Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 23/10/2018

CLARKE WILLMOTT

Burlington House, Botleigh Grange Business Park, Hedge End,

Southampton, Hampshire SO30 2AF

REINO UNIDO

Application No:	017374919
Your reference:	00358314.00236
Trade mark:	NO JUNK PROMISE
Mark type:	Figurative mark
Applicant:	Organix Brands Limited 120-122 Commercial Road Bournemouth, Dorset BH2 5LT REINO UNIDO

The Office raised an objection on 02/11/2017 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.

The applicant submitted its observations on 12/03/2018, which may be summarised as follows:

1. The mark is inherently distinctive.

2. The word ‘junk’ has different meanings than the one referred to by the Office.

3. The consumers will need a cognitive process to understand the word.

4. The mark is not used by other companies.

5. The Office has registered similar marks in the past.

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).

The mark is inherently distinctive.

The applicant holds that the mark in question is inherently distinctive. The applicant argues that although the mark is made of ordinary English words, their combination is unusual, original and does have some resonance.

The Office however does not find this reasoning convincing. The mark is simply composed of a phrase which will not be deemed as a trade mark by the English speaking part of the public. It will simply be perceived as a label with a simple slogan, a commitment by the part of the producer of the goods that they don’t contain ‘junk’. The simple green background does not add any distinctiveness to the mark.

The meaning of the word combination ‘No Junk Promise’ is clear and unequivocal, for the English speaking public to understand.

The word ‘junk’ has different meanings than the one referred to by the Office.

The applicant argues that the word ‘junk’ has more than one meaning.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The fact that the word ‘junk’ has other meanings has no bearing on the findings of the Office. The meaning of the phrase ‘No junk promise’ is clear and is well understood by the English speaking public in the EU.

The consumers will need a cognitive process to understand the word.

The applicant holds that consumers will need a cognitive process to understand the meaning of the word, and thus the mark needs to be interpreted by the relevant public. The Office however deems these arguments to be unconvincing. There is nothing which can be considered to be ambiguous or a play on words. The mark is perfectly understandable by the English speaking part of the relevant public.

The mark will be simply seen as a label which states that the producer of the goods promises that the contents of the goods are not junk products, but genuine and clean. This promise or commitment is rather common in the advertising industry and therefore will not be seen as a trade mark.

The mark is not used by other companies.

The applicant holds that the mark is not being used by third parties. Therefore the applicant holds that the relevant public will perceive the mark as a badge of origin. The applicant holds that there is no third party which makes the same guarantees to its consumers.

The Office finds the arguments of the applicant unconvincing. It is a relatively common practice on the market, especially in the food market for companies to offer and promise consumers goods which are natural and do not contain additives. With the proliferation of foods which contain taste enhancers, preservatives and additives, awareness and demand grew for organic food, and food which does not contain these additives. Food and beverages with preservatives and additives are widely considered as junk. Junk food/drinks are considered to be unhealthy, on the other hand organic food/drinks are believed to be a much healthier alternative.

With this scenario in mind, food producers strive to offer natural and organic products. Promises and commitments on the part of producers that their products are free from artificial colouring and conservatives and are junk free, are a common place. Therefore, the commitment on the part of the applicant to offer such things is a commonplace on the market.

It is therefore, fairly obvious that consumers will not perceive the mark as a trade mark, but rather as a simple mark or a badge denoting that the products are junk free. Consumers are used to see such elements on packaging and products.

The Office has registered similar marks in the past.

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).

In this regard the Office notes that the examples cited by the applicant bear no resemblance to the case at hand. The EUIPO register obviously has a large amount of figurative marks registered, however the Office refutes the claim of the applicant that the mark are descriptive and non-distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 374 919 - 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.

Alistair BUGEJA