Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 03/04/2018

Properta Asianajotoimisto Oy

Unioninkatu 7 B 17

FI-00130 Helsinki

FINLANDIA

Application No:	017335407
Your reference:	10121008
Trade mark:	DAIRY-FREE. AS IT SHOULD BE.
Mark type:	Word mark
Applicant:	Ripple Foods, PBC 940 Rose Ave Piedmont California 94611 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/10/2017 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.

Due to a classification deficiency notified to the applicant on 13/10/2017, the list of goods and services was amended on 20/11/2017 by transferring the term ‘Protein drinks for use as food fillers and not for use as meal fillers’ from class 29 to class 5. Moreover, the term ‘Non-alcoholic plant-based beverages composed primarily of plant proteins, fats and carbohydrates.’ was transferred from class 29 to class 32.

The above amendment did not affect the objection on absolute grounds for refusal.

The applicant submitted its observations on 21/12/2017, which may be summarised as follows.

1. The mark exceeds the minimum degree of distinctiveness required by Article 7(1)(b) EUTMR, in particular due to the rhythm of the expression.

2. The sign is not immediately descriptive for the goods as it requires a certain conceptual analysis from the consumer in order to establish a link between the sign and the goods applied for.

3. The mark applied for should be assessed as a whole. This applies to trade marks made up of several components.

4. Previously the Office granted registration to a number of similar marks containing such words as ‘FREE’, ‘DAIRY’.

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. The mark exceeds the minimum degree of distinctiveness required by Article 7(1)(b) EUTMR, in particular due to the rhythm and rhyme of the expression.

Absolute grounds for refusal of a trade mark are assessed 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 with the applicant 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.

In the present case, as already pointed out in the Office’s notice of 31/10/2017 of absolute grounds for refusal, the relevant public, when confronted with the sign ‘DAIRY-FREE. AS IT SHOULD BE.’ in the context of milk substitutes and non‑alcoholic plant-based beverages in class 29, and various beverages and drinks in class 32, will understand that the above goods do not contain milk or milk products and they are most suitable.

Therefore, the sign does not convey any message indicating commercial origin of the goods at issue, but merely serves to highlight positive aspects of the goods in question, namely that they are most suitable as they do not contain dairy, or, that they are non‑dairy goods and referring to dairy-free products are the most appropriate.

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 ‘DAIRY-FREE. AS IT SHOULD BE.’ is composed of commonplace words which are constructed by means of a grammatically and syntactically correct structure of the English language. 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 straightforward expression: not containing milk products, optimum, most desirable.

The Office agrees with the applicant that there is certain rhythm in the expression and, moreover, the last part of the slogan rhymes with the first part. However, it should be pointed out that, while, according to the assessment criteria of slogans, rhyme may contribute towards a finding of distinctiveness¹, it does not guarantee that the mark will be found distinctive.

The fact that the two parts of the expression at issue, i.e. ‘DAIRY-FREE’ and ‘AS IT SHOULD BE.’, are separated by a full stop instead of a comma does not confer distinctive character on the sign. This is because advertising slogan 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).

Moreover, contrary to the applicant’s contention, the interpretation of the sign in the context of the goods covered by the application does not require a considerable mental effort of the relevant consumers nor can it be considered a play on words. The message contained in the ‘DAIRY-FREE. AS IT SHOULD BE.’ conveys a direct message regarding characteristics of the goods offered and inspiring consumers to purchase or consume dairy-free products as appropriate and recommended for them.

It follows that the relevant public will not be able to distinguish, without any possibility of confusion, the goods 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).

The relevant consumers will not perceive any particular indication of commercial origin in the sign ‘DAIRY-FREE. AS IT SHOULD BE.’ beyond the promotional information contained therein.

2. The sign is not immediately descriptive for the goods as it requires a certain conceptual analysis from the consumer in order to establish a link between the sign and the goods applied for.

With regards 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 claimed, and as a result falls within the scope of Article 7(1)(c) EUTMR.

As explained in point 1. above, due to the impression produced by the mark in connection with the relevant goods, the mark 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 beyond the promotional information conveyed.

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).

The sign for which protection is sought, ‘DAIRY-FREE. AS IT SHOULD BE.’, will simply be seen in the relevant market sector as a promotional slogan, the function of which is to communicate an inspirational or motivational statement, encouraging one to purchase non-dairy products as recommended ones. 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 positive aspects of the goods in question, namely that they are most suitable as they do not contain dairy (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; and 12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

3. The mark applied for should be assessed as a whole. This applies to trade marks made up of several components.

The Office agrees with the above argument.

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, that is not incompatible with an examination of each of the mark's individual components in turn (judgment of 19/09/2001, T-118/00, ‘square tablet, white with green speckles and pale green’, paragraph 59).

Moreover, it should be noted that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51).

The Office considers that it correctly assessed the trade mark and sufficiently justified the objection raised according to the above considerations, the Office’s practice and Guidelines for Examination in the Office².

The Office stresses that the sign applied for is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous promotional meaning. The case law concerning such slogans cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2, ‘INNOVATION FOR THE REAL WORLD’, paragraph 27).

4. Previously the Office granted registration to a number of similar marks containing such words as ‘FREE’, ‘DAIRY’.

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).

It should be pointed out that it is established case law and practice that each case is examined on its own merits and that the Office is in no way bound by previous decisions.

Moreover, by way of clarification, in order for previous registrations to be considered analogous to the present case, it is not enough to simply show that they contain either one, or both, of the component parts of the sign applied for, because the sign has been objected to when viewed as a whole and not because of the meanings of its individual component parts. The previous registrations cited by the applicant are all sufficiently dissimilar to the present application to dismiss them as arguments in favour of the registration of the present sign.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 017335407 is hereby rejected for all the goods claimed.

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.

Anna MAKOWSKA

Attachment: Notice of 31/10/2017 of absolute grounds for refusal