Applicant´s remarks

The applicant contends that it does not perceive the sign at issue, ‘FUTURE-FACING LAW’, as a slogan, being laudatory or otherwise. The applicant contends that the sign is a trade mark in the traditional sense, nothing more, nothing less.

In the event or the alternative, that the mark ‘FUTURE-FACING LAW’ were a slogan, the applicant contended that the mark is a play on words, introducing elements of conceptual intrigue or surprise. The relevant professional public must engage in a cognitive process, an interpretative effort to draw a cogent meaning from or decode the meaning of this mark. Moreover, the applicant contended that the mark has originality and that there are no other references using this unusual syncopation. Lastly, the applicant contended that the verbal element ‘FUTURE-FACING’ is not an English term.

Conclusively, the applicant contended that the mark ‘FUTURE-FACING LAW’ is actually a distinctive, fanciful, play upon the English language which is clearly capable of being of being registered with the Office.

Office´s comments

The Office has taken note of the applicant´s contemplations about positioning statements, straplines, and slogans and the applicant´s contemplations whether the current sign at issue can be labelled as a slogan or not.

However, the Office maintains its position that the sign at issue, ‘FUTURE-FACING LAW’, is a laudatory slogan and/or a laudatory term which merely serves to highlight positive aspects of the services in question, namely that these legal services are prospectively directed and future-orientated as to future law and regulations.

With all respect, the Office cannot recognize any of the various characteristics which the applicant are raising as attributable to the sign at issue (originality, play on words, elements of conceptual intrigue or surprise, cognitive process, an interpretative effort to draw a cogent meaning from or decode the meaning of this mark, etc.). There is nothing unusual or surprising which may require an interpretative effort to deduct the meaning of the mark. The relevant public will straightforwardly in relation to the services at issue associate the mark as indicating that the services are prospectively orientated, thus taking into account future law and regulations.

Moreover, the Office has taken note of the applicant´s contention that the term ‘FUTURE-FACING’ is not an English term.

In that respect, the Office would like to draw the attention to the following results of an Internet-search on the same term, ‘FUTURE-FACING’ as follows:

https://www.forbes.com/forbes/welcome/?toURL=https://www.forbes.com/sites/tendayiviki/2017/08/08/the-10-characteristics-of-a-future-facing-company/&refURL=&referrer=#4f04a5a418b5

https://business.sprint.com/blog/five-characteristics-future-facing-organizations/

http://arrolawyers.com.au

Lastly, even the fact that the sign at issue may have several meanings or that it may be a play on words, inter alia, 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 278 921 is hereby rejected for all the services claimed under this application, namely:

Class 45 Legal services; legal research services; advocacy services; arbitration, mediation and conciliation and other dispute resolution services; security services for the protection of property and individuals; filing, prosecution, maintenance and management of intellectual and industrial property rights; patent and trade mark attorney services; professional consultation and advisory services relating to legal matters; title searching; company formation and registration services; advice, consultancy and information services relating to all of the aforesaid services.

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.

Finn PEDERSEN