Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 31/07/2018

HARRISON IP LIMITED

3 Ebor House, Millfield Lane,

Nether Poppleton York YO26 6QY

REINO UNIDO

Application No:	017879805
Your reference:	17864T/EM/MS
Trade mark:	An Electric Revolution
Mark type:	Word mark
Applicant:	AER Electric Company Limited Unit 1 Waterside Mill, Waterside Macclesfield Cheshire East SK11 7HG REINO UNIDO

The Office raised an objection on 29/03/2018 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 23/05/2018 of 2018, which may be summarised as follows.

1. The examiner has reached a conclusion that the sign is devoid of distinctive character purely by virtue of recognising the individual words constituting the sign and/or by virtue of the words in combination making syntactical sense in English.

2. The word “revolution” may be argued to be vaguely suggestive of innovative products, but the sign as a whole – AN ELECTRIC REVOLUTION – has no particular meaning when applied to the electric scooters. It does not tell consumers what amounts to or gives rise to an electric revolution, whether some mechanism of the scooters themselves, their manufacture, the advent of green energy and demise of fossil fuels more generally, or some other factor that the consumer must determine for themselves. The mark in question creates a nonsensical phrase, which is fanciful and without any discernible meaning to the relevant consumer, and, therefore, can act as a badge of origin.

3. Merely because the sign may evoke something about the goods in one way does not prevent competitors evoking that aspect in countless other ways.

4. The examiner has provisionally refused registration because the sign may also function or be understood as a promotional statement, without further enquiry into its ability to function also – or instead – as an indicator of commercial origin.

5. The Office saw fit to register the signs REVOLUTION, EVOLUTION, COMPACT REVOLUTION, COMPACT EVOLUTION, DIAMOND ELECTRIC, TRUE ELECTRIC, ELECTRIC ROAD, ELECTRIC FORMULA, THE ELECTRIC AVENUE, SAFETY EVOLUTION, THE EVOLUTION OF MOBILITY, BORN ELECTRIC, LIVING ELECTRIC, and ELECTRIC NATION, amongst others.

6. The sign in question was recently registered in the UK.

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.

First of all, the Office hereby acknowledges the requested limitation of the list of goods, and accepts it. Consequently, the application and its examination will proceed taking into account that the scope of protection sought refers only to televisions and television receivers.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

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).

The Office will now assess, in order, the arguments from the applicant.

1. The examiner has reached a conclusion that the sign is devoid of distinctive character purely by virtue of recognising the individual words constituting the sign and/or by virtue of the words in combination making syntactical sense in English.

The Office respectfully disagrees with the applicant. It has been thoroughly explained in the objection letter that the sign “AN ELECTRIC REVOLUTION” would be seen as promotional statement not only because of its syntactical combination, but also because of the message transmitted by this combination.

As stated on the objection letter:

“Consequently, the expression ‘AN ELECTRIC REVOLUTION’ readily informs the relevant consumer that the electrically powered goods in question are ‘revolutionary’, i.e. technically advanced, offering new solutions and quality. This unambiguous message is evident, without any particular mental exertion on the part of the targeted public”.

“The word sequence applied for is a common advertising slogan with no additional elements which may be regarded as unusual. There is nothing about the aforementioned expression that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question”.

“It must be stated that is a common practice in advertisement to qualify newly launched products, especially those of electrical or electronic nature, as revolutionary. Consequently, the expression in question will be perceived as a clichéd expression that will not stand out as an indicator of origin among other equally facile promotional statements, leaving no imprint on the consumer’s consciousness”.

Therefore, the Office dismisses the concerned argument.

2. The word “revolution” may be argued to be vaguely suggestive of innovative products, but the sign as a whole – AN ELECTRIC REVOLUTION – has no particular meaning when applied to the electric scooters. It does not tell consumers what amounts to or gives rise to an electric revolution, whether some mechanism of the scooters themselves, their manufacture, the advent of green energy and demise of fossil fuels more generally, or some other factor that the consumer must determine for themselves. The mark in question creates a nonsensical phrase, which is fanciful and without any discernible meaning to the relevant consumer, and, therefore, can act as a badge of origin.

Again, the Office cannot agree with the applicant. As previously stated on the objection letter, is a common practice in advertisement to qualify newly launched products, especially those of electrical or electronic nature, as revolutionary. As the goods concerned are electric scooters, the word ‘ELECTRIC’ actually reinforces the link between the promotional statement at hand and the promoted items.

It is inconsequential to the matter at hand whether the sign can precisely describe the type of advancement that would constitute the ‘ELECTRIC REVOLUTION’. The relevant issue is that the concerned English-speaking consumer will regard the sign ‘AN ELECTRIC REVOLUTION’ as a banal exhortative statement about the applicant’s goods.

The relevant public does not expect a laudatory expression such as ‘AN ELECTRIC REVOLUTION’ to be precise or to fully describe the characteristics of the goods at issue. Rather, it is a common characteristic of promotional slogans to convey only abstract information which allows every consumer to appreciate that his or her individual needs are addressed. Accordingly, case-law has consistently refused registration to slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (for example, see judgments of 3 July 2003, T_122/01, ‘Best Buy’; of 11 December 2012, T_22/12, ‘Qualität hat Zukunft’; of 12 July 2012, C_311/11 P, ‘Wir machen das Besondere einfach’; of 23 September 2011, T_251/08, ‘Passion for better food; of 7 September 2011, T_524/09, ‘Better homes and gardens’; of 8 February 2011, T_157/08, ‘Insulate for life’; of 5 December 2002, T_130/01, ‘Real People, Real Solutions’ and of 17 November 2009, T_473/08, ‘Thinking ahead’).

The Office concedes that, when being confronted with the term ‘AN ELECTRIC REVOLUTION’, the relevant public may further investigate what characteristic of the scooter exactly is revolutionary in the above sense. However, it must be stated that the relevant public will most likely not relate this inherent vague character of the laudatory expression ‘AN ELECTRIC REVOLUTION’ to the fact that it is supposed to indicate the commercial origin of the goods applied for. In fact, any provider of electric-powered vehicles may wish to characterise its goods as revolutionary.

Furthermore, the Office thoroughly disagrees that the expression ‘AN ELECTRIC REVOLUTION’ would be a nonsensical and fanciful phrase. There is nothing fanciful or arbitrary about the mark. The meaning of the isolated words that compose the sign in questions was provided by the Office on the objection letter, and it was also demonstrated that the interpretation of the resulting expression is merely the arithmetical sum of the individual meanings, without any further interpretations. Contrary to the applicant’s assertion, there is nothing imaginative about ‘AN ELECTRIC REVOLUTION’.

The Court of Justice has provided criteria that should be used when assessing the distinctive character of a slogan (judgments of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47; 13/04/2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 37), stating that an advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:

• constitutes a play on words and/or;

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or;

• has some particular originality or resonance and/or;

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

Applying those criteria to the case at hand, the Office finds the mark in question lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely to be perceived as a sign of trade origin.

Therefore, the concerned argument is dismissed.

3. Merely because the sign may evoke something about the goods in one way does not prevent competitors evoking that aspect in countless other ways.

In regard to this argument, the Office reminds the applicant that case-law states that

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that (…) the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

Consequently, while the applicant may be right in his assessment, the Office considers that such argument does not invalidate the reasoning presented by the Office in the objection letter, in the sense that the sign in question will not be perceived as a badge of origin, but rather and solely as a promotional statement.

Therefore, the concerned argument is also dismissed.

4. The examiner has provisionally refused registration because the sign may also function or be understood as a promotional statement, without further enquiry into its ability to function also – or instead – as an indicator of commercial origin.

The concerned argument has been already addressed and dismissed. As previously stated, an advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:

• constitutes a play on words and/or;

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or;

• has some particular originality or resonance and/or;

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

The Office reiterates that, while applying those criteria to the case at hand, concluded that the mark in question lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely to be perceived as a sign of trade origin.

Furthermore, while the Vorsprung durch Technik judgment did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because of the fact that they are promotional formulas. In paragraph 45 of that judgment, the ECJ stated that:

“in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character” (Emphasis added).

(21/01/2010, C 398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45).

This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive, which the Office reaffirms it will not be the case, as the sign in question merely conveys the meaning already explained throughout this response.

5. The Office saw fit to register the signs REVOLUTION, EVOLUTION, COMPACT REVOLUTION, COMPACT EVOLUTION, DIAMOND ELECTRIC, TRUE ELECTRIC, ELECTRIC ROAD, ELECTRIC FORMULA, THE ELECTRIC AVENUE, SAFETY EVOLUTION, THE EVOLUTION OF MOBILITY, BORN ELECTRIC, LIVING ELECTRIC, and ELECTRIC NATION, amongst others.

As the applicant must already know, it is not sufficient that the Office has registered many other trade marks which include the word ELECTRIC and REVOLUTION, even in class 12. It is well established that the legality of a decision of the Board is to be measured solely against the Regulation, as interpreted by the EU courts, and not by the practice of the Office’s examiners in other decisions (see judgments of 10 March 2011, C-51/10 P, ‘1000’, paras 73 to 75 and of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, para. 57 and case-law cited therein).

Moreover, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, C-51/10 P, 1000, para. 77 and case-law cited therein).

The Office would also like to present previous decisions issued by the Office, where the promotional aspect related to the word ‘REVOLUTION’ has been assessed by the Office, and confirmed by its Boards of Appeal, when such an appeal has been filed:

1. Refusal of EUTMA 004608477 for the sign ‘A REVOLUTION IN ROOFING’:

Far from perceiving the expression A REVOLUTION IN ROOFING as merely fanciful, the relevant public will understand it as a promotional laudatory message, the purpose being to transmit a positive message to the consumers, namely that the products are the latest innovation of goods in the field of roofing. (Judgement of 20 November 2002, Cases T-79/01 and T-86/01, Robert Bosch GmbH/OHIA4 (Kit Pro and Kit Super Pro), ECR 11-4881, paragraph 26.

Indeed there is nothing about the expression A REVOLUTION IN ROOFING that might, beyond its obvious promotional laudatory meaning, enable the public to memorize the sign easily and instantly as a distinctive trade mark for the goods designated (Judgement of 5 December 2002, Case T- 130/0 1, Sykes Enterprises, Incorp./OHIA4 (REAL PEOPLE, REAL SOLUTIONS), ECR 11-5 179, paragraph 28.)

2. Refusal of IR 1283682 for the sign ‘REVOLUTION RAZOR’

Therefore, the use of the word ‘REVOLUTION’ together with the word ‘RAZOR’ does not change the outcome because the meaning of such an expression remains clearly perceptible for the relevant consumer. In connection with the goods claimed, namely shaving razors and razor blades, the relevant public will understand the meaning of the expression ‘REVOLUTION RAZOR’ immediately and without further considerations in the sense that these are new generation/technically advanced razors. No other interpretation is reasonably open to the relevant public in the context of the goods concerned. That is why the holder itself fails to give any other possible interpretations of the mark in relation to the goods claimed.

3. Refusal of EUTMA 016144826 for the sign ‘REVOLUTION’

(02/06/2016, T-654/14, REVOLUTION, EU:T:2016:334 § 43).

The Office is of the opinion that the same applies in the present case: new and innovative technical solutions/functions can undoubtedly be invented and applied to goods such as reinforced lockable cabinets, for example to the locking mechanism or the construction and durability of the cabinet itself. Therefore, it is highly likely that the relevant consumer will perceive the word ‘REVOLUTION’ as a promotional laudatory message praising the quality of the lockable storage cabinets in Class 20, and will understand ‘REVOLUTION’ as an indication that the goods are equipped with innovative technical solutions offering positive differences from and advantages over previous editions and/or cabinets offered by competitors.

There is nothing about the expression ‘REVOLUTION’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

4. Partial refusal of IR 1231209 for the sign ‘MAKEUP REVOLUTION’:

The basic purpose of cosmetics is to improve the user’s personal appearance and attractiveness. The sign ‘MAKEUP REVOLUTION’ will therefore, in respect of the goods applied for, merely be perceived as a purely informative indication, the purpose of which is to highlight that the goods represent a major change in cosmetic/make-up products, being a completely new, latest innovation make-up products. This unambiguous message is evident, without any particular mental exertion on the part of the public.

(…)

In the present case, the term ‘REVOLUTION’ merely conveys the message of a radically new cosmetic product. The concept of radically new products is especially relevant for the goods applied for because the relevant consumer will be interested in new alternatives, if they can help him to look more attractive. For everyday consumer items, the term ‘REVOLUTION’ will be perceived to be purely informative highlighting that such items represent a major change (see decision of the Boards of Appeal of 18 July 2013, R 1373/2012-2, COLOREVOLUTION, paragraph 39). It carries the promotional message that in the development of the product important progress has been made (see decision of the Boards of Appeal of 5 September 2013, R 1016/2012- 1, SENSAR Revolution / REVOLUTION et al., paragraph 22).

5. Decision of the Second Board of Appeal of 18 July 2013 in case R 1373/2012-2 regarding the trade mark ‘COLOREVOLUTION’:

The sign ‘COLOREVOLUTION’ will therefore, in respect of the goods applied for, merely be perceived as a purely informative indication, the purpose of which is to highlight that the goods represent a major colour scheme change in cosmetic/make-up products, being a completely new palette of colours. This unambiguous message is evident, without any particular mental exertion on the part of the public.

6. Decision of the first Board of Appeal of 11 June 2014 in case R 2143/2013-1 regarding the trade mark ‘REVOLUTION’:

In the present case, as far as financial services are concerned, the term ‘REVOLUTION’ is equally suitable to indicate in a promotional manner that they represent new types of services which fundamentally change the service landscape. Whilst clients of financial services are often risk averse and seek for established and tested products which guarantee the safe deposit of their finances, in some financial areas, to the contrary, they contract services which promise the highest possible return of investment. It is a well-known fact that such investments often relate for instance to emerging markets or are based on innovative financial products. In relation to such financial services the term ‘REVOLUTION’ indicates that they offer a complete change in comparison to formerly available services, thereby promising an advance for the potential benefit of the client. This applies in particular to the services ‘providing venture capital, development capital, private equity and investment funding; management of private equity funds’ which are often rendered to maximise financial

investments. The consumers of such products will therefore perceive ‘REVOLUTION’ merely as a promotional indication. The same applies in relation to the broad category of ‘financial consulting’ in Class 36 which may relate to above capital and investment services.

It must be stated that the last decision cited was upheld in the judgement of the General Court of 02 June 2016 - Case T-654/14 – brought against the decision of the First Board of Appeal. The Office would like to quote the concerned decision:

29 Therefore, ‘revolution’ is a laudatory term in the nature of an advertisement, the purpose being to highlight the positive qualities of the services covered. It is immediately perceived by the relevant public as a laudatory advertising message, which indicates that the services covered by the sign applied for offer, for the relevant public, a positive change and advantages compared to the services offered previously or offered by competitors (see, to that effect, judgment of 30 June 2014 in Mehr für Ihr Geld, T-281/02, EU:T:2004:198, paragraph 29 and the case-law cited).

30 Contrary to the applicant’s claims, the sign applied for conveys, in relation to the services covered, a clear and unequivocal message, immediately apparent and which does not require any interpretative effort, because the relevant public will deduce from the word ‘revolution’ itself, without undertaking any complex thought processes, that it refers to something revolutionary, to a change or an innovation and that the sign is merely laudatory and extols the positive qualities of the services covered by the application for registration.

31 It follows from all those considerations that the Board of Appeal did not err in finding that the sign applied for will be perceived by the relevant public, with regard to the financial services covered, as a promotional message.

These refusals confirm that each case has to be assessed on its own merits, considering the goods and services applied for and, as the case may be, the other components of the signs in questions. Furthermore, the terminology at the relevant point in time has to be taking into account (see judgment of 16 December 2010, T-161/09, ‘ilink’, para. 43).

Consequently, the Office dismisses the concerned argument.

6. The sign in question was recently registered in the UK.

The applicant must be aware that, 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 closing, the Office states that, despite the arguments provided by the applicant, it has been found that the sign ’AN ELECTRIC REVOLUTION’ sought is devoid of any distinctive character, and is not capable of distinguishing the goods for which objection is sought. The sign in question does not use fanciful word play or conceptual intrigue, nor does it possess any striking features that would render it susceptible to registration. It will readily inform the relevant consumer that the electrically powered goods in question are ‘revolutionary’, i.e. technically advanced, offering new solutions and quality. This message is clear and unambiguous.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 879 805 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.

Christiano DOS SANTOS TIMBO