Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 04/10/2018

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	017900211
Your reference:	79.77.M113451
Trade mark:	MAGNITUDE
Mark type:	Word mark
Applicant:	Sophono, Inc. 5744 Central Avenue, Suite 100 Boulder Colorado 80301 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/05/2018 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 18/07/2018, which may be summarised as follows:

1. The Office does not appear to have assessed the distinctiveness of the mark applied for in connection with the goods covered thereby. The relevant public would not perceive the trade mark ‘MAGNITUDE’ as a promotional message, but solely as an indicator of commercial origin. The relevant public would understand ‘MAGNITUDE’ as an original mark that originates from a particular economic undertaking. Even a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR.

2. The distinctive character of a trade mark must be assessed in the light of the goods covered thereby.

3. ‘MAGNITUDE’ is a single word and not a ‘group of words’, is a word mark and not a slogan, and would be perceived as such by the relevant public. Therefore its distinctive character should be assessed with this in mind.

4. The Office has accepted trade marks comprising the term ‘MAGNITUDE’ such as EUTMs No 3 044 757 ‘MAGNITUDE’, No 6 841 274 ‘MAGNITUDE’, No 8 744 575 ‘MAGNITUDE’, No 10 397 495 ‘MAGNITUDE’ and No 13 618 012 ‘MAGNITUDE SOFTWARE’.

5. The United Kingdom Intellectual Property Office (UKIPO) has accepted application No 3 310 809 ‘MAGNITUDE’ for publication.

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.

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. The contested sign is the word mark ‘MAGNITUDE’ and, as stated in the notification dated 31/05/2018, the Office defined ‘MAGNITUDE’ as ‘a number assigned to a quantity, such as weight, and used as a basis of comparison for the measurement of similar quantities. Size. A numerical quantity or value’ (information extracted from Collins Dictionary and Oxford Living Dictionaries on 31/05/2018 at https://www.collinsdictionary.com/dictionary/english/magnitude and https://en.oxforddictionaries.com/definition/magnitude). Slogans are often laudatory. Their purpose is to persuade potential customers to buy the goods or services of the enterprise in question.

In this respect, and as stated in the abovementioned letter, the sign ‘MAGNITUDE’ only highlights positive aspects of the goods in question, namely that they provide or contain a measurement of the consumer’s hearing, that is to say, the bone anchored hearing system comprising a magnetic implant, magnetic baseplate, sound processor and microphone allows the consumer to measure hearing ability (explore the magnitude of loudness for a hearing aid). The sign is a promotional slogan that gives the public a laudatory message regarding information about the apparatus but not their commercial origin. The message conveyed by the sign applied for is immediately understandable and does not require any further interpretation or analysis on the part of the relevant public, which will immediately perceive the sign as laudatory.

The relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the good concerned. They will see the mark as a purely informational message; consequently, there is no characteristic element in the mark that can be easily distinguished and that could confer the necessary degree of distinctive character, enabling the consumer to perceive it as an indication of commercial origin. Therefore, there is no characteristic element that can be easily distinguished and could confer a minimum degree of distinctive character, enabling the consumer to perceive it as an indication of commercial origin.

Furthermore, the sign applied for is a classic slogan, devoid of elements, which could, apart from its promotional function, enable the consumer concerned to easily and immediately memorise it as a trade mark for the services referred to (06/06/2013, T‑515/11, Innovation for the real world, EU:T:213:300, § 38). Consequently, the sign applied for will not be perceived as an indicator of the commercial origin of the good requested and is incapable of distinguishing them from those of other undertakings. Since the expression ‘MAGNITUDE’ does not immediately indicate to consumers the origin of their intended purchase, but provides promotional information only, they will not take the time to either enquire into the sign’s various possible functions or mentally register it as a trade mark. The relevant public will directly and immediately, without any particular mental exertion, understand that the purpose of the trade mark’s message is to highlight the positive aspects of the services concerned. Therefore, the sign will be perceived by the relevant public as a promotional slogan with a simple and direct laudatory message, rather than as a trade mark (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 29, 30; 06/12/2013, T‑428/12, Valores de futuro, EU:T:2103:629, § 46).

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).

In support of the above and for purely illustrative purposes, an internet search dated 04/10/2018 revealed that the word ‘MAGNITUDE’ is used in the field of hearing research:

(information extracted from https://jslhr.pubs.asha.org/article.aspx?articleid=1777926);

(information extracted from https://books.google.es/books?id=X87PCkAOWhsC&pg=PA138&lpg=PA138&dq=magnitude+in+hearing&source=bl&ots=dOPRPoxsJE&sig=Lp3BN8v1GvO5ucJW50QC9C‑eiqw&hl=es-419&sa=X&ved=2ahUKEwj13fqj5d3dAhUqxYUKHcphBiM4ChDoATAFegQIAxAB#v=onepage&q=magnitude%20in%20hearing&f=false);

(information extracted from https://ihsinfo.org/IhsV2/Education/028_ACA.cfm);

(information extracted from https://www.bshaa.com/News/who-calls-for-action-from-governments-to-stem-the-rise-in-hearing-loss-).

2. Regarding the assessment of the sign’s distinctive character, it is settled case-law that the distinctiveness of a trade mark must be assessed, firstly, in relation to the goods or services in respect of which registration of the sign has been requested and, secondly, in relation to the perception of the section of the public targeted, which is composed of the average consumers of those products or services (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 38; 07/06/2005, T‑316/03, MunichFinancialServices, EU:T:2005:201, § 36). The way in which the relevant public perceives a trade mark is influenced by the average consumer’s degree of attention, which is likely to vary according to the category of goods and services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25, 26; 05/04/2017, T‑291/16, Device of two drawn lines (fig.), EU:T:2017:253, § 20).

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).

3. The applicant states that ‘measure’ and ‘measurement’ are different words. However, even if those words were not interchangeable, both refer to a quantity or value. As stated above, the sign ‘MAGNITUDE’ indicates to the consumer that it refers to a measure of hearing ability. Moreover, the assessment of a trade mark must be conducted in the context of the goods and services for which registration is sought. This context is a significant interpretative aid in understanding how consumers will perceive the contested mark. Even though the mark could be considered somewhat vague in its conceptual content when viewed in isolation, any such vagueness or lack of clarity will be minimised or eliminated when consumers encounter it in the context of the relevant goods and services.

It suffices that the term is meant to be used, or could be understood by the relevant English-speaking consumer, as a laudatory slogan, the function of which is to communicate a customer service statement that serves merely to highlight positive aspects of the good for which protection is sought.

In this regard, the applicant also stated that a slogan is a short and striking or memorable phrase used in advertising, whereas the sign ‘MAGNITUDE’ is a single word and not a group of words. The Office points out that a slogan can be formed by only one word; this is because a slogan is a phrase used to advertise and, according to Oxford English Dictionary and English grammar rules, a phrase can also be a single word that has an equivalent syntactic function.

4. 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).

5. As regards the UKIPO publication referred to by the applicant that has been accepted for the same good, 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/international system. Consequently, the registrability of a sign as a European Union trade mark can therefore be assessed only on the basis of the relevant EU legislation. Accordingly, the Office and, if appropriate, the European Union judicature are not bound by a decision given in a Member State, or indeed a third country; therefore, the abovementioned application cannot lead to a different result.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 900 211 ‘MAGNITUDE’ 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.

Moises Paulo ROMERO CABRERA