Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 25/07/2019

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	018017106
Your reference:	VMS/YOURTERMS.OURHELP./EU
Trade mark:	YOUR TERMS. OUR HELP.
Mark type:	Word mark
Applicant:	RB Health (US) LLC 399 Interpace Parkway Parsippany New Jersey 07054 ESTADOS UNIDOS (DE AMÉRICA)

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. Following applicant’s request received on 18/04/2019, extension of time limit has been granted until 26/06/2019.

The applicant submitted its observations on 21/06/2019, which may be summarised as follows:

1. The EUIPO has not demonstrated why the mark is descriptive for each of the goods and services at issue;

2. There is no substantiation of the refusal aside from the mark allegedly being a slogan;

3. The EUIPO has accepted earlier registrations for analogous marks, as being inherently distinctive.

4. The mark applied for has been accepted, as inherently distinctive, by other Trade Mark Offices.

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.

In reply to the applicant’s arguments, it should be pointed out, first, that being a promotional laudatory slogan the function of which is to communicate a customer service statement, the mark in question falls under the ground for refusal contained in Article 7(1)(b) EUTMR, i.e. lack of distinctive character. Therefore, in contrast to what is argued by the applicant, it was not necessary to show that the mark is descriptive of the goods concerned. Such requirement only applies in respect of the ground for refusal contained in Article 7(1)(c) EUTMR, i.e. descriptiveness.

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, such as advertising slogans, indications of quality or incitements to purchase (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).

However, 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 assessment of the mark in question in respect of this ground for refusal, the Office disagrees with the applicant that separate argumentation should have been provided in respect of each item of the goods and services applied for. In the present case, the arguments supporting the application of Article 7(1)(b) EUTMR apply equally in respect of all the goods and services concerned. The fact that those goods and services are dissimilar with each other, as indicated in the applicant’s response, is irrelevant for the application of this ground for refusal. The customer care statement communicated by the mark in question is non-distinctive for all of them. As mentioned above, for this ground for refusal to apply it is not necessary to show that the mark is descriptive of any of the characteristics of the goods concerned. Therefore, it can apply to a range of different goods and services.

The judgment of 21 January 2010 in case C-398/08 (‘Vorsprung Durch Technik’) referred to by the applicant does not support its position that separate argumentation must be provided in respect of each product and service applied for when assessing the mark in respect of Article 7(1)(b) EUTMR. As it can be seen from the cited paragraph 46, the Court of Justices in that case criticized the General Court for not substantiating its finding that the mark applied for will not be perceived by the relevant public as an indication of commercial origin and by merely relying on the fact that mark constitutes a promotional formula. However, it was not stated in the judgment that separate argument must be provided in respect of each and every separate item.

In the present case, the Office provided sufficient reasons as to why the mark ‘YOUR TERMS. OUR HELP.’, which is promotional slogan, cannot be accepted for registration, namely because its mere function is to communicate a customer service statement which will not be seen by the relevant public as an indication of commercial origin of the goods and services concerned. Consequently, it cannot be agreed with the applicant that in the present case the provisional refusal was not substantiated.

Furthermore, by referring to the judgment in case ‘Vorsprung Durch Technik’ (cited above) the applicant claims that the mark in question possesses a minimum degree of distinctive character in order to be registrable. In particular, it argues that the distinctive character of the mark ‘YOUR TERMS. OUR HELP.’ lies in the fact that it contains incomplete sentence which ‘will appear peculiar to the English-speaking public and will result in intrigue about the mark and retention of the mark by the relevant public’.

However, the mere fact that the mark in question does not constitute a complete sentence does not endow it with sufficient distinctness in order to be accepted for registration. The relevant public are used to seeing various slogans and thus will not pay particular attention to the fact that the mark in question does not constitute a complete sentence.

Therefore, the Office maintains that the mark at hand will not be perceived by the relevant public as an indication of commercial origin but merely as promotional message highlighting positive aspects of the goods and services in question, namely that they will be offered as requested by a customer. The message enshrined in the mark is straightforward and will not require by the public any additional mental steps in order to perceive it. Equally, it will not be retained in their memories as indicating the commercial origin of the goods and services applied for.

As mentioned above, a sign consisting of promotional laudatory slogan might be distinctive only if it immediately is perceived by the relevant public as an indication of the commercial origin, 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).

Finally, as regards the applicant’s argument that a number of analogous registrations have been accepted by the EUIPO, 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).

In any case, the marks indicated by the applicant are not identical to the trade mark applied for in the present case. Each trade mark application requires separate examination. Therefore, the reasons for their registrations would not necessarily apply to the applicant’s mark in question.

As to the applicant’s argument that the same trade mark has been accepted by the UK Intellectual Property Office and the US Patent and Trade Mark Office, it should be noted that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18017106 is hereby rejected for all the goods and 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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