Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 23/08/2018

ALBRIGHT IP LIMITED

County House, Bayshill Road

Cheltenham, Gloucestershire, GL50 3BA

REINO UNIDO

Application No:	017884019
Your reference:	T004061EM00
Trade mark:	HIGHLY MOBILE
Mark type:	Word mark
Applicant:	Highly Mobile, LLC c/o K. Hertz, Hertz Lichtenstein & Young, 1800 Century Park East, Tenth Floor Los Angeles, California 90067 ESTADOS UNIDOS DE AMÉRICA

The Office raised an objection on 20/04/2018 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 19/06/2018, which may be summarised as follows:

1. When assessing the distinctive character of the mark applied for, ‘HIGHLY MOBILE’, the Office raised an objection against all of the goods and services without considering each product and service individually.

2. The mark is not descriptive of the contested goods and services. Even if it were considered descriptive, ‘mobility’ is not a core function of the majority of the goods and/or services in question.

3. It is strongly disputed that the words constituting the mark convey a unique meaning, either individually or in combination. It is also strongly disputed that the ‘relevant public’ will make any association between the mark and the goods and services and interpret the mark as a ‘meaningful expression’.

4. The Office has erred in identifying the relevant consumer, leading to an erroneous decision. The ‘relevant consumer’ would be elderly or disabled persons or those with assisted living needs, and/or those caring for them, meaning that the end user would be an attentive and well-informed consumer.

5. Given that there is a substantial degree of awareness and sensitivity directed at elderly and disabled persons and those with assisted living needs in our society, issues arising from a lack of mobility are handled extremely delicately and with respect and, as a result, cautious and discreet wording is often adopted. The expression ‘HIGHLY MOBILE’ is not a description that would be used in connection with individuals with impaired mobility, as it would not be deemed politically correct, since the expression describes a result that is overly ambitious and probably not realistic in the context. As such, the expression ‘HIGHLY MOBILE’ can be seen, at most, as aspirational, inspirational or motivating in this context and as involving a high degree of creativity, inventiveness and originality. The relevant consumer will generally exert a significant degree of mental effort to, and will habitually avoid using words that are deemed to be insensitive, even if these words are motivational.

6. The mark is registered in English-speaking countries, in particular in the USA, and it has been accepted on the basis of absolute grounds for registration in the UK. Since the relevant consumer should be considered the English-speaking consumer, the fact that the mark has been successfully registered in English-speaking territories should be persuasive.

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.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (23/05/1978, C‑102/77, Hoffmann-La Roche, EU:C:1978:108; 18/06/2002, C‑299/99, Philips/Remington, EU:C:2002:377).

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T‑322/03, Weisse Seiten, EU:T:2006:87, § 110).

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are to be refused registration. In addition, it must be borne in mind that Article 7(2) EUTMR states that paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

It is clear from the wording of Article 7(1)(b) EUTMR that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in that provision (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 68).

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product/service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product/service from those of other undertakings (08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 66, and the case-law cited therein).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR does not require a finding that the sign is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

The marks referred to in Article 7(1)(b) 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).

Although the descriptiveness and/or distinctiveness of the individual elements of a mark may be assessed separately, the assessment of the descriptiveness and/or distinctiveness of the mark must be based on an appraisal of the mark as a whole. To establish that a sign is distinctive, it is not necessary to find that the sign is original or fanciful (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532).

The absolute grounds for refusal of a lack of distinctive character and of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, the grounds can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As regards the applicant’s observations, the Office replies as follows.

In its submissions, the applicant argues that, when assessing the distinctive character of the mark applied for, ‘HIGHLY MOBILE’, the Office has raised an objection against all of the goods and services without considering each product and service individually.

The Office has noted the applicant’s comments. It is true that the examination of absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and that the Office must, in principle, state reasons in respect of each of those goods or services, although a general reasoning may be used where the same ground of refusal is given for a category or group of goods or services (15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 34 and 37) which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group (18/03/2010, C‑282/09 P, P@YWEB CARD and PAYWEB CARD, EU:C:2010:153, § 40).

In the present case, the contested goods – namely metal ramps for use with vehicle, metal handrails for the elderly or physically impaired, metal shower grab bars, metal bathtub grab bars, metal bathtub rails, metal shower rails in Class 6, life jackets, electronic monitor comprising a sensor that monitors the health and safety of the elderly and disabled in their own homes and community, protective helmets, protective helmets for the elderly or disabled, safety helmets, protective headgear, namely, hard hats in Class 9, canes specially adapted for use by the elderly, disabled persons, or medical patients, dressing sticks specially adapted for use by the elderly, disabled persons, or medical patients, crutches, orthopedic supports, walkers for use by the elderly, disabled persons, or medical patients, orthopedic walkers, transfer boards for the elderly, disabled persons, or medical patients, toilet seats specially adapted for use by the elderly, disabled persons, or medical patients, bedside commodes specially adapted for use by the elderly, disabled persons, or medical patients, incontinence bed pads and sheets, commode chairs, chairs adapted for use by the elderly, disabled persons, or medical patients, chairs specially adapted for use by the elderly, disabled persons, or medical patients, orthopedic cushions, orthopedic seat cushions, bath and shower benches and chairs specially adapted for use by the elderly, disabled persons, or medical patients, hand tools, namely, hand-operated reaching devices specially adapted for use by the elderly, disabled persons, or medical patients, hand grips adapted for use by the elderly, disabled persons, or medical patients, clothing specially adapted for use by the elderly, disabled persons, or medical patients featuring a sensor that monitors the health and safety of the elderly and disabled in their own home and community in Class 10 and wheelchairs, motorized wheelchairs for the elderly, disabled persons, or medical patients, electrically operated wheelchairs, scooters, motor scooters, electrically-powered motor scooters in Class 12 – are all, through their design and/or application, destined for or capable of supporting or further contributing to the freedom and/or security of movement of their users, particularly elderly and physically disabled persons and medical patients (but also, inevitably, the persons caring for them). Therefore, such goods allow such users to be highly mobile in spite of their condition. As such, these goods are considered to constitute a sufficiently homogeneous group.

The contested services – namely retail and online retail store services featuring goods specially adapted for use by the elderly, disabled persons, or medical patients also accessible by telephone, facsimile, and mail order, providing consumer product information regarding goods specially adapted for use by the elderly, disabled persons, or medical patients, providing a website featuring consumer product information regarding goods specially adapted for use by the elderly, disabled persons, or medical patients, providing a website featuring information in the field of caring for the elderly and disabled individuals, promoting public awareness of the interests of the elderly and disabled persons in Class 35, educational services, namely, conducting classes, seminars, webinars, conferences, workshops, podcasts, and online lectures in the field of caring for the elderly, disabled persons, or medical patients, providing physical fitness and exercise assessment and instruction services for the elderly, disabled persons, or medical patients, providing a website featuring information on exercise and fitness for the elderly and disabled persons, charitable services, namely, providing educational materials in the nature of books, pamphlets, and handbills to the elderly, disabled persons, or medical patients in Class 41 and home safety consulting in the field of accommodations for the elderly, disabled persons, or medical patients in Class 45 – are provided in a manner that ensures that they can be accessed by and/or are flexible for their users, particularly elderly and physically disabled persons and medical patients. They are provided in a highly mobile manner in the form of, for example, barrier-free retail shops that are specially adapted for access by elderly and physically disabled persons and medical patients; the provision of consumer product information online or via a website adapted for use by elderly and physically disabled persons and medical patients (taking into account their consumer behaviour and psychology and decision making); promoting public awareness in a manner allowing the message to reach even the most distant or disconnected communities; the provision of educational services, namely conducting classes, seminars, webinars, conferences, workshops, podcasts and online lectures; the provision of physical fitness and exercise assessment and instruction services; the provision of educational materials in the form of books, pamphlets and leaflets; and home safety consulting in the field of accommodations delivered ‘on the spot’ in retirement homes, nursing homes or residencies, and hospitals, which aim to make such places accessible to elderly and physically disabled persons, medical patients, etc. As such, the contested services are also considered as constituting a sufficiently homogeneous group.

For the reasons above, the applicant’s argument must be set aside.

As regards the applicant’s arguments that the mark is not descriptive of the contested goods and services and that, even if it were considered descriptive, ‘mobility’ is not a core function of the majority of the goods and/or services in question, the Office has noted the applicant’s comments.

However, the Office must note that, in its initial objection of 20/04/2018, it did not state that the mark ‘consists 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 characteristic of the goods or service’ (Article 7(1)(c) EUTMR) but rather it stated that the mark is ‘devoid of any distinctive character’ (Article 7(1)(b) EUTMR in combination with Article 7(2) EUTMR).

Insofar as the applicant seems to argue that Article 7(1)(b) EUTMR is not applicable because the mark ‘HIGHLY MOBILE’ is not descriptive and does not designate the goods and services in question or any of their characteristics, it is noted that a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) EUTMR for reasons other than the fact that it may be descriptive (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 46).

Although it is acknowledged that even signs with a low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because distinctive character means that the trade mark applied for guarantees the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (15/09/2005, C‑37/03, BioID, EU:C:2005:547).

Furthermore, in its submissions, the applicant strongly disputes that the words constituting the mark applied for convey a unique meaning, either individually or in combination. It also strongly disputes that the ‘relevant public’ would make any association between the mark and the goods and services and interpret the mark as a ‘meaningful expression’. It further notes that, given that there is a substantial degree of awareness and sensitivity directed at elderly and disabled persons and those with assisted living needs in our society, issues arising from a lack of mobility are handled extremely delicately and with respect and, as a result, cautious and discreet wording is often adopted. The applicant goes on to argue that the expression ‘HIGHLY MOBILE’ is not a description that would be used in connection with individuals with impaired mobility, as it would not be deemed politically correct, since the expression describes a result that is overly ambitious and probably not realistic in the context. As such, the applicant argues, the expression ‘HIGHLY MOBILE’ can be seen, at most, as aspirational, inspirational or motivating in this context and as involving a high degree of creativity, inventiveness and originality. According to the applicant, the relevant consumer will generally exert a significant degree of mental effort to, and will habitually avoid using words that are deemed to be insensitive, even if these words are motivational.

The Office has noted the applicant’s comments. However, when assessing a mark, the Office must consider it not in its strictest grammatical sense, but in the context of how it would appear to the public at large, which will perceive it in relation to the goods and services for which registration is sought and form an opinion of what it connotes.

The sign is composed of two English words, ‘HIGHLY’ and ‘MOBILE’, both of which are typical in common parlance. Moreover, as can be confirmed by a basic search on internet, when they are combined as ‘HIGHLY MOBILE’, the resulting expression is also well established in common parlance and, when meaning ‘able to move or to be moved very or extremely freely and easily’, is often used in relation to goods, persons and services as one of their positive desired characteristics. The applicant does not question the abovementioned definition, referenced by the Office, but it disputes its uniqueness and argues that both the individual words constituting the sign and the combination ‘HIGHLY MOBILE’ have various meanings.

The Office respectfully disagrees and asserts that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The Office is of the opinion that, when taken as a whole, the mark ‘HIGHLY MOBILE’ consists exclusively of a meaningful expression that will be easily understood by the relevant public, which will perceive it not as a trade mark but as conveying promotional non-distinctive information about the desirable characteristics of the goods and services, which merely highlights positive aspects of the goods and services.

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

As stated in the notification of 20/04/2018, the expression ‘HIGHLY MOBILE’ does not have the capacity to function as a trade mark with regard to the goods and services in question. While the sign may not be directly descriptive of all the goods and services, it is, nonetheless, because of its meaning, in the context of the application, entirely devoid of distinctive character.

Taken as a whole, the meaning of the expression ‘HIGHLY MOBILE’ is clear to any relevant English-speaking consumer, who will readily associate the words ‘HIGHLY MOBILE’ with a significant ability to move or to be moved, a high degree of mobility, and therefore will immediately and without any difficulty establish a direct and specific link between the mark and the goods and services for which registration is sought. Therefore, the Office considers that the expression ‘HIGHLY MOBILE’ is readily intelligible when encountered by the relevant consumer in conjunction with the goods and services for which registration is sought.

As regards the applicant’s claim that the sign applied for is endowed with the minimum degree of distinctive character required, it must be noted that ‘in order to have the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the European Union trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin’ (13/06/2007, T‑441/05, I, EU:T:2007:178, § 55).

In addition, as the sign applied for is a simple basic mark and so lacks additional distinguishing features or graphic elements, it cannot carry out the ultimate function of a trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as functioning as a trade mark.

Consequently, the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it merely as an ordinary statement on the market conveying desirable or even motivational concepts. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and services and the mark applied for is not sufficiently indirect to endow it with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR.

As regards the applicant’s arguments that the Office has erred in identifying the relevant consumer, leading to an erroneous decision, and that the ‘relevant consumer’ would be elderly or disabled persons or those with assisted living needs, and/or those caring for them, meaning that the end user would be an attentive and well-informed consumer, the Office has noted the applicant’s submissions.

However, even though the relevant public is formed exclusively of very attentive and well-informed consumers from a specialised market, namely elderly or disabled persons or those with assisted living needs, and/or those caring for them, and the goods and services in question therefore belong to a highly specialised market sector, this makes very little difference to the Office’s initial assessment. The relevant consumer will still understand the expression ‘HIGHLY MOBILE’ without difficulty and will perceive the mark as a whole as a laudatory non-distinctive message rather than as an indication of trade origin in relation to the goods and services for which registration is sought.

The Office considers that the high degree of attention alone will not lead to the consumer perceiving such a banal slogan as an indication of origin unless it is depicted in a very striking way, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of the indications that appear on goods or are used in relation to services and so will perceive the expression ‘HIGHLY MOBILE’ simply as a promotional non-distinctive message, the function of which is to communicate a characteristic of the goods and services and highlight positive aspects of the goods and services concerned. In the present case, the mark conveys the concept that the goods and services are directly intended to support, or are capable of or directly related in some other way to supporting, elderly or disabled persons or those with assisted living needs in becoming highly mobile in spite of their condition. It is not vague or ambiguous in any way, it does not lend itself to different interpretations and it will not be perceived as unusual or akin to an allusive fanciful sign in relation to the contested goods and services.

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist 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 the relevant specialist 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).

Finally, in its submissions, the applicant argues that the mark has been registered in English-speaking countries, in particular in the USA, and it has been accepted on the basis of absolute grounds for registration in the UK. According to the applicant, since the relevant consumer should be considered the English-speaking consumer, the fact that the mark has been successfully registered in English-speaking territories should be persuasive.

The Office has noted the applicant’s comments. As regards the national registrations in the USA and the UK 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). This is clearly applicable to the present case.

It follows from all of the above that the applicant has not succeeded in convincing the Office that the sign applied for, ‘HIGHLY MOBILE’, will be perceived by consumers as denoting the commercial origin of the contested goods and services for which registration is sought. For the reasons mentioned above, the mark ‘HIGHLY MOBILE’ lacks any distinctive character in respect of the goods and services in question, pursuant to Article 7(1)(b) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace; that is, it fails to distinguish the contested goods and services from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its non-distinctive sense.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 884 019 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.

Robert KLECUN