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

(Article 7 EUTMR)

Alicante, 22/07/2019

DECHERT LLP

160 Queen Victoria Street

London EC4V 4QQ

REINO UNIDO

Application No:	017953416
Your reference:	960423/025533
Trade mark:	THE WORLD'S ONLY SIX STAR LUXURY INCLUDED VACATION
Mark type:	Figurative mark
Applicant:	Sandals Resorts International 2000 Inc España Avenue, and Aquilino De La Guardia St Ner. 1 Beta Building Post Office Box 0823-04699 Panamá PANAMÁ

The Office raised an objection on 08/10/2018 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 10/12/2018, which may be summarised as follows.

• The applicant states that the expression ‘THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION’ taken as a whole create an inventive and unusual combination. According to the applicant the relationship between those words and the refused services is not sufficiently direct and specific such that the relevant public would immediately perceive such words as a description of the goods and services. In this regard, the applicant refers to the Guidelines and mentions that the relevant public in respect to the refused services is particularly astute and is accustomed to perceiving and attaching significance even to minor syntactical variations.

• The applicant states that the term ‘SIX STARS’ would be perceived by the relevant public as an usual and inventive term given that the maximum awards for hotels are five stars. It has attached an annex, explaining the rating systems for the UK’s authoritative hotel rating entities.

• As regards ‘LUXURY INCLUDED’, the applicant considers that is a creative and non-descriptive and this would be confirmed by the fact that this term has been registered as an EUTM by the applicant. Moreover the applicant states that when a search is made in google.co.uk using the term “six star luxury included”, returns only results relating to the applicant’s goods and services.

• With regard to the term ‘THE WORLD’S ONLY’, the applicant considers that this term would indicate to the relevant public that the application denotes the services of a single commercial entity.

• Summarizing, the applicant considers that the words ‘THE WORLD’S ONLY SIX STAR LUXURY INCLUDED VACATION’ are syntactically highly unusual, although it also recognizes that those words are allusive of the characteristics of the refused services.

• With regard to the logo included in the application and consisting in a star included in a number ‘6’, the applicant states that this logo is the dominant element of the application and would enjoy of distinctive character. This would made that the application would diverge from the mere perception of the word elements used and render the application sufficiently distinctive as a whole.

• The applicant also states that the application includes stylistic elements in addition to the above-mentioned logo that, in combination with the other elements of the mark, would make that the sign is perceived by consumers as a badge or origin.

• In conclusion the applicant considers that the mark will be perceived by consumers as a badge of origin given that the combination of words is unusual and fanciful and the figurative elements are prominent elements that would help to overcome this objection.

• Finally, the applicant has submitted an acquired distinctiveness claim as a secondary 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).

Furthermore, Article 7(2) EUTMR states that a trade mark shall not be registered, even if the grounds of non-registrability are met only in part of the European Union. An obstacle pertaining to the English-speaking population of the European Union is consequently sufficient to reject the trade mark application.

Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that descriptive signs or indications relating to the characteristics of the goods in respect of which registration is sought may be freely used by all. This provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (04/05/1999, C- 108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 25; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 27; 08/04/2003, C-53/01, C-54/01 and C-55/01, Linde, EU:C:2003:206, § 73; 06/05/2003, C-104/01, Libertel. EU:C:2003:244, § 52; 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35 and 36; 27/04/2016, T-89/15, Niagara, EU:T:2016:244, § 12).

The signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 28, 27/04/2016, T-89/15, Niagara, EU:T:2016:244, § 12).

The descriptiveness of the sign has to be assessed in relation to services for which registration is sought and by reference to the relevant public’s perception of it (02/04/2008, T-181/07, Steadycontrol, EU:T:2008:362, § 38; 21/05/2008, T-329/06, E, EU:T:2008:161, § 23). In the present case, the services at issue are, in essence, travel, restaurant, bar and hotel services. These services are aimed at average consumers who are reasonably well informed and circumspect.

In this case and since the sign applied for is composed, in its verbal elements at least, of meaningful word elements in English, the public to be considered is the English-speaking general public in the European Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Moreover and as reported in the objection of 08/10/2018, the Office will also consider that the public by reference to whom the absolute ground of refusal must be assessed consists of the English-speaking public, which includes the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom.

In this regard and regarding the relevant public, the applicant refers to paragraph 2.11 of the Guidelines for Examination of European trade marks, Part B, Section 4, Chapter 4, However, this paragraph is not related to this case, given that the mentioned section of the guidelines refers to trademarks that include the term ‘HOTEL’ and this is not the case. Moreover, the Office has not found any reference in that paragraph, to the fact that the relevant public in respect of the refused services is particularly astute and accustomed to perceiving and attaching significance event to minor syntactical variations.

The Office has assessed the individual components of the mark, but the objection is based on an assessment of the mark as a whole. On this basis, the Office maintains its position and finds that the current mark describes the kind, quality and value of the services in question. Therefore, the Office finds the mark to be non-distinctive for the reasons explained below.

The sign applied for ‘ ’ is composed of:

• Word elements consisting of:

• The English words ‘THE WORLD’S ONLY”;

• Below it and in a bigger typeface, the words ‘SIX STARS’

• Figurative element consisting of the number ‘6’ that includes a star.

• Word elements consisting of:

• The English words ‘ LUXURY INCLUDED’

• Below it and in a bigger typeface, the word ‘VACATION’

The office will analyse all those elements in isolation for, later, reaching a conclusion taken them into account as a whole.

It is important to note that, 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 (judgment of 19/09/2001, T 118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

First of all and with regard to ‘THE WORLD’S ONLY’, the applicant states that this expression would indicate to the relevant public that the applicant denotes the services of a single commercial entity. However and taking into account that the sign does not include any distinctive element and is not distinctive analysed as a whole, this argument cannot be taken into account by the Office. Indeed, this expression could be perceived by consumers as referring to a particular establishment with unique characteristics but, taking into account that the sign cannot identify a concrete business origin, it would be impossible for consumers to individualize this particular establishment.

Secondly and in relation to the words ‘SIX STARS’, the applicant argues that there is a system of awarding hotel/resorts a rating using stars and that the maximum is five stars, what would imply that ‘SIX STARS’ is not perceived as a description of an essential characteristic of the relevant services.

The Office, disagrees with this statement. In this regard and further to searches conducted in Google, it is not clear that the maximum rating for a hotel are five stars but six stars and up to sever stars. Even if in some cases this is not an official distinction, it is a fact that it is a market reality and relevant consumers would perceive the element ‘SIX STARS’ as referring to the quality of the services, when these services are related, in particular, to hotel, accommodation, etc.

We include below some links from Google that demonstrate this statement:

• http://www.tubehotels.com/blog/london-hotel-news/londons-six-star-hotel-the-wellesley/ (extracted on 15 July 2019):

• https://www.wsj.com/articles/SB110297851053298992 (extracted on 15 July 2019):

• https://getawaytips.azcentral.com/list-of-6-star-hotels-12385042.html (extracted on 15 July 2019):

• https://sixstarhotels.org/ (accessed on 15 July 2019):

With regard to the terms ‘LUXURY INCLUDED’, those terms are commonly used in relation to the services objected in this particular case. In particular, ‘LUXURY’ (‘The use and enjoyment of the best  and most costly  things that offer  the most physical  comfort and satisfaction ’, definition from https://www.collinsdictionary.com/es/diccionario/ingles/luxury extracted on 18 July 2019) refers to ‘LUXE’ and is used by hotel/travel operators in order to qualify the category of their establishments/services. If we relate this term with ‘INCLUDED’, it is a fact that the message that will be received by consumers is that this trademark refers to a establishment/company (that cannot be individualized given that the trademark does not include any distinctive element) where the “luxury is included”, namely, that offers luxury services to consumers. Moreover, ‘INCLUDED’ could refer to the kind of services offered when making a hotel reservation (sometimes customers can choose between half-board, full-board, and ALL SERVICES INCLUDED). Therefore, the Office considers that the expression ‘LUXURY INCLUDED’ would not differ in the mind of the relevant consumers form the above-mentioned definitions.

Moreover, as to the applicant’s claim that the term ‘LUXURY INCLUDED’ is solely used by itself (according to the results obtained from google.co.uk), the Office recalls that the perception of the mark applied for will not depend on the way it is, or is not, used by other traders. European Union trade mark law does not require that a word actually be part of normal usage by the competitors of the applicant or included in a dictionary in order to warrant its refusal as a EUTM (see, by analogy, 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 97).

As regards the argument from the applicant in relation to the registration of the trademark “LUXURY INCLUDED” for similar services it is important to note that, according to settled case law, ‘decisions concerning registration of a sign as a European 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 trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the European 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).

Finalizing with the word elements, the term “VACATION” makes a direct reference to the objected services and, therefore, would be perceived by consumers as a mere descriptive element in relation to those services. This finding has not been disputed by the applicant.

In light of the above, the Office fails to see how the sign’s verbal elements, as a whole, could create in the relevant consumers’ minds an overall impression that is sufficiently far removed from that produced by the mere combination of the descriptive meanings lent by the words ‘THE WORLD’S ONLY’ – ‘SIX STAR” – ‘LUXURY INCLUDED’ – ‘VACATION’.

The combination of all those descriptive terms does not possess any additional characteristic so as not to be exclusively descriptive for (the essential characteristics of) the services applied for (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 22-24).

As regards the contested sign’s figurative elements, it must be borne in mind that, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods or services in question by citing the name rather than describing the figurative element of the mark (09/11/2016, SMARTER TRAVEL (fig.), EU:T:2016:651, § 36 and the case-law cited therein).

For the assessment of the descriptive character of the sign at issue, the decisive question is whether the figurative elements change, from the perspective of the relevant public, the meaning of the mark in relation to the services concerned (18/10/2016, T-776/15, MEISSEN KERAMIK, EU:T:2016:617, § 32 and the case-law cited therein).

In relation to this, it must be recalled that a figurative mark can be refused registration if it contains both descriptive and non-descriptive elements if the latter are not capable of diverting the public’s attention from the descriptive message of the descriptive elements (14/01/2016, T-318/15, TRIPLE BONUS, EU:T:2016:1, § 31).

A graphic style, even if it has some specific feature, may be regarded as a distinctive figurative element only if it is capable of conveying an immediate and lasting impression which members of the relevant public may retain in a way that makes it possible for them to distinguish the services of the applicant for the figurative mark from those of the other providers on the market (see, by analogy, 27/10/2016, T-37/16, CAFFÈ NERO (fig.), EU:T:2016:634, § 42), which is not the case with the sign at hand.

In the present case, the figurative elements are limited to a number six, including a star:

Contrary to the applicant’s arguments in this respect, these figurative elements do not possess any feature as regards the way in which they are combined together with the word elements to allow the sign to fulfil its essential function in relation to the services covered by the application (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47).

Indeed, these figurative elements will immediately bring to consumers’ mind the expression ‘SIX STARS’ also included in the application that, as it has been demonstrated above, is descriptive and non distinctive in relation to the objected services.

Therefore, the figurative elements do not add anything unusual to the sign’s perception by the relevant public, which would render the sign fanciful and therefore be able to attribute distinctive character to the sign applied for. The overall message conveyed by the mark is merely the sum of the respective meanings of each word. Contrary to the applicant’s arguments, the mark is unambiguous and contains no hidden meaning that could diminish the descriptive message conveyed by the ‘THE WORLD’S ONLY’ – ‘SIX STAR” – ‘LUXURY INCLUDED’ – ‘VACATION’ (03/12/2015, T-648/14, DUALTOOLS, EU:T:2015:930, § 24; 11/02/2012, T-559/10, Natural Beauty, EU:T:2012:362, § 26-27).

Consequently, the Office considers that the sign as a whole informs the consumer – immediately and without further reflexion – about the kind, quality and value of the services in question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17953416 is hereby rejected for the following services:

Class 35 Business and hotel management and hotel administration; advertising services in relation to travel and hotel accommodation; operation and supervision of loyalty schemes and incentive schemes; Providing consumer product information relating to food or drink products.

Class 36 Discount card services; discount card services provided for leisure purposes.

Class 39 Transport; arranging of cruises; arranging of tours; booking of seats for travel; travel reservations; sightseeing; planning services and organisation of travel for honeymoons; organisation and planning of travel arrangements for holidays; flower delivery; holiday and honeymoon planning services, namely booking of holiday travel and flights and provision of advice in relation to the aforesaid; holiday and honeymoon planning services, namely booking of cultural visits and provision of advice in relation to the aforesaid.

Class 41 Nightclub services; holiday and honeymoon planning services, namely booking of entertainment and provision of advice in relation to the aforesaid

Class 43 Hotels, resort hotels, motels and guest house services; accommodation services; hotel reservation services; provision of conference and meeting facilities; restaurant, bar and cafe services; catering services; cafeteria services; catering services including the supply of celebratory cakes; crèche and nursery facilities; reservation services for booking accommodation and meals; bar services and bar, wine bar, snack bar, coffee bar services, hotel-in and check-out services; holiday and honeymoon planning services, namely booking of accommodation and restaurants and provision of advice in relation to the aforesaid.

The application may proceed for the remaining goods and services, namely:

Class 16 Printed matter; items for bookbinding; souvenir catalogues; travel and vacation magazines; discount cards (other than encoded or magnetic); photographs; posters; stationery, writing paper and envelopes; pens and pencils, adhesives material for stationery and for household use; artists' materials; paint brushes; printer's type; printing blocks; typewriters and office requisites excluding furniture; instructional and teaching material except for the apparatus; plastic materials for packing not included in other classes.

Class 25 Clothing, footwear and headgear.

Class 43 Provision of facilities for weddings and wedding receptions.

Class 44 Hygienic and beauty care for human beings or animals; beauty salons; facials; hydro-therapy; manicures and pedicures; massage; mud treatments; spas; hairdressing services; hairdressing salons; beautician services; provision of flowers and floral arrangements.

Class 45 Personal and social services rendered by others to meet the needs of individuals, namely, babyminding services, childcare services; wedding planning services; planning of other celebratory occasions, arrangement of marriage ceremonies, preparation of wedding guest lists, invitations, wedding scripts and place settings, arranging and coordinating of wedding present lists, hire and provision of bridal or other occasion wear and jewellery, maid and valeting services.

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.

Pablo AMAT RODRIGUEZ