Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/04/2019

KRAMER · BARSKE · SCHMIDTCHEN Patentan

wälte PartG mbB

Landsberger Str. 300

D-80687 München

ALEMANIA

Application No:	018006711
Your reference:	COZ074-31451MEM
Trade mark:	premier
Mark type:	Figurative mark
Applicant:	Premier Dental Products Company 1710 Romano Drive Plymouth Meeting Pennsylvania 19462 2282 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24.01.2019 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 20.03.2019, which may be summarised as follows:

• The applicant states that the word “premier” does not have an unambiguous, single meaning. The meaning identified by the Office as “best or most important” is only one possible meaning. There are additional meanings. In German, which is spoken by a major part of the public concerned, the only and single meaning of the word “premier” is “the leader of the government of a country”.

• None of the meanings of “premier” have a descriptive meaning for the goods concerned. Even with the meaning “best” or “most important” it is completely left open which attribute of the goods is actually meant by “most important” or “best”. Therefore the word “premier” is not purely descriptive.

• The sign contains stylised elements. The writing is delimited by a single upper and lower line, which is broken, respectively, only at one single character. The “p” at the beginning and the “i” in the second half of the word reach below or above this imaginary line. Not only a single arbitrary line has been chosen and added, but a graphical element which connects these only two upper and lower exceptions form the imaginary top and bottom lines of the word “premier”, this by bending around the end of the word. The stylised elements are not negligible as stated by the Office. The graphical addition to the word per se is sufficient for overcoming the requirements of Article 7(1)(b).

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).

In the Office’s letter dated 24.01.2019, the word “premier” was defined as ‘best or most important’, this information was extracted from the online Cambridge English dictionary. Therefore, the relevant public, when faced with the word “premier” in connection with the goods applied for, and in fact in connection with any type of goods or services, will clearly see the mark as a promotional laudatory message, namely that the goods in question are the best or of the highest quality. This has been confirmed by the Boards of Appeal. See for instance the decision of 11/11/2015, R 688/2015-1, PREMIER+, § 16, where the Board held that: The contested mark is a word sign, consisting of the two juxtaposed elements ‘PREMIER’ and ‘+’. Moreover, manufacturers commonly use laudatory statements to promote their products, containing words such as ‘top’, ‘extra’, ‘premium’, ‘optimum’, etc. ‘Premier’ belongs to this category of words that may be used for promotional and laudatory messages but which does not allow consumers to determine the commercial origin of the goods at all (see, by analogy, 21/01/2011, T-310/08, executive edition, EU:T:2011:16, § 33). Indeed, the word ‘premier’, which means, first in position, rank or importance, delivers a clear message to the relevant public, without further reflection, namely that the goods and services are the best or of the highest quality (see also 10/04/2013, R 1162/2012-5, PREMIER (fig.), § 13 ).

The fact that the word “premier” has different meanings and can be interpreted in other ways is immaterial as it has a clear laudatory meaning which the relevant public will immediately perceive when viewing the mark. For a trade mark to be refused registration under Article 7(1)(b) EUTMR, it is sufficient that a sign has a laudatory message. A sign must therefore be refused registration under that provision if at least one of its possible meanings indicates a promotional message in relation to the goods concerned.

It should be noted that the Office’s objection was raised against the lack of distinctiveness of the mark; no reference was made to any possible descriptive meaning but rather the fact that the sign would simply be perceived as a promotional laudatory slogan as explained above.

The Office states that a trade mark consisting of an expression which merely conveys information about the goods or services on which it is found is unlikely to serve as a badge of trade origin. Such a mark leaves no imprint on the consumer’s consciousness after the purchase has taken place and the expression soon sinks back into the anonymity of ordinary promotional language. The mark will not stand out as an indicator of origin among other equally facile promotional statements, unless through exposure and use, the public has been educated to perceive it as indicator of origin.

It should be noted that, although the mark applied for contains certain elements that confer upon it a degree of stylisation, these elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 74). In the present case, the sign applied for, , consists of the word the word “premier” in black lower case letters in a standard typeface with a black line underneath which bends around the second “r” until it reaches the dot on the “i”. None of these elements, considered separately or as a whole, confer the trade mark applied for any distinctive character.

Furthermore the EUIPO register shows that a number of marks that consist only of the word “premier” have been refused or have been withdrawn after an objection. Moreover, the applicant’s figurative mark EUTMA nº 16132681 was refused due to lack of distinctiveness.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018006711 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.

Helen BIRCH