Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 12/06/2018

BIRD & BIRD LLP

Maximiliansplatz 22

D-80333 München

ALEMANIA

Application No:	017586124
Your reference:	FOSCO.0021/RDI/JAWB
Trade mark:	FORESTS FOR ALL FOREVER
Mark type:	Word mark
Applicant:	FOREST STEWARDSHIP COUNCIL, A.C. Calle Margarita Maza de Juarez 422 Oaxaca 68000 MÉXICO

The Office raised an objection on 201/12/2017 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 20/04/2018, which may be summarised as follows:

1. The contested EUTM application does not have any descriptive meaning in relation to the services for which it seeks protection.

2. The contested EUTM application ‘FORESTS FOR ALL FOREVER’ constitutes a play on words, has some particular originality and also uses linguistic and stylistic devices.

3. Consideration should be taken with previous acceptances by the EUIPO for identical or comparable marks for slogans (list provided).

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. The contested EUTM application does not have any descriptive meaning in relation to the services for which it seeks protection.

The Office reminds the applicant that the objection to the mark FORESTS FOR ALL FOREVER was raised under Article 7(1)(b) EUTMR because it is devoid of any distinctive character in relation to the services for which protection is sought. Therefore it is not a requirement of the Office to explain why the subject EUTM should be descriptive for specific services. The reasoning behind the objection is that the mark in relation to all the services applied for does meet a level of distinctiveness beyond the laudatory message conveyed as opposed to any directly descriptive meaning to such services.

2. The contested EUTM application ‘FORESTS FOR ALL FOREVER’ constitutes a play on words, has some particular originality and also uses linguistic and stylistic devices.

The Office notes that applicant’s detailed analysis of the linguistic structure of the mark. However, notwithstanding these elements, the Office does not agree that the mark in totality is sufficiently playful or distinctive to offset the purely promotional message conveyed.

The phrase FORESTS FOR ALL FOREVER is composed of a conventional structure that, despite the stylistic attributes mentioned by the applicant, sends a straightforward message as to the nature of the services. ‘FORESTS’ refers to the subject of the services, eg. forest management consultation, forest administration. ‘FOR ALL’, indicates everybody and ‘FOREVER’ is defined as ‘for all future time; for always’ or ‘continually’. Therefore the message in totality is that the services are for the management of forests for the enjoyment of everybody for all future time or continually.

Therefore the mark, notwithstanding certain stylised elements, sends a clearly promotional message in relation to the services claimed.

3. Consideration should be taken with previous acceptances by the EUIPO for identical or comparable marks for slogans (list provided).

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 017586124 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.

Lance EGGLETON