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

(Article 7 EUTMR)

Alicante, 28/08/2019

LEWIS SILKIN LLP

5 Chancery Lane

Clifford’s Inn

London EC4A 1BL

REINO UNIDO

Application No:	017951200
Your reference:	PH/88706.82
Trade mark:	BE GOOD TO YOURSELF
Mark type:	Word mark
Applicant:	J SAINSBURY PLC 33 Holborn London EC1N 2HT REINO UNIDO

The Office raised an objection on 26/11/2018 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 18/01/2019, which may be summarised as follows.

1. The distinctiveness of the trade mark is supported by the fact that two registrations for ‘BE GOOD TO YOURSELF’ have been obtained in the EU in relation to goods in Classes 29, 30, 31, 32 and 33 (EUTMs No 1 027 093 and No 15 417 744).

2. The words ‘BE GOOD TO YOURSELF’ do not have any readily discernible meaning when used in connection with the services for which protection is sought.

3. There is no direct relationship between the trade mark ‘BE GOOD TO YOURSELF’ and business, loyalty, incentive, promotional and retail services. Further, the ordinary words ‘BE GOOD TO YOURSELF’ do not indicate the kind, purpose and/or other characteristics of the services for which registration is sought (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86).

4. The trade mark is not a trade mark that is likely to be needed by other traders in Europe, without improper motive, in relation to the services for which protection is sought. Whilst the term is likely to be attractive to consumers, it is not an ordinary term used to describe the characteristics of the services for which protection is sought (i.e. business, loyalty, incentive, promotional and retail services). At the very most, the mark is allusive to the character of the services.

5. It is clear from the above that the examiner has engaged in a detailed academic exercise in order to extrapolate an alternative meaning of the trade mark. The combination of the words ‘BE GOOD TO YOURSELF’ together in relation to the services applied for is distinctive, and is not merely perceived by the public as a promotional laudatory slogan.

6. A minimum distinctive character is sufficient to accept a trade mark application (27/02/2002, T‑34/00, Eurocool, EU:T:2002:41, § 39), and the trade mark clearly attains the minimum requirement of distinctive character.

7. Reference is made to the following EU trade marks accepted by the Office:

• EUTM No 15 590 581, ‘LOOK GOOD, FEEL GOOD, DO GOOD’, in Classes 35, 35, 40

• EUTM No 1 367 599, ‘GOOD SCIENCE BEAUTY’, in Classes 3, 5, 21, 35, 44

• EUTM No 1 416 103, ‘GOOD HEALTH FOR ME’, (fig.) in Classes 5, 35, 41, 42

• EUTM No 1 321 690, ‘FEEL GOOD’, (fig.) in Classes 9, 14, 16, 18, 22, 24, 25, 35, 39, 40

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.

General remarks on Article 7(1)(b) and Article 7(2) 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).

The particular word combination ‘BE GOOD TO YOURSELF’ may be perceived as a slogan. It is true that, as a rule, the concrete distinctive character of so-called advertising maxims cannot be disputed by arguing that a certain advertising effect can be attributed to them in addition to their identifying function (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29).

Settled case-law establishes that difficulties in establishing distinctiveness for certain categories of trade marks, such as those consisting of advertising slogans, do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460). However, advertising slogans must always be examined to see whether there are elements which, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and/or services designated. A lack of necessary distinctiveness is a bar to registration of the trade mark.

A sign which, like an advertising slogan, fulfils functions other than that of a trade mark 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, § 19-20).

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

Regarding the applicant’s arguments

Regarding EUTM registrations No 1 027 093 and No 15 417 744, ‘BE GOOD TO YOURSELF’ in the name of the applicant, it is acknowledged that the signs are registered in Classes 29, 30, 31, 32, 33. However, the contested mark, although with the same denomination, is seeking protection for Class 35. It is true that the Office should endeavour to apply consistent practice in examining trade marks in relation to absolute grounds for refusal. However, apart from the fact that registration practices develop over time, it is unfortunately inevitable that doubtful trade marks are sometimes registered. EUTM No 15 417 744 gave rise to doubt about the registrability of the mark, as confirmed by the notice of grounds for refusal issued on 23/06/2016. This EUTM application had an objection raised against it for all goods in Classes 29, 30, 31, 32, and 33, although the Office finally waived the objection.

In this regard, it should be noted that the principle of equal treatment and sound administration must be reconciled with the principle of legality. A party that files an application for registration for a sign as a trade mark cannot rely, to their advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else or itself. Additionally, for reasons of legal certainty and sound administration, the examination of any trade mark must be stringent and full, in order to prevent trade marks from being improperly registered. This examination must be undertaken in each individual case. The registration of a sign as a trade mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether a ground for refusal applies to the sign at issue. The abovementioned considerations apply even if the sign for which registration is sought as an EU trade mark is composed in a manner identical to that of a mark in respect of which the Office has already approved registration as an EU trade mark and which relates to goods and services similar to those in respect of which registration of the sign in question is sought (09/11/2016, T‑290/15, SMARTER TRAVEL (fig.), EU:T:2016:651, § 68-70 and case-law cited therein).

The Office agrees that the sign does not indicate the kind, purpose and/or other characteristics of the services of the application. However, while the sign does not have a direct descriptive connotation, it is, nonetheless, because of its meaning in context with the services, entirely devoid of distinctive character. 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 which, whilst 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, § 31).

The meaningful sign ‘BE GOOD TO YOURSELF’, used in relation to the services in Class 35, would be seen as a promotional statement that merely serves to exhort consumers to care about themselves (their health, or just to satisfy their needs or wants).

This conclusion is not undermined by the fact that the sign does not provide details about how to be good to yourself. Slogans are rarely specific; their purpose is to make a product or a service sound attractive and it is not usually necessary to describe the positive characteristics of that product or service in detail to achieve this aim. Therefore, it is common for promotional messages to convey only abstract information, allowing consumers to believe that their individual needs are being addressed. However, according to case-law, a slogan may be merely laudatory and, therefore, devoid of distinctive character not only when it praises specific characteristics that are to be directly assigned to the goods or services covered, but also when it praises their abstract characteristics or when it provides merely promotional information.

The sign ‘BE GOOD TO YOURSELF’ does not introduce elements of intrigue nor does it trigger a cognitive process in the minds of consumers, requiring an interpretative effort on their part to understand it. Since the relevant public is not very attentive, if a sign does not immediately indicate the origin or intended use of the goods or services, but instead gives just purely promotional, abstract information, they will not take the time to enquire into the sign’s various possible functions or register it mentally as a trade mark (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28-29).

The Office is of the opinion that the expression ‘BE GOOD TO YOURSELF’ is not an original play on words and contains no imaginative, surprising or unexpected element that confers on it a distinctive character in the minds of the relevant public. There is no particular originality in the trade mark for which protection is sought, nor does the mark trigger a cognitive process in the minds of consumers as the slogan has an easily understandable meaning. The way in which the words are employed is in no way unusual. The combination of words conforms to the rules of syntax and grammar in the English language and its structure is not unusual for that language.

Accordingly, the sign at issue is in the form of a classic slogan, devoid of elements that could, apart from its promotional function, enable the average consumer concerned to easily and immediately memorise it as a trade mark for the goods for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44, 45, 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no function to indicate commercial origin in relation to those goods or services (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

The applicant also claimed that the trade mark was not a usual, common or even likely way of referring to the services in Class 35 for which protection is sought (i.e. business, loyalty, incentive, promotional and retail services). As mentioned above, the relevant public does not expect promotional slogans to be precise or to fully describe the characteristics of the services at issue. A slogan is a short, easily remembered phrase, especially one used to advertise an idea or a product. It is a common characteristic of promotional slogans to convey only abstract information that allows consumers to appreciate that their individual needs are addressed. Accordingly, case-law has consistently refused registration to slogans that could appear, a priori, as ‘vague and indefinite’ when seen in the abstract (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183).

Consumers who encounter the sign will not perceive it as a reference to a specific commercial origin, but will more likely see a reference therein to the fact that they might be kind or generous to themselves and/or allow themselves something good. Consequently, the consumers targeted will perceive the sign as a promotional formula and not as an indication of commercial origin. This is why the trade mark for which protection is sought is not, prima facie, distinctive. It could originate from any service provider, as long as the consumer is unable to identify a link to a specific provider as a consequence of extensive use (Article 7(3) EUTMR).

Overall, the sign at issue does not appear unusual and does not have any characteristic element or eye-catching features likely to confer a minimum degree of distinctive character to the sign that could enable the consumer to perceive it as an indication of commercial origin. The sign for which protection is sought would merely be perceived as a laudatory message about the services on offer. Accordingly, it is devoid of elements that could enable the relevant average consumer easily and immediately to memorise it as a trade mark for the goods for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44‑45, 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no function to indicate commercial origin in relation to the goods and services for which protection is sought (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

In the light of the foregoing, the association between the semantic content of the contested mark ‘BE GOOD TO YOURSELF’ on the one hand, and the services in question on the other, is sufficiently concrete and direct to prove that the sign enables the relevant public to identify the intended purpose of those services immediately. Accordingly, the sign applied for is necessarily devoid of any distinctive character with regard to the services, within the meaning of Article 7(1)(b) EUTMR (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, and case-law cited therein).

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the services to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

The Office respectfully disagrees with the applicant that the examiner has engaged in a detailed academic exercise in order to extrapolate an alternative meaning of the trade mark. Moreover, the applicant did not explain why the consumer would depart from the common meaning the phrase conveys, as explained by the Office, and why the sign would be seen as a business identifier. The applicant did not offer any alternative meaning or any explanation as to how this word sequence could have any application outside the promotional and advertising context that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily as a distinctive trade mark for the services designated.

With regard to the applicant’s argument that the Office had accepted similar trade marks, those decisions are not the subject of these proceedings. The applicant cannot successfully rely on other registered EU trade marks. Every trade mark is assessed on its own merits and the final assessment is based on specific grounds in every particular case. The circumstances which led to the acceptance of other marks cannot be a subject of the objections in the present proceedings, nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at issue. Although it is correct that, when making an assessment, consistent appraisals should be sought as far as possible, this cannot lead to trade marks that are considered ineligible for registration being registered solely because other marks which include one of their elements have been registered. The mere fact that a trade mark contains the word ‘GOOD’ does not make it similar to the sign applied for nor lead to the conclusion that the mark applied for would be distinctive. The overall impression created by each of these marks is not similar to that created by the sign ‘BE GOOD TO YOURSELF’.

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).

In view of the foregoing, the applicant has not succeeded in convincing the Office that the sign ‘BE GOOD TO YOURSELF’ will be perceived by consumers as indicating the commercial origin of the services in question.

The Office takes note of the subsidiary claim of acquired distinctiveness. The procedure on acquired distinctiveness will be initiated once the examination of the inherent registrability of the sign is finalised.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 17 951 200 is declared to be non-distinctive pursuant to Article 7(1)(b) at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. for the public in Ireland, Malta and the United Kingdom, for all services claimed.

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.

Michaela POLJOVKOVA