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

(Article 7 EUTMR)

Alicante, 27/08/2019

TAYLOR WESSING LLP

5 New Street Square

London EC4A 3TW

REINO UNIDO

Application No:	018007209
Your reference:	ORA11.U1222
Trade mark:	Companies thrive on innovation. We work to shape yours.
Mark type:	Word mark
Applicant:	Orange Brand Services Limited 3 More London Riverside London SE1 2AQ REINO UNIDO

The Office raised an objection on 05/02/2019 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 07/06/2019, which may be summarised as follows:

1. The mark is inherently distinctive. The examiner has applied the law of distinctiveness too strictly on the mark. Any distinctiveness, however slight, is sufficient to overcome impediment to registration. The mark is more than just an advertising slogan. The examiner’s blanket objection for all the goods and services applied for is incorrect. The relevant public’s level of attention will range from average to high depending on the type of goods and services at issue.

2. The mark constitutes a play on words and would be perceived by consumers as imaginative and unexpected. It introduces elements of conceptual intrigue or surprise. In order to interpret the message of the mark the relevant consumers need considerable mental effort and would not be able to form a clear and direct link between the mark and the goods and services. The structure of the slogan is deliberate and original. English speakers would not automatically synonymize this description with the goods and services covered by the application.

3. There are no identical or similar slogans on the market and the promotional message of the mark is not commonly used by the applicant’s competitors.

4. The applicant reserves its right to file evidence of acquired distinctiveness as a subsidiary claim based upon Article 7(3) EUTMR.

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 notions 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).

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).

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 inherent distinctiveness of the mark

The applicant argues that the mark applied for, “Companies thrive on innovation. We work to shape yours.” is inherently distinctive and that the examiner has applied the law of distinctiveness too strictly. However, based on the arguments the applicant has set out, the remains of the view that the mark is devoid of any distinctive character. The Office finds that the mark at hand works merely as a promotional laudatory slogan which gives the relevant consumers the message that the consumers are special and that the goods and services are made and provided especially for the specific customer’s needs. The mark does nothing more than provide a statement promoting customer relations and the relevant public would not understand it as indicating the origin of the goods and services.

The Office agrees with the applicant that slogans may be registered as trade marks and the assessment of their distinctiveness should not be stricter than for other types of trade marks. A slogan may be registered as a trade mark provided that it is capable of performing the essential function of a trade mark, namely, to identify the goods or services of a particular undertaking and thus enable consumers to distinguish that undertaking’s goods or services from those of its competitors. The Office finds that the mark at hand, “Companies thrive on innovation. We work to shape yours.”, does not satisfy this test.

The applicant is quite correct when it asserts that the examiner should not be dismissive of the body of the Office’s case law relating to ‘slogan’ marks. However, there is not, and there cannot be, a particular ‘line’ to be taken when appraising slogans. Each case must be assessed on its own merits. In each case the examiner, or the Board of Appeal, has assessed the mark in relation to the claimed goods and services to establish whether it could function as a distinctive badge in trade. The Office does not treat slogans any differently from other signs, even though they may possess certain characteristics which are absent in ordinary word marks. Nevertheless, slogans must be viewed solely in the light of Article 7 EUTMR just like any other trade mark application and the same criteria for acceptance or rejection apply.

It is not disputed that a slogan may be registered as a Community trade mark, provided that it is capable of distinguishing the goods or services of one undertaking from those of other undertakings, and provided that it is not tainted by a deficiency under the absolute grounds of refusal, laid down in Article 7(1) EUTMR. However, slogans which simply inform, in a laudatory way, potential consumers or clients as to the nature and the advantage or quality of the goods or services in relation to which they are used, are in general, lacking in any distinctive character (see decision of the Board of Appeal of 8 June 2000 in Case R 573/1999-1 – DEDICATED TO HELPING OUR CLIENTS PERSUADE DECISION MAKERS).

The applicant states that the Office should not have made a blanket objection against all of the goods and services. The Office disagrees with this and finds that the impression the mark creates will be the same for all of the goods and services. The application covers a broad range of goods in class 9, as well as a broad range of services in classes 35, 36, 37, 38, 41, 42, 44 and 45. Admittedly, some of the goods and services are primarily of interest to the well-informed, observant and circumspect professional public. However, the Office sees that most of the goods and services are directed more widely at the public at large. As a consequence, the relevant public of those goods and services is the normally well informed and reasonably attentive average consumer. Furthermore, as the mark applied for is made up of English words, the relevant public are English-speakers residing in the countries in which English is an official language of the nation, namely, Ireland, Malta and the United Kingdom. However, irrespective of whether the public is the more informed, observant and circumspect public, or the average consumer, the mark remains non-distinctive for all of the goods and services applied for. The slogan is composed of commonplace words which are understood by the relevant public as a simple laudatory formula and not as an indication of the commercial origin of the services in question.

The applicant is right in referring to the established case-law according to which an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. However, with regard to that last requirement, the Court has stated that the competent authority may use only general reasoning for all of the goods and services concerned where the same ground of refusal is given for a category or group of goods or services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (18/03/2010, C-282/09 P, P@yweb card / Payweb card, EU:C:2010:153, § 37-38 and § 40).

There is nothing about the expression “Companies thrive on innovation. We work to shape yours.” – apart from its promotional meaning – that might enable the relevant public to memorize it easily and instantly as a distinctive trade mark for the designated goods and services. The relevant consumer will perceive the information as purely promotional and not take the time to enquire into the sign’s other possible functions. The sign will, thus, be perceived as a promotional slogan and not as a trade mark.

It is again noted that the awareness of the consumers of the goods and services in question can be relatively low when it comes, as in the present case, to promotional indications which well-informed consumers do not see as decisive (15/09/2005, T-320/03 Citicorp v. OHIM (“Live richly”) [2005] ECR II-3411 § 73 and 74; to that effect, judgments of the Court of First Instance of 5 December 2002 in Case T-130/01 Sykes Enterprises, Incorp. v OHIM (‘Real People, Real Solutions’) [2002] ECR II- 5179, at paragraph 24; and of 3 July 2003 in Case T-122/01 Best Buy Concepts Inc. v OHIM (‘Best Buy’) [2003] ECR II-2235, at paragraph 25).

The Office also notes that even if the relevant public is a specialist one it cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The applicant states that the English speaking public would not automatically synonymize the meaning the Office has presented for the mark with the goods and services and that the examiner stretched the meaning of the mark beyond what it actually means. According to the applicant this is because the mark consists of two sentences that are not common or obvious in relation to the goods and services. The consumers would wonder how the applicant may shape their innovative processes by the help of the applicant and not immediately think of the goods and services. The applicant finds that the consumers need to interpret the first phrase “companies thrive on innovation”, which works as an inspirational statement, and then link it with the latter part “we work to shape yours”. According to the applicant the second part of the mark alludes to a quality of the goods and services but the mark as a whole triggers in the minds of the relevant public a cognitive process.

However, the applicant does not suggest any other way in which the consumers could understand the meaning of the sign. It is irrelevant whether the consumers would or would not immediately think of the goods and services at hand. Having regard to the conceptual message that it conveys, there is nothing about the phrase “Companies thrive on innovation. We work to shape yours.” that might, beyond its obvious promotional meaning, enable the relevant public to perceive the sign immediately as a distinctive trade mark for the goods and services designated by the application. Due to this the Office maintains its view that the relevant public would view the sign as merely implying that the applicant will help the users to formulate their new ideas into something successful and prosperous.

Upon encountering the mark applied for, the relevant consumers would take the words “Companies thrive on innovation. We work to shape yours.” at face value and would not, in the absence of prior knowledge, assume that they refer to goods and services emanating from a specific source of supply. “Companies thrive on innovation. We work to shape yours.” is a promotional slogan, a statement that any person or company could make when working with someone to get something done. In that respect, the expression does not enable the relevant public to distinguish, without any possibility of confusion, the goods and services of the applicant from those of a different commercial origin.

The Office also notes that the 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 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant argues that the mark is at best allusive in respect of the goods and services. The Office notes that a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation. The Office did not argue in the objection letter that the mark would be descriptive for the goods and services. Whilst the sign does not have a direct and exclusive descriptive connotation, it is none the less composed of a configuration easily understood as signifying that the applicant’s goods and services consist of assisting the companies to succeed in with their businesses. The message conveyed by the mark is no more than a banal marketing claim: the applicant’s goods and services help the consumer to formulate their new ideas into something successful and prosperous.

2. The structure of the mark

The applicant states that the mark constitutes a play on words and would be perceived by consumers as imaginative and unexpected. According to the applicant the slogan introduces elements of conceptual intrigue and surprise in relation to the goods and services, and thus the mark has some particular originality especially in the context of the designated goods and services. For the applicant the sign is capable of leaving an impression in the minds of the relevant consumers. More importantly, consumers would not be able to establish a clear and direct link between the mark and the goods and services. As such, the mark is clearly distinctive and should be allowed to be registered.

Contrary to the appellant’s contention, the Office finds that the combination of the two phrases does not create a new and distinctive sign. There is nothing imaginative or inventive in the sign applied for. The two elements are joined in an ordinary way that results in a meaningful sequence of common English words. Thus, it would be perceived by the relevant consumers as a simple promotional statement, and there is nothing fanciful or arbitrary about the words or the concept underlying them. The Office does not find the sign to be a play on words and the applicant has not provided any arguments to support this view.

The mere fact of using a juxtaposition of generic words does not render it distinctive nor does it result in a new expression with a new and unexpected meaning. Each of the words maintains its own separate meaning and spelling and the Office finds that the two phrases do not create a surprising or unexpected combination.

As for the argument that the consumers would not be able to establish a direct link between the sign and the goods and services the Office refers to its analysis of distinctiveness and maintains its view that the relevant public would consider the sign merely implies that the applicant will help the users to formulate their new ideas into something successful and prosperous.

In short, the mark consists of a slogan which delivers a clear and direct message, without the addition of any fanciful or imaginative element which would endow it with distinctive character. The relevant consumers would be unable to distinguish the appellant’s goods and services from those of competitors.

3. The usage of the mark on the market

As regards the applicant’s argument that no other competitors make use of the same combination, the Office states that “the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.” (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

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 goods and 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).

Thus, whether the competitors are currently using the same combination or have no need to use it in the future has no impact on the assessment of inherent distinctiveness.

4. The subsidiary claim for acquired distinctiveness

The applicant reserves its right to file evidence of acquired distinctiveness as a subsidiary claim based upon Article 7(3) EUTMR. Since it is a subsidiary claim the proceedings will be resumed after this decision regarding inherent distinctiveness has become final.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for EUTM No 018 007 209 is declared to be non-distinctive pursuant to Article 7(1)(b) in the relevant territory, namely, Ireland, Malta, and the United Kingdom, for all the 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.

Enclosures (excluding the cover letter): L110 notification, 9 pages.

Richard THEWLIS