Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 05/04/2018

LICHTENSTEIN, KÖRNER & PARTNER mbB

Heidehofstr. 9

D-70184 Stuttgart

ALEMANIA

Application No:	017444605
Your reference:	SA-17/01128ma
Trade mark:	Automatic Insurance
Mark type:	Word mark
Applicant:	Great American Insurance Company Great American Tower 15S, 301 East 4th Street Cincinnati Ohio 45202 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/11/2017 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 17/01/2017, which may be summarised as follows:

1. Criteria to determine the distinctive character of a slogan.

2. Dictionary definitions of the sign; the mark possesses a certain originality and sets off a cognitive process in the minds of the consumers. It has nothing to do with insurance services. Even if the sign applied for could be understood in the way cited by EUIPO (‘insurance acquired automatically’), such understanding would require interpretation, as ‘automatic insurance’ leaves it unclear what automatic refers to.

3. Distinctiveness must be assessed by reference to the goods and services of which registration is sought. The sign requires interpretation in relation to the services.

4. Previous registrations at EUIPO of identical or similar marks.

5. Previous registrations at USPTO.

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 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).

1. Criteria to determine the distinctive character of a slogan.

The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (judgment of 12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460 and case-law cited). Advertising slogans are objectionable under Article 7(1) (b) EUTMR when the relevant public perceives them as a mere promotional formula. However, they are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question.

A slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is also likely to be distinctive since consumers would not be able to establish a clear and direct link with the goods and services for which the trade mark is protected.

Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (judgments of 29/01/2015, T-609/13, SO WHAT DO I DO WITH MY MONEY, EU:T:2015:688, § 27; T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27 and cited case-law).

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T 87/00, Easybank, EU:T:2001:119, § 39). In the present case, the mark for the relevant consumer would have a direct meaning, an insurance that can be obtained instantly or through a very fast and easy procedure.

Taking into account the services applied in Class 36, the most obvious idea that comes to mind is that the services contain certain quality or advantage, the expedite and/or simply way in acquiring the insurance. Therefore, the sign would only be understood as a promotional or laudatory slogan devoid of any distinctive character.

2. Dictionary definitions of the sign; the mark possesses a certain originality and sets off a cognitive process in the minds of the consumers. It has nothing to do with insurance services. Even if the sign applied for could be understood in the way cited by EUIPO (‘insurance acquired automatically’), such understanding would require interpretation, as ‘automatic insurance’ leaves it unclear what automatic refers to.

The fact that the sign at issue may be imaginative, with certain originality setting off a cognitive process in the minds of the consumers, as mentioned by the applicant, 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).

Furthermore, the fact that the mark at issue can have several meanings does not render it distinctive. A sign must therefore be refused registration 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 mark does not create a new and distinctive idea of the meaning of the mark. In fact, metaphors and exaggerations about goods and services are commonly used in the marketing sector, and the public is used to see them as a kind of qualifiers of the words that follows the laudatory expressions.

The term ‘automatic’ was defined in the notification of 21/11/2017 as ‘instant or without difficulties’, adjective that is applicable to all the services applied for. Moreover, it is commonly known by the relevant consumers that insurances are automatically renewed unless officially rejected; consequently, there is nothing imaginative or original in the combination applied for ‘Automatic Insurance’ even if it refers to the first acquisition or the renewal of an insurance. Therefore, contrary to the applicant’s assertion, there is nothing imaginative or original in the mark that may lead consumers to make a considerable mental effort to understand the meaning in relation to the goods and services at issue.

3. Distinctiveness must be assessed by reference to the goods and services of which registration is sought. The sign requires interpretation in relation to the services.

In the present case, the mark ‘Automatic Insurance’ for property and casualty insurance services is obviously not sufficiently far removed to require an interpretation in relation to the services applied for. There is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as a grammatical analysis, before they would understand the meaning of the mark ‘Automatic Insurance’ in relation to the insurance services in question. Consequently, even if the expression ‘Automatic Insurance’ was grammatically or linguistically incorrect and could be considered novel – which is not the case – all the elements composing the mark would be understood by the relevant public.

4. Previous registrations at EUIPO of identical or similar marks.

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).

The applicant points out the case of registered EUTM No 005273347 ‘Automatic Supply’ in Class 41 and the case EUTM No 011793387 ‘Automatic’ in Class 9. Concerning the first one, probably the Office considered back in 2007 that the link between the mark and the goods and services applied for is not obvious and therefore with the minimum accepted degree of distinctiveness. As concerns the second one, the link between the mark and the goods is sufficiently far removed to work as a trade mark, in effect, protective reinforcements for shoulders and elbows, knees and other parts of the body, do not seem to have much in common with ‘automatic’.

5. Previous registrations at USPTO.

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 444 605 is hereby rejected for all the services 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.

Jesús ROMERO FERNÁNDEZ