Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 09/07/2018

Cooley (UK) LLP

Dashwood 69 Old Broad Street

London London, City of EC2M 1QS

REINO UNIDO

Application No:	017315111
Your reference:	324085-LOVEYOUR/NB
Trade mark:	LOVE YOUR LOOK. EVERY DAY.
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 21/02/2018 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 20/04/2018, which may be summarised as follows:

1. The term “LOVE YOUR LOOK. EVERY DAY.” is distinctive for the refused services. The combination of the words in the application mark is sufficiently distinctive for the refused services.

2. When assessing the distinctive character of the application mark, the examiner refers to the services in total without providing reasons for his objections for the refused services, contrary to the principles established by the Court of Justice.

3. The Office has accepted other conceptually similar marks for services similar to the refused services. Other English speaking offices have found “LOVE YOUR LOOK. EVERY DAY.” to possess sufficient distinctiveness to be admissible as a trade mark.

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.

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 stated in the notification, “LOVE YOUR LOOK. EVERY DAY.” will be understood by the relevant public as meaning “love your appearance or style/fashion every day”. As such it will be understood as a purely promotional laudatory statement, promoting the fact that the use of the applicant’s services (Personal shopping services for others; fashion consulting services; providing information concerning fashion; personal stylist services; personal styling services, namely evaluating the fashion styles of others and recommending clothing and accessories) will result in the consumer being able to “love his/her look every day”. The connection is obvious, very clear and very direct, and does not represent a minimum amount of distinctiveness as it only promotes the perceived result of using the applicant’s services. Moreover, the words “LOVE YOUR LOOK. EVERY DAY.” are just not distinctive for the marketplace of services relating to fashion, personal shopping and stylist services. One’s “look” is entirely relevant to these services.

Furthermore, even if the sign had as well some alternate meaning, 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84). As made clear, this is not the case with regards to the applied for sign.

With regards to the applicant’s argument that the Office has failed to explain why the mark applied for would be objectionable for all of the services, it should be stated that all of the objected to services pertain to Class 45 and are very similar in nature. Moreover, according to settled case-law, although the decision to refuse registration of a trade mark must, as a rule, state the reasons in respect of each of the goods or services concerned, the competent authority may, where the same ground for refusal is given for a category or group of goods or services, use only general reasoning for all the goods and services that are sufficiently directly and specifically connected, to the point that they comprise a category or group of goods of sufficient homogeneity (see judgment of 10 September 2015 in Laverana v OHIM (ORGANIC WITH PLANT FLUID FROM OUR OWN PRODUCTION), T 608/14, not published, EU:T:2015:621, paragraph 19 and the case-law cited).

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).

Moreover, ‘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 017315111 is hereby rejected for the following services:

Class 45 Personal shopping services for others; fashion consulting services; providing information concerning fashion; personal stylist services; personal styling services, namely evaluating the fashion styles of others and recommending clothing and accessories.

The application may proceed for the remaining 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.

Herbert JOHNSTON