Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 24/07/2018

WHITE & CASE LLP

5 Old Broad Street

London EC2N 1DW

REINO UNIDO

Application No:	017514712
Your reference:	MLC/T2052
Trade mark:	FOREIGN AFFAIRS
Mark type:	Word mark
Applicant:	Council on Foreign Relations, Inc. 58 East 68th Street New York 10065 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 04/12/2017, pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

2. After a four-month extension, the applicant submitted its observations on 04/04/2018 and 01/06/2018 which may be summarised as follows:

The applicant makes a primary claim that the mark has acquired distinctiveness.

In support of its claim the applicant provided Witness Statements from Mia Higgins, the General Counsel for the Council on Foreign Relations Inc. (the applicant), David Miliband, the President and CEO of the International Rescue Committee (IRC), and Carl Bildt, Prime Minister of Sweden from 1991 to 1994, and Foreign Minister of Sweden from 2006 to 2014.

In her Witness Statement Mia Higgins states that:

The first issue of FOREIGN AFFAIRS was issued in September 1922. Since its first issue, contributors to FOREIGN AFFAIRS have included the top minds in the field from around the world.

From its early day, FOREIGN AFFAIRS was, and still is, known throughout Europe as one of the most influential foreign policy magazines in the world. It is in the forefront of serious discussion of the world and of the role of the United States in it.

Important European academics, public officials and policy leaders have appeared in the magazine’s pages throughout its history. An excerpt from a 1950s issue is provided in Exhibit 1.

FOREIGN AFFAIRS continues to focus on European issues, and regularly publishes contributions from the European Union (Exhibit 2). In the past five years FOREIGN AFFAIRS had over 250 contributors from the European Union (Exhibit 3).

There are subscribers in almost all EU member states Currently FOREIGN AFFAIRS has 12,494 individual and institutional subscribers across the European Union. Single issues of FOREIGN AFFAIRS are sold in retail outlets throughout the European Union. A list of current retailers is provided in Exhibit 5.

The applicant organizes events, conferences, and podcasts in which global leaders under the brand FOREIGN AFFAIRS, business executives and prominent thinkers discuss pressing international issues. Among others, an on the Road events were held between 31 January and 7 February 2018 in Berlin, London, Paris and Brussels. These events attract approximately 2,000 attendees per year. Examples are given in Exhibit 6 - Exhibit 9.

A Facebook campaign was launched in conjunction with the European tour of 2018 in the UK and Germany. The paid posts in the campaign yielded 172,945 impressions with a reach of 93,993 people.

The applicant’s website www.foreignaffairs.com receives millions of unique visitors per year, with a considerable number of the visitors from the European Union. In 2017, over 1.5 million visitors to the web site were from EU member countries, that is, nearly a quarter of the total visitors. Exhibit 10 shows website traffic for the EU countries from 2015 to the present time.

Exhibit 11 shows the number of downloads of the FOREIGN AFFAIRS app in the EU per country since January 2016.The total downloads in the EU accounts for almost 20% of the total downloads from January 2016 to the present time.

FOREIGN AFFAIRS earns an annual gross revenue of approximately nine million dollars worldwide, with approximately six million dollars coming from the sale of subscriptions, one million coming from newsstand sales, and one million four hundred thousand dollars coming from the sale of advertisements appearing in print and on the web site. The applicant does not invest in advertising which is indicative of how well-known and highly regarded FOREIGN AFFAIRS is around the world.

In his Witness statement, David Miliband states that:

Based on his years of experience in public service and work in the international arena, he is very familiar with the renowned publication FOREIGN AFFAIRS. It is recognised as a highly influential journal in the UK and throughout Europe. FOREIGN AFFAIRS has a long history of in-depth articles and essays of import to Europeans, and its digital resources and events match the quality of the print magazine.

In his Witness Statement Carl Bildt states that:

He has long been a reader of FOREIGN AFFAIRS, and has also contributed with essays to the magazine.

FOREIGN AFFIRS is respected in diplomatic circles in Europe, and is a recognized brand in Europe, and the applicant is widely known as the source of the high quality publications and events bearing the FOREIGN AFFAIRS name.

3. Pursuant to Article 75 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.

The applicant claimed that the mark has acquired distinctiveness and did not provide any arguments regarding the mark’s inherent distinctiveness. Therefore, the Office will now examine the proof of use submitted.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The relevant consumers are English-speaking average consumers and professionals in the fields of foreign policy, politics and economics. As English is the international language within those fields, the territory in question is the whole European Union.

When assessing in a particular case whether distinctive character has been acquired through use, account must be taken of factors such as, inter alia, the market share held by the mark, the intensity, geographical scope and duration of the use of the mark and the amount invested by the undertaking in promoting the mark. Proof that distinctive character has been acquired may, in particular, be found in statements made by chambers of commerce and industry or other trade and professional associations or in the results of surveys (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 56-59).

The term ‘FOREIGN AFFAIRS’ is totally descriptive of the subject matter of the goods and services in question, and therefore the applicant will have to show substantial use of the mark within the European Union.

The applicant provides the total worldwide annual gross revenue (9 million dollars), but does not provide any separate sales figures for the European Union, and its individual Member States. Also, it is unclear for which year/s the sales figure relates.

The applicant states that the number of subscribers in the European Union is 12,494, many of whom are institutional subscribers. This number is very low. The Office understands that the institutional subscribers have multi-user access which means that the number of readers are many more, but it is impossible to know how many they are. Also, the applicant did not provide the number of subscriptions for each Member State. The number of subscribers could very well be concentrated to a few territories.

The applicant states that single issues of the magazine are sold in retail outlets throughout the European Union, and provides lists of those retail outlets. However, the applicant did not provide the number of issues actually sold through the retail outlets.

As for the web site traffic figures provided in Exhibit 10, it shows that the most traffic come from the UK, and Germany. These are also the countries where the app has been downloaded most (Exhibit 11).

The sales/subscriptions seem to have been low to moderate. Also, no market share figures were provided. In any case, high sales, a lot of web traffic, and the organization of events and conferences in the name of FOREIGN AFFAIRS would not by themselves mean or show that the relevant public sees the mark an indication of commercial origin.

As regards the Witness Statements by David Miliband and Carl Bildt, they cannot be given much weight See the decision of 15 May 2006, R 1409/2005-2, three dimensional mark, § 15:

…However, the Board must be more cautious in accepting unsupported assertions that concern not commercial facts, but opinions on the distinctiveness of trade marks, even if those opinions are made by respected individuals in the field of interest to the applicant. In particular, the witness statements provided by the owners of automobile product distributors make sweeping assertions about the contested mark, claiming that the mark is ‘distinctive’, and that the ‘coloured paint strainer serves as a source identifier’. While these viewpoints must be taken seriously, on their own they do not answer the question as to whether the mark has any degree of distinctiveness for the goods.

It is noted that the applicant has presented no evidence of a more independent nature, such as statements from trade associations and competitors or market surveys. Generally, there is a lack of evidence that focuses on the perception of the relevant public.

The Office finds that all in all, the evidence provided does not back up the applicant’s claim that the mark has acquired distinctiveness among the relevant English-speaking public.

Therefore, in an overall assessment, the Office cannot but conclude that the evidence presented is insufficient in order to demonstrate that, in the eyes of the relevant public, the mark FOREIGN AFFAIRS has become distinctive in relation to the goods and services sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) EUTMR has not been proven.

4. For the abovementioned reasons and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 514 712 is hereby rejected for all the goods and 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.

Anne-Lee KRISTENSEN