Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 17/04/2018

PLOUGMANN VINGTOFT A/S

Rued Langgaards Vej 8

DK-2300 Copenhagen S

DINAMARCA

Application No:	017626706
Your reference:	T63381EU01
Trade mark:	POSTURE SHIRT
Mark type:	Word mark
Applicant:	Alignmed, Inc. 1936 East Deere Avenue, Suite 115 Santa Ana California 92705 ESTADOS UNIDOS (DE AMÉRICA)

The applicant replied to the Office’s objection in English. The Office therefore assumes that the applicant wishes to change the language of communication to English.

The Office raised an objection on 05/01/2018 pursuant to Article 7(1)(b) and (c) 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.

The applicant submitted its observations on 16/02/2018, which may be summarised as follows.

1. The relevant consumers are English-speaking consumers. Consumers in non‑native-English-speaking countries would not perceive the trade mark as descriptive and non-distinctive.

2. The trade mark is not descriptive but distinctive.

3. The word combination ‘Posture Shirt’ is not commonly used in the market.

4. The trade mark is a neologism.

5. Words often used in marketing do not lack distinctiveness.

6. The trade mark has previously been registered in the USA.

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.

Descriptiveness and non-distinctiveness

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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

Relevant consumers

The applicant argues that the relevant consumers are well-informed English-speaking consumers, namely consumers in the United Kingdom and Ireland. The word ‘posture’ is not a commonly known English word in other EU Member States and will not be perceived as providing information on the characteristics of the goods in those Member States.

The Office concurs with the applicant’s argument that the relevant consumers are average English-speaking consumers who are well-informed. However, according to the Office’s Guidelines, English is an official language in Ireland, Malta and the United Kingdom (¹).

It is correct that in some circumstances the meanings of only elementary understandable English words would be taken into account in the assessment of the trade mark in relation to the language areas where English is not an official language (²). However, the Office has not claimed that the trade mark would be understood by non-native-English-speaking consumers. How non-native-English-speaking consumers would translate the English word ‘posture’ into their national languages is therefore irrelevant. The Office used the expression ‘kropsholdnings (³) bluse’ (Danish) in its objection letter because the letter was drafted in Danish and the Office therefore used Danish words to describe how English-speaking consumers would perceive the mark. The Office did not touch on other non-English-speaking consumers’ perception of the trade mark.

Word definitions

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

‘The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The reference base is the ordinary understanding of the relevant public of the word in question. This can be established using dictionary entries and examples of the use of the word in a descriptive manner from websites, or it may clearly follow from the ordinary understanding of the word.

The applicant argues that the relevant consumers would not immediately perceive the trade mark ‘POSTURE SHIRT’ as giving any indication of the nature or the purpose of the goods in question.

The Office not does disagree with the English definition of the word ‘posture’, taken from the Merriam-Webster Dictionary, namely ‘the position or bearing of the body whether characteristic or assumed for a special purpose’ (⁴), highlighted by the applicant.

In addition, Collins Dictionary defines ‘posture’ as ‘the position in which you stand or sit’; ‘a position or attitude of the limbs or body’ (⁵).

These definitions are equivalent to the Danish definitions of ‘kropsholdning’ or ‘holdning’, also highlighted by the applicant.

The other part of the mark, ‘SHIRT’, is defined as ‘a garment for the upper part of the body: such as a) a cloth garment usually having a collar, sleeves, a front opening, and a tail long enough to be tucked inside trousers or a skirt, b) undershirt’ (⁶).

The Office therefore does not concur with the applicant’s argument that the relevant English-speaking consumers would not immediately perceive the trade mark as indicating that the goods in question are shirts with the purpose of supporting or ensuring the correct body posture or helping the consumer to correct poor posture.

The combination of words is not commonly used in the market

The applicant argues that, on the basis of the Offices’ examples of the use of the expression ‘Posture Shirt’, it cannot be argued that the trade mark is commonly used in the relevant market; therefore, it cannot be concluded the trade mark is devoid of any distinctive character. One of the websites uses the word ‘posture’ in bold and thus indicate that it is a trade mark. The other website does not use the expression ‘Posture Shirt’ but the expressions ‘posture memory’ and the ‘Up T-Shirt’.

The Office disagrees. First, the fact that the word ‘posture’ is in bold in the expression ‘The perfect POSTURE Shirt’ on the website upcouture.com does not necessarily indicate that it is a trade mark; the use of bold may just emphasise that it is a shirt that encourages good posture (⁷). Second, on the website adrenalease.com the expression ‘Posture Memory’ appears to be the trade mark, rather than ‘Posture Shirt’. On this website, the expression ‘posture shirt’ is clearly used to indicate the nature and the characteristics of the product.

(information extracted on 17/04/2018 from https://www.adrenalease.com/product-category/women/ )

Third, simply pointing out a page from the websites provided by the Office as examples that does not contain the expression ‘Posture Shirt’ cannot constitute a valid argument against the common use of the expression. The examples of use of the word provided in the objection letter clearly indicate that the expression ‘Posture Shirt’ is used to describe the nature of goods.

The Office maintains that the use of the expression ‘Posture Shirt’ is commonly used in the market to describe the nature, quality and intended purpose of the goods for which registration is sought.

The word is a neologism

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02-T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The applicant argues that the expressions ‘holdnings skjorte’ and ‘kropsholdnings bluse’ do not have any meaning and are neologisms.

The Office disagrees. First, the trade mark applied for is the English expression ‘Posture Shirt’ and not a translation of the expression into Danish. As proved above, the expression ‘Posture Shirt’ is not a neologism, as it would immediately be understood by English-speaking consumers.

Words used in marketing

With regard to the applicant’s disagreement with the Office’s statement that words often used in marketing are devoid of distinctive character, 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 means that a sign that is used in a descriptive way would be perceived as providing information about the goods and services for which registration is sought and is not to be registered.

To sum up, the Office maintains that the trade mark would not be perceived by English-speaking consumers as an indication of the commercial origin of the goods for which registration is sought. Instead, the relevant consumers would perceive the trade mark as describing the nature, a feature and the intended purpose of the goods in question.

Previous national registrations

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.)

In addition, US registration No 4 935 089 seems to have been accepted by the US Office based on acquired distinctiveness (⁸).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 626 706 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.

Anja Pernille LIGUNA

Annex I

Annex II