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

(Article 7 EUTMR)

Alicante, 13/06/2019

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	017957810
Your reference:	T311711JBP
Trade mark:	DISCOVER A BETTER WAY
Mark type:	Word mark
Applicant:	ANGUS CHEMICAL COMPANY 1500 E Lake Cook Road Buffalo Grove, Illinois 60089 ESTADOS UNIDOS (EE UU)

The Office raised an objection on 16/10/2018 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 and an extension of time until 16/02/2019, the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 11/02/2019, which may be summarised as follows:

1. The relevant consumer would perceive the mark as a badge of origin as the trade mark has been used consistently across the applicant’s website, social media, brochures and exhibitions, together with the TM symbol. This use makes it quite clear to the relevant consumer that the trade mark acts as a badge of origin (to support the above, the applicant attached printouts (Annex 1), brochures (Annex 2) and photographs from a trade show (Annex 3)).

2. The consumer will question what the ‘better way’ relates to, for example, whether the goods are more efficient, cost-effective, sustainable or ethical. The trade mark is vague and ambiguous in its meaning, and as such, it cannot be said that it would be immediately perceived by the relevant consumer as conveying any particular information. It is not clear how the examiner has come to the conclusion that it would be perceived as relating to finding the ‘best combination’.

3. The trade mark is vague in terms of meaning and open to interpretation by the consumer. It will necessarily make consumers stop and think. The mark introduces elements of intrigue and triggers a cognitive process in consumers, requiring an interpretative effort on their part to understand it. As such, the trade mark is distinctive since consumers would not be able to establish a clear and direct link with the goods for which protection is sought. The trade mark also exhibits a certain originality and is not a phrase that one would usually use to describe Class 1 goods.

4. The trade mark is not a usual, common or even likely way of referring to the Class 1 goods for which protection is sought.

5. No evidence has been provided by the examiner to show why the trade mark lacks distinctive character for the Class 1 goods, or why consumers would not recognise the sign as an indication of origin.

6. The applicant refers to the following EUTM trade marks that the EUIPO has accepted: EUTM No 13 302 328 ‘Better Way’ and EUTM No 14 822 415 ‘Driving a better way’.

7. The USPTO has accepted the following mark in the applicant’s name, covering identical goods in Class 1: US No 87 841 406 ‘DISCOVER A BETTER WAY’.

On 13/03/2019 the applicant additionally filed a witness statement.

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)

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 ‘DISCOVER A BETTER WAY’ 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 the identifying function (e.g. judgment C-398/08 P of 21/01/2010, ‘Vorsprung durch Technik’).

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 (e.g. judgment C-311/11 P of 12/07/2012, WIR MACHEN DAS BESONDERE EINFACH’). However, in the case of advertising slogans, it must always be examined 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) CTMR 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 (see ‘Real People, Real Solutions’, at paragraphs 19-20).

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

Regarding the applicant’s arguments

1. The applicant submitted that the relevant consumer would perceive the mark as a badge of origin as the trade mark had been used consistently across the applicant’s website, social media, brochures and exhibitions, together with the TM symbol. However, when assessing the inherent capacity of a sign to be registered as an EU trade mark, this aspect cannot be taken into consideration. It could, however, be a decisive factor when assessing acquired distinctiveness of the sign. In this respect, the Office takes note of the applicant’s subsidiary claim of acquired distinctiveness.

2. Contrary to the applicant’s view, the meaning of the mark is easy to grasp in connection with the goods for which protection is sought and does not require any additional mental steps. While the sign does not have a direct descriptive connotation, it is, nonetheless, because of its meaning in context with the goods, 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).

When seeing the meaningful sign ‘DISCOVER A BETTER WAY’ used in relation to the goods in Class 1, the sign would be seen as a promotional statement that merely serves to encourage the consumer to find out the best/better combination of additives/chemicals to achieve new, effective, personal or cosmetic formulations and/or products in areas such as paints and coatings, metalworking fluids and electronics.

This conclusion is not undermined by the fact that the sign does not provide details about how this positive, ‘better way’ would be achieved. 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.

Therefore, the sign ‘DISCOVER A BETTER WAY’, as a whole, does not possess any characteristic that would enable consumers to perceive it as a distinctive sign that indicates the commercial origin of the goods or services.

3. The Office cannot concur with the argument that the trade mark introduces elements of intrigue and triggers 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 view that the expression ‘DISCOVER A BETTER WAY’ is not an original play on words and contains no imaginative, surprising or unexpected element that confer on it a distinctive character in the minds of the relevant public. Contrary to the applicant’s claim, 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 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 those goods or services (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

4. The applicant claimed that the trade mark was not a usual, common or even likely way of referring to the Class 1 goods for which protection was sought. As mentioned above, the relevant public does not expect promotional slogans to be precise or to fully describe the characteristics of the goods 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 every consumer to appreciate that his or her 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).

5. The objection letter stated the reasons why the sign lacks distinctive character. The sign would be seen as a tag line to pique consumer’s curiosity so that they would ask themselves what the ‘better way’ is, rather than as a badge of origin. 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 find a more suitable/better way to achieve new/better personal or cosmetic formulations and/or products in the fields of paints and coatings, metalworking fluids and electronics. 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 producer for as long as the consumer is unable to identify a link to a specific supplier as a consequence of extensive use (Article 7(3) EUTMR).

6. Regarding the argument that a number of similar registrations have been accepted by the Office, the applicant cannot successfully rely on registered EU, or any other, trade marks. Every trade mark is assessed on its own merit and the final assessment is based on the specific grounds in each particular case. The mere fact that the cited trade marks contain the words ‘better way’ does not make them similar to the mark for which protection is currently sought. The circumstances that led to the acceptance of these marks cannot be the subject of the objections in the present proceedings, nor do they represent 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 were in respect of different classes and contain different verbal elements. Therefore, the overall impression created by each of these marks is different to that created by the sign ‘DISCOVER A BETTER WAY’ in connection with the goods in Class 1.

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).

7. Regarding the argument about the sign’s acceptance in the United States, it suffices to note that, even though this may be taken into consideration, the registration of a trade mark in the United States is subject to different legal provisions, jurisprudence and interpretations from that of European (Union) trade marks (24/01/2008, T‑88/06, Safety 1st, EU:T:2008:15). It follows that it is the trade mark law of the United States that determines whether the sign was validly acquired and what scope of protection it has.

Since even registrations made in Member States are not a decisive factor, 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 identical criteria to those set out in Article 7(1)(b) and (c) in combination with Article 7(2) EUTMR were met in those countries.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 957 810 is declared to be non-distinctive pursuant to Article 7(1)(b) EUTMR at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in Ireland, Malta and the United Kingdom, for all the goods 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