Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/05/2018

LICHTENSTEIN, KÖRNER & PARTNER mbB

Heidehofstr. 9

D-70184 Stuttgart

ALEMANIA

Application No:	017445214
Your reference:	SA-17/01127fk/ma
Trade mark:	Built on Relationships. Focused on Solutions.
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 23/11/2017 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 17/01/2018, which may be summarised as follows:

1. The sign applied for is an imaginative slogan possessing a sufficient degree of distinctiveness.

2. According to the applicant the slogan at issue, ‘Built on Relationships. Focused on Solutions.’ triggers in the mind of the relevant consumers a cognitive process.

3. The applicant invokes earlier EUIPO registrations of slogans containing the expression ‘BUILT ON’.

4. The sign ‘Built on Relationships. Focused on Solutions.’ enjoys protection in the United States of America (registration No. 4799223).

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 sign applied for is an imaginative slogan possessing a sufficient degree of distinctiveness.

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.

Absolute grounds for refusal of a trade mark are examined based on a perception of the relevant consumer of the goods or services claimed, who is reasonably well‑informed and reasonably observant and circumspect.

In the present case, as already pointed out in the Office’s notice of 23/11/2017 of absolute grounds for refusal, the relevant public, when confronted with the sign ‘Built on Relationships. Focused on Solutions.’ in the context of property and casualty insurance services in class 36, will understand that the service providers value good relationships with their customers and that the services are rendered with a results-oriented approach.

Therefore, the sign does not convey any message indicating commercial origin of the services at issue, but merely serves to transmit a customer service statement and a message on the organisational culture focused on customer relationships and business approach of the provider of the services.

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)¹.

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 ‘Built on Relationships. Focused on Solutions.’ 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 highlighting the customer-focused approach of the service provider and its dedication to deliver solutions to their customers’ needs.

The applicant claims that it does not appear from the slogan what ‘built’ refers to. According to the established case-law and the Office’s practice, an objection under Article 7(1)(b) EUTMR will also apply in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered to be common in advertising language and in the commercial context at issue.²

It should be pointed out that ellipsis is commonly used advertising in situations where words are superfluous and will be understood from the context. Therefore, an omission of the subject or any other part of the sentence in an advertising slogan does not necessarily add distinctiveness to the sign (see judgments of 29/01/2015, T-59/14, ‘INVESTING FOR A NEW WORLD’, of 23/01/2014, T‑68/13, ‘CARE TO CARE’, of 12/12/2014, T‑601/13, ‘PIONEERING FOR YOU’).

In view of the above, the Office considers that the word combination ‘Built on Relationships. Focused on Solutions.’ will not enable the relevant public to distinguish the services covered by the application from those of a different commercial origin (see, to that effect, judgment C‑304/06 P, ‘Eurohypo’ paragraph 69). The mark at issue transmits a simple message that could be attributed to any producer or service provider and, due to that, does not indicate the origin of the services.

Due to the impression produced by the mark in connection with the relevant services, 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 services beyond the strictly promotional information conveyed.

Contrary to the applicant’s contentions, in the present case, the required minimum degree of distinctive character could not be established due to the reasons stated above. It follows that the sign is unable to fulfil the essential function of a trade mark, that is to identify the services as originating from a particular undertaking.

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).

2. According to the applicant the slogan at issue, ‘Built on Relationships. Focused on Solutions.’ triggers in the mind of the relevant consumers a cognitive process.

With regard to this argument it should be pointed out that the distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

Therefore, it should not be regarded how the relevant public will perceive the mark at issue in abstract, on its own. It is important to establish how the relevant consumers will understand the sign in the context of the services offered under the brand in question.

The relevant public will understand the sign ’Built on Relationships. Focused on Solutions.’ taken as a whole, in the context of property and casualty insurance services in class 36, as a customer service statement highlighting the customer-focused approach of the service provider and its dedication to deliver solutions to the customers’ needs. No special analytical effort is needed on the side of the relevant consumer to establish the above meaning.

Developing a healthy relationship with customers is crucial to the success of any company. In a competitive marketplace, the relationships with clients can be key differentiators in comparison with the competition. Moreover, goal orientation and dedication to deliver solutions to customers’ needs are desired qualities of any service provider. In this light, it is concluded that the interpretation of the sign in the context of the services 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 sign ‘Built on Relationships. Focused on Solutions.’ conveys a straightforward promotional customer service statement.

Contrary to the applicant’s contentions, the Office considers that the meaning of the slogan applied for is clear. In fact, the customer service slogan in question is not registrable not only for the services applied for in class 36, but would be refused registration for any services.

The mark ’Built on Relationships. Focused on Solutions.’ will be perceived by the relevant professional public primarily as a promotional slogan, based on its inherent meaning, rather than as a trade mark (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’,paragraphs 29 and 30).

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

3. The applicant invokes earlier EUIPO registrations of slogans containing the expression ‘BUILT ON’.

With regard to the above argument, 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).

Nevertheless, and 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 for them to be dismissed as arguments in favour of the registration of the present sign.

Moreover, the applicant relies on registrations granted by the Office in 2006 and 2007. In this regard it must be noted that the market reality, case-law and the Office’s practice evolve over time. The Office, in order to support its position, would like to point out more recent decisions on  advertising slogans conveying customer service statements, which were refused registration:

- decision of 26/05/2009, EUTMA 007394414, ‘WE PUT YOU FIRST. AND KEEP YOU AHEAD’ for class 40;

- decision of 03/07/2008, R 1608/2007-4, ‘MORE THAN JUST A CARD’ for class 36;

- decision of 19/12/2008, R 1198/2008-4, SAVE OUR EARTH NOW’ for classes 3, 17, 18, 20, 22, 24, 25 and 28.

4. The sign Built on Relationships. Focused on Solutions.’ enjoys protection in the United States of America (registration No. 4799223).

As regards the national decision 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 017445214 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.

Anna MAKOWSKA

Attachment: Notice of 23/11/2017 of absolute grounds for refusal