Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 11/05/2018

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	017445917
Your reference:	T35454EM-SJW/MPB/cxc
Trade mark:	IT'S WORTH THE WAIT
Mark type:	Word mark
Applicant:	Eden Creamery LLC 4470 W Sunset Blvd #90182 Los Angeles California 90027 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 15/11/2017 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 13/03/2018, which may be summarised as follows:

1. It is submitted that it is fundamentally wrong to assume that a slogan cannot perform the essential function of a trade mark. Slogans are an essential part of modern industry and commerce.

2. The mark in question is a hinted reference to the tantalisation and feelings associated with the anticipation of the taste of the goods when being made to wait first. This is several steps away from being directly descriptive of ice cream goods or anything else in the specification. It does not directly describe the qualities which would be associated with ice cream.

3. Several steps are required by the relevant public to interpret the mark and come to a conclusion about the meaning. The mark is ambiguous, not easily discernible and leads itself to multiple meanings. Furthermore the mark is oxymoronic in nature given that ice cream must be eaten quickly – therefore IT’S WORTH THE WAIT is counter-intuitive in relation to the goods.

4. The applicant presents a number of slogan marks that have been accepted by both the EUIPO and UKIPO.

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

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).

Specific remarks concerning the observations of the applicant

1. It is submitted that it is fundamentally wrong to assume that a slogan cannot perform the essential function of a trade mark. Slogans are an essential part of modern industry and commerce.

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.

2. The mark in question is a hinted reference to the tantalisation and feelings associated with the anticipation of the taste of the goods when being made to wait first. This is several steps away from being directly descriptive of ice cream goods or anything else in the specification. It does not directly describe the qualities which would be associated with ice cream.

The Office reminds the applicant that the objection to the mark IT’S WORTH THE WAIT was raised under Article 7(1)(b) EUTMR and is therefore objectionable on grounds of non-distinctiveness.

Even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, it would still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin.

An objection under Article 7(1)(b) EUTMR would 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. This was the case of the combination ‘ECO PRO’, where the laudatory element PRO is placed after the descriptive element ECO and which would be perceived by the relevant public as an indication that the designated goods are intended for ‘ecological professionals’ or are ‘ecological supporting’ (judgment of 25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 29-32).

The Office finds this to be the case with the mark in question, being a commercial incitement for the consumer to believe the product is worth anticipating and also communicating a quality statement, being that the products are of such quality it was indeed worth the wait.

3. Several steps are required by the relevant public to interpret the mark and come to a conclusion about the meaning. The mark is ambiguous, not easily discernible and leads itself to multiple meanings. Furthermore the mark is oxymoronic in nature given that ice cream must be eaten quickly – therefore IT’S WORTH THE WAIT is counter-intuitive in relation to the goods.

The Office disagrees with this argument and asserts that the mark IT’S WORTH THE WAIT would be perceived as a mere advertising message extolling the qualities of the goods in question. The mark is not composed of unusual syntactic structure or uses linguistic or stylistic devices that would render it memorable. Furthermore it could not be said to have some particular originality or resonance beyond its function as an incitement to enjoy the product.

With regard to the oxymoronic nature of the phrase it is highly unlikely that the consumer would analyse the mark to this extent or pay particular attention to any kind of contradictory message. The goods are not a highly considered purchase and any attention paid to the phrase would not go beyond the guarantee that the product is worth buying.

Furthermore, 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 goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

4. The applicant presents a number of slogan marks that have been accepted by both the EUIPO and UKIPO.

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).

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 017445917 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.

Lance EGGLETON