Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 17/06/2019

ARNASON FAKTOR

Gudridarstig 2-4

Reykjavik 113

ISLANDIA

Application No:	017936815
Your reference:	TM20022EU00
Trade mark:	ENABLING PERFORMANCE
Mark type:	Word mark
Applicant:	5N Plus Inc. 4385 rue Garand Montréal Quebec H4R 2B4 CANADÁ

The Office raised an objection on 24/08/2018 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.

With the above notice the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 24/10/2018, which may be summarised as follows:

1. The word combination ‘ENABLING PERFORMANCE’ is neither catchy nor banal, and the relevant consumers would not see this unusual combination of words as a slogan, but rather as a puzzling expression with no obvious relation to the goods in question. The mark is a rather neutral expression in and of itself. It is an unusual combination of words that the consumer would not identify with the goods in question.

2. The phrase ‘ENABLING PERFORMANCE’ is not laudatory, as the word ‘performance’ is not inherently positive. Performance can be either positive or negative, and the combination ‘ENABLING PERFORMANCE’ therefore indicates nothing about the quality of the goods in question, merely that performance is ‘made possible’. The consumer will probably view the combination as an unusual and puzzling expression, as the words are seldom used together.

3. The applicant finds that, in her reasoning, the examiner expanded the meaning of the expression ‘ENABLING PERFORMANCE’ far beyond what can be deduced from the words comprising the mark themselves. The mark must be considered as a whole, and the examiner cannot divide the sign into its component parts and find that each of those parts by itself is non-distinctive or attempt to attach a specific meaning where none is intended. Therefore, the examiner’s claim that ‘the goods in question are advised by professionals in order to support performance of animals in areas such as speed, strength and stamina’ must be completely disregarded, as the mark in no way proposes this meaning in relation to the goods to which an objection has been raised.

4. The applicant refers to various EU trade marks accepted by the Office:

• PRO PERFORMANCE (EUTM No 10 752 103)

• ENABLING BRILLIANCE (EUTM No 6 653 752)

• ENABLING POWER (EUTM No 9 379 363)

• ENABLING POWER EFFICIENCY (EUTM No 9 591 769)

• ENABLING SPACE (EUTM No 10 873 362)

• ENABLING ENERGY (EUTM No 10 297 323)

• PASSION FOR PERFORMANCE (EUTM No 14 271 787),

and claims that, when examining an application for registration of an EUTM, the EUIPO must take into account decisions already taken in respect of similar applications and consider with special care whether to decide in the same way or not.

5. The applicant has applied for protection of the mark in numerous countries, inter alia in the United States, where the examiners made no comment regarding the mark’s distinctiveness.

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 reasons are as follows.

General remarks on Article 7(1)(b) EUTMR

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).

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).

As to the applicant’s arguments

1. The applicant argued that the word combination ‘ENABLING PERFORMANCE’ was neither catchy nor banal, and the relevant consumers would not see this unusual combination of words as a slogan, but rather as a puzzling expression with no obvious relation to the goods in question. The mark was a rather neutral expression in and of itself and an unusual combination of words that the consumer would not identify with the goods in question.

As pointed out in the Notice of grounds for refusal, the relevant English-speaking consumer would understand the sign as ‘making something possible, easier to do’. Both definitions were extracted from the Cambridge Dictionary and constitute clear evidence of the two meanings. The meaning of the sign does not leave any room for doubt. The structure of the sign is grammatically correct and does not trigger any mental process to arrive at its meaning. The mark lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous — to make something possible or easier to do. It is, as a whole, a simple message that could be attributed to any producer of animal supplements or feed, with the natural consequence that it does not indicate the origin of the goods.

Additionally, and contrary to the applicant’s assertion that the relevant consumer would not see this unusual combination of words as a slogan, the Office maintains that the sign in question is a phrase currently used in advertising.

For a finding of no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods/services relating to their market value that, while not specific, comes from promotional or advertising information that the relevant consumer will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods/services in question (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

2. The applicant maintained that the phrase ‘ENABLING PERFORMANCE’ was not laudatory, as the word performance was not inherently positive. Performance could be either positive or negative, and the combination ‘ENABLING PERFORMANCE’ therefore indicated nothing about the quality of the goods in question, merely that performance was ‘made possible’. The consumer would probably view the combination as an unusual and puzzling expression, as the words were seldom used together.

Even if the word ‘PERFORMANCE’ is a rather neutral word and can be either positive or negative, the word ‘ENABLING’ has an unequivocally positive connotation, as this word means ‘making something possible, easier to do’, and not ‘making something impossible or more difficult’. It follows that the mark as a whole conveys the notion that animal supplements, feed or foodstuffs are suitable for animals to enable their desired performance (not necessarily the best, but wanted or appropriate, and thus positive). Moreover, the fact that the expression at issue could be interpreted in a number of ways (negatively or positively), does not alter its nature as, inter alia, laudatory.

[T]he 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 applicant claimed that the consumer would probably view the combination as an unusual and puzzling expression, as the words were seldom used together. However, the Office is of the opinion that the interpretation of the sign does not trigger any mental process to arrive at its meaning. The structure of the sign is grammatically correct, and it conveys a straightforward and meaningful message that the goods applied for are animal supplements, feed or foodstuffs suitable for animals to enable their desired performance.

3. The applicant found that, in her reasoning, the examiner had expanded the meaning of the expression ‘ENABLING PERFORMANCE’ far beyond what could be deduced from the words comprising the mark themselves. The mark had to be be considered as a whole, and the examiner could not divide the sign into its components parts and find that each of those parts by itself was non-distinctive or attempt to attach a specific meaning where none was intended. Therefore, the examiner’s claim that ‘the goods in question are advised by professionals in order to support performance of animals in areas such as speed, strength and stamina’ had to be completely disregarded, as the mark in no way proposed this meaning in relation to the goods to which an objection has been raised.

In assessing the mark in question, the Office has taken the following into account:

(a) the mark as a whole;

(b) its distinctive character, assessed in relation to the goods in question;

(c) the overall impression produced by the mark, taking into consideration the commercial field in which the relevant goods are generally marketed.

Ad (a)

The Office agrees with the applicant that, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (09/07/2003, T‑234/01, ‘Orange und Grau’, EU:T:2003:202, § 32). Taking into account the abovementioned principle, the Office provided definitions of both ‘ENABLING’ and ‘PERFORMANCE’ in the Notice of grounds for refusal on 24/08/2018. Accordingly, it was established that the relevant consumer will understand the sign as meaning ‘making something possible, easier to do’. Taken as a whole, the expression ‘ENABLING PERFORMANCE’ transmits an abstract but easily understandable message to the customer. This message does not require any further interpretation, thought or analysis on the part of the relevant public, as the public is led to associate the sign instantaneously with a promotional message, in particular, a promotional promise to enable the desired performance (see 07/05/2014, R 2286/2013‑5, We care for the things you love).

Ad (b)

The distinctive character of a trade mark must be assessed, first, in relation to the goods and services in respect of which registration of the sign is sought, and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T 348/02, Quick, EU:T:2003:318, § 29). Taking this principle into account, the Office provided the applicant with reasoning on how the relevant public will perceive the sign in relation to the goods and services for which protection is sought, namely animal supplements, feed or foodstuffs suitable for animals to enable their desired performance to obtain and/or maintain progressive conditioning.

Ad (c)

Finally, the Office has taken into consideration the overall impression produced by the mark and the commercial field in which the relevant goods are generally marketed. As the goods to which the objection applies are animal feed supplements and animal foodstuffs, the Office took into consideration the commercial field related to the nutrition of animals. The market reality is that, as stated in the Notice of grounds for refusal, the goods in question are recommended by professionals to support the performance of animals in areas such as speed, strength and stamina. Therefore, the Office has not expanded the meaning of the expression ‘ENABLING PERFORMANCE’ far beyond what can be interpreted by the words comprising the mark themselves. The Office has merely provided reasoning to help clarify how the relevant consumer will understand the sign in question.

In conclusion, this message does not allow the public at whom the goods are targeted to be informed as to the commercial origin of the goods. The trade mark applied for is therefore not prima facie distinctive. It could originate from any supplier, as long as the consumer is unable to create a link to a specific supplier in consequence of extensive use (Article 7(3) EUTMR).

4. The applicant referred to various EU trade marks accepted by the Office:

• PRO PERFORMANCE (EUTM No 10 752 103)

• ENABLING BRILLIANCE (EUTM No 6 653 752)

• ENABLING POWER (EUTM No 9 379 363)

• ENABLING POWER EFFICIENCY (EUTM No 9 591 769)

• ENABLING SPACE (EUTM No 10 873 362)

• ENABLING ENERGY (EUTM No 10 297 323)

• PASSION FOR PERFORMANCE (EUTM No 14 271 787),

and claimed that, when examining an application for registration of an EUTM, the EUIPO had to take into account decisions already taken in respect of similar applications and consider with special care whether to decide in the same way or not.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, the applicant cannot successfully rely on other registered EU trade marks. Every trade mark is assessed on its own merit, and the final assessment is based on specific grounds in each particular case. The mere fact that the trade marks cited contain the word ‘PERFORMANCE’ or ‘ENABLING’ does not necessarily make them similar to the sign applied for. The circumstances that led to the acceptance of these marks cannot be the subject of the objections in the present proceedings, nor is their acceptance a valid argument to overcome the objection of lack of distinctiveness of the sign in question. Additionally, the trade marks referred to by the applicant contain various verbal elements in addition to the word ‘PERFORMANCE’ or ‘ENABLING’. Therefore, the overall impression created by each of these marks is not similar to that created by the sign ‘ENABLING PERFORMANCE’.

Moreover, 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. The applicant has applied for protection of the mark in numerous countries, inter alia in the United States, where the examiners made no comment regarding the mark’s distinctiveness.

As regards the national trade marks referred to by the applicant (which do not specify any country except the United States of America),

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).

Since even registrations made in Member States are not decisive factors, it follows a fortiori that registrations made in third countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that criteria identical to those set out in Article 7(1)(b) in combination with Article 7(2) EUTMR were met in those countries.

As regards the acceptance or registration of the identical mark in the United States of America, it suffices to note that, even though this may be taken into consideration, the registration of a trade mark in the U.S.A. is subject to different legal provisions, jurisprudence and interpretations from that of EU trade mark applications. The European trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, as regards registration in the United States of America, 24/01/2008, T-88/06, ‘Safety 1st’,EU:T:2008:15).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 936 815 is hereby rejected for the following goods:

Class 5 Animal feed supplements; animal dietary supplements; animal nutritional supplement; animal supplements.

Class 31 Animal feed; animal foodstuffs; non-medicated additives for animal feed; non-medicated animal functional feed.

The application may proceed for:

Class 35 Retail or wholesale services for metals, salts, metallic powders, semiconductor compounds, chemicals and low melting point alloys.

Class 40 Production and transformation of metals, salts, metallic powders, semiconductor compounds, chemicals and low melting point alloys; recycling of metals.

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.

Michaela POLJOVKOVA