Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 24/05/2019

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB

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D-28209 Bremen

ALEMANIA

Application No:	018016105
Your reference:	BCA-1074-EU
Trade mark:	Craft. Create. Collaborate
Mark type:	Word mark
Applicant:	Barry Callebaut AG Westpark Pfingstweidstr. 60 CH-8005 Zürich SUIZA

The Office raised an objection on 21/02/2019 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 15/04/2019, which may be summarised as follows:

• taken as a whole the sign does not have lexically established meaning;

• the sign is uncommon in respect of the services applied for and the relevant public will not associate it with any of their characteristics;

• the relevant public will not link the words contained in the sign with specific services in question;

• there is no need to keep the sign free because it is not a descriptive indication of any of the characteristics of the services concerned;

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.

As a preliminary remark, it should be noted that the Office’s objection letter of 21/02/2019 was based on Article 7(1)(b) EUTMR only. Therefore, the applicant’s arguments provided in respect of the ground for refusal contained in Article 7(1)(c) EUTMR, namely that the sign is not descriptive of the services concerned, must be disregarded.

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).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 addition, in view of the nature of some of the services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one 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).

In its observation the Applicant argues that taken as a whole the sign concerned does not have lexically established meaning. However, this does not exclude it from the ground for refusal contained in Article 7(1)(b) EUTMR. This is because none of the words contained in the sign are distinctive in respect of the services concerned as such, nor is their combination somehow fanciful in a way which creates additional meaning which would endow the sign with sufficient distinctive character. As a result, the relevant public will not perceive the sign concerned as an indication of the commercial origin which would to enable it to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Moreover, in contrast to what is argued by the applicant a sign might fall under Article 7(1)(b) EUTMR even if its separate elements do not designate any of the characteristics of the services applied for. What needs to be assessed is whether for the relevant public they could serve as an indication of origin, which is not the case with the sign applied for.

Furthermore, it is irrelevant that the mark as a whole does not convey any clear meaning. In the present case, the ground of refusal contained in Article 7(1)(b) EUTMR applies because neither are its separate elements distinctive, nor will their combination as such be perceived by the relevant public as indicating the commercial origin of the services concerned. The applicant itself admits that the words ‘craft’, ‘create’ and ‘collaborate’ will be seen by the relevant public as referring to their professional challenges, namely ‘crafting’ would refer to skills, ‘creating’ to individual occupation and ‘collaborating’ requires to go beyond any individual craftsmanship and to join forces with colleagues. Consequently, they will not be seen as an indication of the commercial origin of the services concerned. In addition, the mere fact of bringing these words together does not make the sign distinctive. Particularly because of the full stops used they will be perceived separately. The mere fact that these words start with the same letter is not sufficient to render the sign distinctive.

Finally, as regards the applicant’s argument that there is no need to keep the sign at issue in public domain to designate the services to which the application relates, it must be observed that the application of 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 016 105 is hereby rejected for all the services 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.

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