Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/01/2018

Cooley (UK) LLP

Dashwood 69 Old Broad Street

London London, City of EC2M 1QS

REINO UNIDO

Application No:	017307315
Your reference:	324085-WEPREP/NB
Trade mark:	WE PREP. YOU COOK.
Mark type:	Word mark
Applicant:	Amazon Technologies, Inc. 410 Terry Ave N Seattle Washington WA 98109 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/10/2017 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 20/12/2017, which may be summarised as follows:

Specification amendment

The applicant requests a limitation to the original list of goods and services claimed. The new classification of services should now read as follows:

Class 35 Advertising services; business management; business administration services; providing office functions; retail store services and online retail store services in the field of fresh and prepared foods and dry goods, namely prepared food kits composed of meat, poultry, fish, seafood, fruit and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal, frozen, prepared, and packaged meals consisting of meat, poultry, fish, seafood, fruit and/or vegetables, fruit salads and vegetable salads, soups and preparations for making soups, frozen, prepared and packaged meals and food kits consisting primarily of grains, rice, noodles, pasta or bakery products; customer loyalty rewards program for shoppers; information, advisory and consultancy services relating to the aforesaid.

• The applicant argues that the sign ‘WE PREP. YOU COOK.’ possesses a minimum, sufficient degree of originality and resonance, distinctiveness in relation to such services.

• When assessing the distinctive character of the application mark, the examiner refers to the goods and services in total without providing reasons for his/her objections for each of the goods.

• The application is not merely a promotional, laudatory message but is capable of functioning as a trade mark indicating origin.

• The Office has already accepted other trademarks which include elements PREP and/or COOK and other similar marks for similar services.

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 waive the objection for the following services:

Class 35 Advertising services; business management; business administration services; providing office functions; customer loyalty rewards program for shoppers; information, advisory and consultancy services relating to the aforesaid.

The objection is maintained for the remaining services.

General remarks

Under Article 7(1)(b) EUTMR, ‘trademarks 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).

Applicant´s remarks

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

As regards the applicant’s arguments that the combination of the words in the application mark is unique and is sufficiently distinctive for all the goods and services applied for, the Office respectfully disagrees with this view. Indeed, the Office is convinced that the sign “WE PREP. YOU COOK.” as a whole would not be able to fulfil its principal function of commercial origin and submits that the relevant consumer would perceive the sign at issue as a promotional laudatory message. The relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed. 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/services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods/services from those of a different commercial origin.

(15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 84).

As regards the applicant’s arguments that the examiner, when assessing the distinctive character of the application mark, refers to the goods and services in total without providing specific reasons for the objection for each of the goods and services, it must be recalled that in its initial objection, the examiner took care to reference all the goods and services for which the objection was raised.

Furthermore, it should also be pointed out that the present decision does not require an individual assessment of each service and/or good as the applicant seems to claim. The practice used by the Office is also based on the judgment of the Court of First Instance of 2 April 2009 in ULTIMATE FIGHTING : it follows that where registration of a trade mark is sought, the Board of Appeal must verify in concreto that the mark in question does not fall within any of the grounds for refusal for registration laid down by Article 7(1) of Regulation No 40/94 with regard of each of those goods or services and may lead to different conclusions depending of the goods or services concerned (12/02/2004, C-363/99, Koninklijke KPN Nederland NV v Benelux-Merkenbureauvoir, EU: C2004: 86). The Board of Appeal, in refusing the registration of a trade mark, must, therefore, indicate in its decision the conclusion it reached in respect of each of the goods and services referred to in the application for registration independently of the manner in which the request was made. However, where the same ground for refusal is opposed for a category or group of goods or services, the competent authority may be limited to a general reasoning for all the goods or services concerned (15/02/2007, C-239 / 05, BVBA Management, Training in Consultancy, EU: C: 2007: 99 § 38).

As regards the applicant’s argument that the sign at issue is not merely a promotional, laudatory message but is capable of functioning as a trade mark indicating origin, the Office respectfully disagrees with applicant’s view. Indeed, as already been noted in our previous communication, the relevant consumer will understand the words “WE PREP. YOU COOK.” as a meaningful expression, i.e. we prepare the meal, so you can cook. Therefore, in the Office’s view the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed.

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 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).

Finally 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.

It remains the Office’s viewpoint that the expression applied for is made up of ordinary words, immediately understandable to any person. The meaning of the term

‘WE PREP. YOU COOK’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified services for which registration is being sought, namely that, as explained in the initial notification, retail of the prepared meals and food kits.

Consequently, the Office still maintains its position that the sign ‘WE PREP. YOU COOK’ among the relevant public simply will be seen as an indicator of qualities or positive aspects with the services in question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 017307315 is hereby rejected for the following services:

Class 35 Retail store services and online retail store services in the field of fresh and prepared foods and dry goods, namely prepared food kits composed of meat, poultry, fish, seafood, fruit and/or vegetables and also including sauces or seasonings, ready for cooking and assembly as a meal, frozen, prepared, and packaged meals consisting of meat, poultry, fish, seafood, fruit and/or vegetables, fruit salads and vegetable salads, soups and preparations for making soups, frozen, prepared and packaged meals and food kits consisting primarily of grains, rice, noodles, pasta or bakery products; information, advisory and consultancy services relating to the aforesaid.

The application may proceed for the remaining services.

According to Article 59 EUTMR, you have a right to appeal against this decision.

According to Article 60 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.

Selin GÜNEL