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

(Article 7 EUTMR)

Alicante, 28/06/2019

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

UNITED KINGDOM

Application No:	017893507
Your reference:	T194636.EM.01/bettc/CCI
Trade mark:	THE WORLD'S MOST ADAPTABLE COUCH
Mark type:	Word mark
Applicant:	The Lovesac Company Two Landmark Square, Suite 300 Stamford Connecticut 06901 UNITES STATES OF AMERICA

The Office raised an objection on 26/06/2018 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 25/10/2019, which may be summarised as follows.

1. The mark is a hyperbole, the relevant consumer will not take it literally. The mark immediately triggers a thinking process. The mark does not describe a characteristic of the retail services applied. The mark possesses a certain originality and resonance, an over –exaggeration.

2. Similar marks have already been registered by the Office.

3. The applicant has stated in its communication of 18 March 2019 that the claim under Article 7(3), acquired distinctiveness, is intended to be a subsidiary claim.

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)(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.

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).

‘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).

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).

1. As regards the applicant’s argument that the mark is hyperbole, the relevant consumer will not take it literally, it suffices to state the following.

The mark applied for is composed of merely five words, namely ‘THE’, ‘WORLD´S’, ‘MOST’, ‘ADAPTABLE’ and ‘COUCH’.

Bearing in mind the definitions and analysis already provided on 21/06/2018, the sign as a whole is immediately intelligible to English speakers as a meaningful expression. The sign providing information about the quality of goods and services claimed are the best modifiable of all couches in the world. The relevant consumer looking for furniture that can be adjusted to different circumstances more than any other couch or couch-like furniture will find in the expression ‘THE WORLD'S MOST ADAPTABLE COUCH‘ exactly the desired properties.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially. (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

There is nothing unusual about the sign´s structure. The combination follows ordinary English grammar composition and spelling rules. There is no unusual variation in syntax or meaning.

As regards the applicant’s argument that at no instance the mark describes a characteristic of the retail, it suffices to state that the Office respectfully disagrees with the applicant´s argument because retail services can provide the most adjustable of all couches available anywhere.

As regards the applicant’s argument that is also a hyperbole and it is not mean to be taken literally, it suffices to state the following.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office considers that based on previous analysis the meaning of the mark is clear. Moreover, the applicant has not submitted any other evidence that would show that the relevant public shall not take the sign literally and shall only consider it as a hyperbole.

Furthermore, 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 a 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant failed to explain why English speaking costumer will immediately trigger a thinking process about the phrase if the meaning of it is clear, the mark does not require an interpretative effort to understand it and there is nothing unusual from a grammatical point of view.

Moreover, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned. (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

The Offices respectfully disagrees with the applicant´s argument that the mark possesses a certain originality and resonance, an over –exaggeration. There is nothing original and the sign has no special resonance. The over - exaggeration would be possible only if there would not be possibility that the world´s most adaptable couch could not exist which is not the case. Moreover, the way in which the word elements of the sigh are combined is not in itself fanciful at all. As a result, the applicant has failed to prove the unusual nature of the combination in relation to the goods and services.

2. As regards the applicant’s argument that 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), (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 893 507 is declared to be non-distinctive and descriptive to Article 7(1) (b) and (c) in the United Kingdom, Ireland, Malta for the following goods and services:

Class 20 Furniture; furniture parts; chairs; furniture in the nature of foam bags; sectional furniture; sectional furniture parts; pillows; foam-filled chairs; frameless foam-filled furniture; cushions; furniture cushions; furniture accessories, namely, pillows and tables; furniture accessories, namely, fitted covers made of fabric; modular furniture; soft, frameless furniture; furniture accessories, namely, accessory tables configured to be mounted on furniture, furniture frames, fitted covers made of fabric for frameless furniture, and refills comprising synthetic material for refilling frameless furniture.

Class 35 Retail furniture stores; retail store services featuring furniture; on-line retail store services featuring furniture.

The application may continue for publication for the rest of the services, namely:

Class 35 Retail clothing stores; providing commercial information in the fields of furniture and furniture design; providing commercial information via a website in the field of furniture; providing a website featuring commercial information in the field of furniture; providing consumer information in the field of furniture.

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.

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