Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 14/09/2018

FINNEGAN EUROPE LLP

1 London Bridge

London SE1 9BG

REINO UNIDO

Application No:	017879824
Your reference:	11251.0016-00337
Trade mark:	AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT
Mark type:	Word mark
Applicant:	Prosci, Inc. 5042 Technology Parkway Fort Collins Colorado 80528 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 11/05/2018 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 06/07/2018, which may be summarised as follows:

• The registration of marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks is not excluded by virtue of such use.

• As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to those marks criteria that are stricter than those applicable to other types of signs.

• An advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal degree of distinctiveness required under Article 7(b) of EUTMR.

• The objection appears to focus on the dictionary meaning of the English words ‘aware’, ‘desire’, ‘knowledge’, ‘ability’ and ‘reinforcement’. However, this assessment is based merely on the separate elements of the mark and fails to take into account the overall impression created by the mark as a whole. Taken as a whole, the mark applied for has a degree of originality owing to the incorporation of those words into a single slogan: ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’. Such a slogan is neither a common expression, nor does it has a particular and specific meaning that can be grasped by the relevant customers immediately and without any further mental processing, either in relation to the goods and services covered by the mark in question or as a statement in itself. Moreover, the message conveyed by the mark is very abstract and a certain degree of cognitive effort on the part of the relevant public will be required to break it down and interpret each of the separate word elements on its own. Consequently, when the public encounters this unusual combination, it will recognise it as originating from the applicant.

• Contrary to the assertion in the objection letter that the mark ‘merely serves to indicate the subject matter of publications and educational courses’, the subject matter of the contested goods and services is business organisation and management and is not related to the abstract idea of knowledge, desire or ability, etc.

• Should the objection be maintained, the applicant wishes to pursue a subsidiary claim of acquired distinctiveness under Article 7(3) EUTMR.

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.

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).

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).

A mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, insofar 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 sign consisting of a promotional formula has no bearing on its distinctive character (see, for example, 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; 12/02/2014, T‑570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 27). However, 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 which, whilst not specific, comes from promotional or advertising information and which 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). This is clearly the case for the mark applied for, for the reasons outlined below.

Firstly, the Office points out that the notification dated 11/05/2018 was based not on the fact that the sign applied for lacks ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ but on the fact that as a whole it is devoid of any distinctive character in relation to the goods and services for which registration is sought.

The goods and services at issue mainly target specialised English-speaking consumers but also average consumers. In that regard, it is established case-law that the fact that the relevant public is a professional one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of that public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, settled case-law has established that, in general terms, the level of attention of the public is relatively low when it comes to promotional indications (17/11/2009, T‑473/08, Thinking ahead, EU:T:2009:442, § 33). This applies also in the case of a professional public (09/07/2008, T‑58/07, Substance for success, EU:T:2008:269, § 23).

As the mark applied for, ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’, consists of basic English words, the understanding will not be affected by the degree of attention of the public. Therefore, the fact that some of the goods and services target a professional public does not constitute a determining factor in this case, since the contested mark does not consist of technical words but basic words of the English language. The Office, therefore, considers that there would be nothing gained from delineating, for each and every item specified in the application, the relevant public; the application for the mark applied for would remain objectionable under Article 7(1)(b) EUTMR even from the standpoint of a highly attentive public.

Since the mark at issue is made up of English words, its distinctiveness must be assessed with respect to the English-speaking public. The Office considers that the public with reference to which the absolute ground of refusal must be assessed consists of the public in at least the Member States in which English is an official language, that is, in Ireland, Malta and the United Kingdom.

The meanings of the words composing the mark ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’ were already defined in the annexed notification of 11/05/2018. Moreover, this notification also stated that the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to indicate the subject matter of publications or educational courses, and to highlight the positive aspects of the services in question, claiming that the applicant works with awareness, desire, knowledge, etc.

In this regard, the applicant submits that the subject matter of the contested goods and services is business organisation and management and is not related to the abstract idea of knowledge, desire or ability, etc. However, the fact that the publications or the educational services are related to the field of business organisation and management does not exclude the possibility that the sign indicates to consumers that the subject matter of these goods and services is knowledge, awareness, reinforcement, etc., in the field of business organisation and management. In relation to all the services, the sign as a whole also highlights the positive aspects of the services in question, claiming that the applicant renders the services with awareness, desire, knowledge, ability and reinforcement. It is not unusual in the marketing of goods and services to refer to such qualities of the provider, that is, as possessing ‘awareness’, ‘knowledge’, ‘abilities’, etc. Keeping this in mind, the relevant public will directly and immediately, without any particular mental exertion, understand that the purpose of the trade mark’s message is to indicate the subject matter of the publications or educational courses, and to highlight the positive aspects of the services in question, claiming that the applicant works with awareness, desire, knowledge, etc. Accordingly, the mark cannot be considered fanciful, arbitrary or allusive, but it is devoid of any distinctive character, as explained above.

The applicant states that the expression ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’ merely delivers abstract information. However, the Office points out that the information provided is sufficiently closely connected to the goods and services in question for the expression to be deemed non-distinctive. The relevant public does not expect promotional slogans to be precise or to convey all of the information that is required to make an informed choice when selecting goods and services. Rather, it is a common characteristic of promotional slogans to convey only abstract information, which allows every consumer to appreciate that its individual needs are addressed. Accordingly, case-law has consistently demonstrated the refusal of registration to slogans that could appear a priori as ‘vague and indefinite’ when seen in the abstract (see, for example, 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183; 05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301; 17/11/2009, T‑473/08, Thinking ahead, EU:T:2009:442; 07/09/2011, T‑524/09, Better homes and gardens, EU:T:2011:434).

Therefore, the mark ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’, as a whole and as defined above, is not capable of identifying the origin of the goods and services for which registration is sought. There is nothing about the trade mark as a whole that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive mark for the goods and services in question.

The applicant also states that the mark ‘AWARENESS DESIRE KNOWLEDGE ABILITY REINFORCEMENT’, affixed to the goods and services for which registration is sought, would enable consumers to distinguish the applicant’s goods and services from those of its competitors. However, a trade mark consisting of an expression that merely conveys information about the goods and services on which it is found is unlikely to serve as a badge of trade origin. Such a mark leaves no imprint on the consumer’s consciousness after the purchase has taken place, and the expression soon sinks back into the anonymity of ordinary promotional language. The mark will not stand out as an indicator of origin among other, equally facile, promotional statements, unless, through exposure and use, the public has been educated to perceive it as an indicator of origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 879 824 is declared to be non-distinctive pursuant to Article 7(1)(b) in English-speaking countries for the following goods and services:

Class 9 Downloadable electronic publications, namely, templates, assessments, worksheets, reports, articles, and guidelines contained on electronic documents, all in the fields of business organization and management; audio books in the fields of business organization and management.

Class 16 Goods made from paper and cardboard, not included in other classes; printed matter; instructional and teaching material (except apparatus); paper publications, namely, scorecards, templates, worksheets, assessments, checklists, printed guidelines, workbooks, articles, books, ready-to-use printed presentations in the fields of business organization and management.

Class 35 Advertising; business management; business administration; office functions; providing research and analysis services in the fields of business organization and management; providing information in the fields of business organization and management; consulting services in the fields of business organization and management.

Class 41 Education; providing of training; entertainment; sporting and cultural activities; educational services, namely, arranging and conducting workshops, presentations, conferences, webinars, seminars, retreats, training, and tutorials in the fields of business organization and management; providing non-downloadable electronic publications, namely, templates, assessments, worksheets, reports, articles, and guidelines in the fields of business organization and management.

The application may proceed for the remaining goods and services.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Ignacio IGLESIAS ARROYO