Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/10/2018

SILEX IP

Poeta Joan Maragall 9, Esc. Izq., 3º Izq.

E-28020 Madrid

ESPAÑA

Application No:	17 450 511
Your reference:	2017/FOAM-SAFE
Trade mark:	foam-safe
Mark type:	Figurative mark
Applicant:	ÖZERDEN PLASTIK SANAYI VE TICARET ANONIM SIRKETI Huzur Mahallesi, Ayazaga Cendere Caddesi, No: 8 Sisli, Kagithane - Istanbul TURQUÍA

The Office raised an objection on 21/12/2017 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 24/04/2018, which may be summarised as follows:

1. The expression is more than the sum of its parts and does not merely combine the possible meanings lent by the elements of which it is composed. The mark applied for consists of two English words that are not usually put together, so the result is a fanciful, original combination of words. The mark presents an unusual syntactic structure, forming a compound noun linked with a hyphen (which is not the usual way to express an idea in English, as indicated by the Office). Moreover, the expression that forms the mark applied for introduces elements of conceptual intrigue or surprise, so that it could be perceived as imaginative, surprising or unexpected.

2. The average consumer perceives the expression ‘Foam-Safe’ as merely a fanciful, invented term. In fact, the target consumer would perceive the mark as a whole and would not proceed to analyse its various details separately.

3. For the goods objected to in Classes 7 and 16, the mark applied for triggers a cognitive process in the minds of the relevant consumers or requires an interpretative effort. Firstly, it is unclear as to whether the consumer will split the expression ‘Foam-Safe’ into two words with the meaning given by the Office, as it is incorrect from a syntactic point of view and because both ‘foam’ and ‘safe’ have several possible meanings. Secondly, the consumer will have to make an effort to relate any of the possible meanings to the goods and, in doing so, they will consider the expression ‘Foam-Safe’ to be merely a fanciful, invented term.

4. The applicant argues that even if one of the dictionary meanings is applied, it seems unfeasible that the relevant public will make a sufficiently direct, immediate and specific association between the expression ‘Foam-Safe’ and the goods for which registration is sought. There is no direct or even obvious link between the mark applied for and the goods in question.

5. Rather than analyse the lack of distinctive character product by product or category by category the examiner, using the same argument, carried out a general analysis of all the goods taken as a whole, regardless of the different kinds of goods and sub-categories of goods.

6. A minimal degree of distinctiveness is sufficient for a mark to be accepted for publication; this is applicable in the present case. According to settled case-law such distinctiveness can be assessed only by reference first to the goods or services in respect of which registration is sought and second, to the relevant public’s perception of that sign.

7. The applicant refers to Court of Justice criteria, which should be used when assessing the distinctive character of a slogan or a promotional formula.

8. According to judgments of the General Court, in the light of the principles of equal treatment and sound administration, the EUIPO must take into account decisions already taken in respect of similar applications and must consider carefully whether or not it should decide in the same way. In this regard, the applicant refers to trade marks containing the same or analogous terms that it considers similar and analogous to the present trade mark applied for (EUTM No 10 012 748, FOAMmove, for goods in Classes 7, 16 and 17; EUTM No 1 487 172, WATERSAFE, accepted on the basis of the applicant’s arguments submitted in response to the provisional refusal due to absolute grounds; EUTM No 11 263 944, WINDSAFE; EUTM No 4 870 762, Water Safe; and EUTM No 13 130 919, COOLSAFE). In the applicant’s opinion, the decisions taken by the EUIPO must be governed by the principle of internal coherence. Otherwise, facing the same factual situation and without any change to relevant CJEU case-law, the EUIPO would take opposing and contradictory decisions, distorting the internal market and affecting competition by either granting or denying the registration of marks arbitrarily, and it would be difficult to explain why.

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 waive the objection for the following goods:

Class 7 Packaging machines, filling, plugging and sealing machines, bottling and capping machines, industrial printing machines, labelers, sorting machines, machines for dispensing pre-determined dosages of medication, industrial robots (machines) with the abovementioned functions, electric packing machines for plugging and sealing of plastics; pumps other than parts of machines or engines, electric pumps, pneumatic pumps, pressure tanks, water pumps for spas, baths, whirlpools, swimming pools, water filtering units, submersible pumps, pumps for cooling and heating installations, fuel dispensing pumps for service stations, self-regulating fuel pumps; air inflator for inflatable cellular cushioning, void fill and wrapping plastic material; machines for manufacturing packing material; machines for manufacturing packing material in the form of air and gas-filled protective plastic packing padding and plastic bags, pillow-like packing cushioning and stuffing materials of plastic, plastic bubble packs for packaging and packing cushioning and stuffing materials of plastic for filling voids in packaging containers; gas-injected machines for manufacturing packing material; inflating machines for manufacturing packing material; structural and replacement parts for the aforementioned machines.

The objection is maintained for the remaining goods, namely for:

Class 16 Paper and cardboard; paper and cardboard for packaging and wrapping purposes, cardboard boxes; plastic bubble packs for wrapping or packaging; carry bags of plastics, namely, plastic shopping bags, plastic trash bags, plastic lunch bags; bookbinding material, namely bookbinding tape, bookbinding wire, bookbinding, cloth for bookbinding, printing type, printing blocks; inflatable cellular cushioning made of paper or cardboard, wrapping plastic material.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 Office concurs with the case-law and the principles within cited by the applicant. However, it is not persuaded that when applying them to the present case, the trade mark applied for shows distinctiveness in terms of Article 7(1)(b) EUTMR in relation to the objected goods.

The applicant argues that the expression is more than the sum of its parts, it being two English words presented in an unusual syntactic structure, forming a compound noun connected by a hyphen. In addition, the expression that forms the mark applied for introduces elements of conceptual intrigue or surprise, which could be perceived as imaginative, surprising or unexpected and which will be perceived by the targeted consumers as a whole, without analysing its various details separately.

With regard to the abovementioned argument, while 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, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

In accordance with settled case-law of the Court of Justice, distinctive character within the meaning of Article 7(1)(b) EUTMR means that the trade mark applied for must serve to identify the goods or services for which registration is sought as originating from a particular undertaking, and thus distinguishing the goods or services from those of other undertakings (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33).

As the applicant also pointed out, in order to assess whether or not a trade mark has distinctive character, its overall impression must be considered. A minimum degree of distinctive character is sufficient to overcome a refusal based on the provision of Article 7(1)(b) EUTMR (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39). The distinctive character of a sign is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of its proprietor.

The Office cannot concur with the applicant’s argument that ‘Foam-Safe’ is an invented term showing distinctiveness and that the relevant consumers will, therefore, consider it a fanciful and distinctive indication of trade origin for the goods to which an objection has been made.

A sign must be refused registration under Article 7(1)(b) EUTMR 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; 27/06/2013, T‑248/11, Pure Power, EU:T:2013:333, § 28). According to the Collins English Dictionary definitions in the notice of ground for refusal, the word ‘foam’ means, inter alia, ‘any of a number of light cellular solids made by creating bubbles of gas in the liquid material and solidifying it: used as insulators and in packaging’ or ‘to cause to foam’, which have a direct link to the goods to which an objection has been raised, and the word ‘safe’ means ‘unable to do harm; not dangerous’.

The absolute grounds for refusal are to be assessed, firstly, in relation to the goods and services for which registration of the sign is sought and, secondly, in relation to the perception of the section of the public which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (27/02/2002, T‑219/00, Ellos, EU:T:2002:44, § 29; 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

In the present case, the goods for which protection is sought target general end consumers. As the sign is composed of English terms, its distinctive character must be assessed with respect to the English-speaking part of the public.

The sign for which protection is sought consists of the two English words ‘foam’ and ‘safe’, connected by a hyphen and both with upper case initial letters. Although the trade mark ‘Foam-Safe’ is not formed in accordance with English grammar rules, the Office maintains its opinion that the English-speaking public will readily understand it as merely a combination of the two elements, that is, goods made of foam that is safe for use, or goods that are designed, or intended, to cause foaming. Accordingly, ‘Foam-Safe’ will be understood by the consumer as a laudatory message promoting a desirable characteristic of the goods, namely guaranteeing safety and/or hygiene. The Office’s opinion is that the trade mark sends a basic message that any producer might convey to consumers.

The Office believes that the sign’s meaning is restricted to an indication that the goods are made of foam that is safe for use, or that they are goods designed, or intended, to cause foaming. It is, therefore, only a general expression promoting the purchase of those products. From the consumer’s viewpoint, this can apply to all suppliers, and therefore it cannot distinguish any supplier as the origin of the goods.

Under Article 7(1)(b) EUTMR there must also be an examination of how the public will perceive the sign for which registration is sought with respect to the sale or marketing of the goods.

The sign applied for as a whole has no additional element or graphic feature that would deviate from its mere promotional message. It is incapable of performing the essential function of a trade mark and does not enable the consumer of the goods in question to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20). To sum up, the public targeted will see the sign applied for as a general promotional message without regarding it as containing an indication of commercial origin which refers to a specific undertaking behind that indication.

The Office maintains its opinion that, although the sign for which protection is sought contains certain stylised elements such as slightly bold lettering and both words having initial capitals and being connected by a hyphen, it lacks distinctive character and cannot share the applicant’s argument that the EUTM application requires imagination, thought or perception for the public to reach a conclusion as to the exact nature of the goods to which an objection has been raised, even though it may trigger certain associations.

As regards the applicant’s argument that even if one of the dictionary meanings is applied it seems unfeasible that the relevant public will make a sufficiently direct, immediate and specific association between the expression ‘Foam-Safe’ and the goods for which registration is sought, it should be pointed out that a word mark is devoid of distinctive character when its semantic content indicates to the consumer a characteristic of the product or service relating to its market value that, while unspecific, comes from promotional or advertising information that the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the goods or services in question (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31; 12/03/2008, T‑128/07, Delivering the essentials of life, EU:T:2008:72, § 20; 06/06/2013, T‑126/12, Inspired by efficiency, EU:T:2013:303, § 25).

The Office acknowledges that the trade mark is not applied for as a word mark; however, it maintains its opinion that although the sign for which protection is sought contains certain stylised elements, these elements are so negligible in nature that they do not endow the trade mark as a whole with any distinctive character. Those elements do not possess any feature that allows the mark to fulfil its essential function in relation to the goods to which the objection has been raised. Consequently, the cited case-law will also apply in this case.

Taken as a whole, the meaning of the expression ‘Foam-Safe’ will be clear to English-speaking consumers, who will establish immediately and readily a direct and specific link between the mark and the goods to which an objection has been raised. It is, therefore, the Office’s view that ‘Foam-Safe’ will be easily understood in relation to the goods in Class 16 to which an objection has been raised.

There is nothing in the expression ‘Foam-Safe’ that might, beyond its obvious promotional meaning, enable the public to memorise it easily and instantly as a distinctive mark. The public cannot, without prior knowledge, perceive it other than in its promotional sense. The term for which protection is sought does not constitute a play on words and is not imaginative, surprising or unexpected. It is an ordinary advertising message that lacks the necessary originality and resonance to make it easy to remember (23/06/2011, R 1967/2010-2, INNOVATION FOR THE REAL WORLD, § 26).

The Office cannot concur with the applicant’s submission that the evocative and striking character of the expression and the presence of the fanciful arrangement and configuration of the words in the mark would enable the public to regard the sign as coming from a particular undertaking and not as a merely banal message.

The Office considers that the specific features of the trade mark applied for are unable to confer on it any particular originality or resonance or trigger in the minds of the relevant public a cognitive process, an interpretative effort or even an effort of reflection that could make that trade mark, in the perception of that public, anything other than a merely promotional formula extolling the qualities of the goods for which registration is sought (11/12/2012, T‑22/12, Qualität hat Zukunft, EU:T:2012:663, § 30).

The above findings do not contradict the relevant case-law on which the applicant relies. The Office stresses that the sign applied for is rejected not merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning.

Furthermore, regarding the applicant’s reference to previously registered marks, the EUIPO must exercise its powers in accordance with the general principles of European Union law. The principle of equal treatment must be applied in a way consistent with the principle of legality. For reasons of legal certainty and good administration, the examination of any trade mark application must be stringent and full to prevent improper registration.

Moreover, this examination must be undertaken in each individual case depending on the factual circumstances, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 50; 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73-77). Consequently, an applicant cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76, 77; 12/02/2009, C-39/08 & C-43/08, Volks. Handy, EU:C:2009:91, § 18).

Regarding the previous registrations referred to by the applicant, the Office acknowledges that it must strive for consistency and apply the same criteria to the examination of trade marks. However, the Office cannot be bound by previous decisions (27/03/2014, T‑554/12, Aava Mobile, EU:T:2014:158, § 65). Moreover, market practices, languages and registration practices evolve over time, and the marks cited, which may have been accepted on the basis that they were considered registrable at the time of application, may not be registrable nowadays. Consequently, the question of whether or not a sign is suitable for registration as an EUTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of the Office’s previous decision-making practice.

The Office is obliged to undertake its examination of trade marks based on the date of application, and it is therefore possible that, between the earlier registrations and the date of application, the market has developed in such a way that the mark, although previously capable of being registered, no longer is.

It is also important to recall that the examination of absolute grounds for refusal must be stringent and full (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59) and may not consist of just the mere repetition of comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality requires that, in all instances, the necessary decision be made if the legal requirements for it have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign for which registration is sought as an EUTM is composed in a manner identical/highly similar to that of a mark for which the Office has already approved its registration as an EUTM and which relates to goods or services identical or similar to those for which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

After analysing the previously registered trade marks cited by the applicant, the Office points out that EUTM No 10 012 748, FOAMmove, was registered in 2011, EUTM No 1 487 172, WATERSAFE, in 2001, and EUTM No 11 263 944, WINDSAFE, in 2013, and they cover goods different from those of the present application; EUTM No 4 870 762, Water Safe, was registered in 2007 for different goods and has now expired; and EUTM No 13 130 919, COOLSAFE, covers different classes and comprises a figurative element in addition to the verbal elements.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for figurative European Union trade mark No 17 450 511 ‘Foam-Safe’ is hereby rejected for the following goods:

Class 16 Paper and cardboard; paper and cardboard for packaging and wrapping purposes, cardboard boxes; plastic bubble packs for wrapping or packaging; carry bags of plastics, namely, plastic shopping bags, plastic trash bags, plastic lunch bags; bookbinding material, namely bookbinding tape, bookbinding wire, bookbinding, cloth for bookbinding, printing type, printing blocks; inflatable cellular cushioning made of paper or cardboard, wrapping plastic material.

The application may proceed for the remaining goods in Classes 07 and 16.

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.

Roxana PISLARU