Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 02/07/2019

WHITE & CASE LLP

5 Old Broad Street

London EC2N 1DW

REINO UNIDO

Application No:	018020621
Your reference:	MLC/T2132
Trade mark:	PREVENTING WAR. SHAPING PEACE.
Mark type:	Word mark
Applicant:	International Crisis Group 1629 K Street NW Suite 450 Washington DC DC 20006 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/02/2019 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 26/06/2019, which may be summarised as follows:

1. The Office has dissected the sign into its constituent words and has analysed these individually rather than considering the sign as a whole. It has been long established before the Office that a sign is to be appreciated as a whole and that its overall impression be considered as this is what consumers do.

2. The mere fact that the public could perceive a sign as a promotional formula and that because of its laudatory nature it could, in principle, be used by other undertakings, is not sufficient in itself to support the conclusion that the sign is devoid of any distinctive character. The laudatory connotation of a word mark does not automatically mean that it cannot be perceived as an indication of origin. In the present case, the sign is distinctive per se as it employs a conceptual balance through the contrasting meaning of the words ‘WAR’ and ‘PEACE’ and the idea of the reactive notion of ‘PREVENTING’ the former through the active notion of ‘SHAPING’ the other. The sign thereby conveys the sentiment of harmony and equilibrium, reinforced by the use of the punctuation within the sign. The sign is not at all a usual or customary way to reference or identify the goods and services concerned. Indeed, it is more than merely a promotional statement or exhortation and distinctive.

3. In the instance of the application, the goods and services specified are of an inherently specialised nature. They are not those appealing to the average consumer, but rather those persons with a humanitarian, academic or professional interest in international conflict resolution. The consumer of such goods is likely to be well-educated and intelligent. As such the consumer in this instance would appreciate the subtleties of the conceptual nature of the mark.

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).

The Office’s comments are mentioned below about the applicant’s arguments summarised above:

1. The Office agrees with the applicant that the trademark must be considered as a whole for the purposes of assessing its distinctive character. The assessment has already been made in the light of this principle.

2. The contrasting meaning of the words and the punctuation, mentioned by the applicant, and such things 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.

In that context, the Office maintains its position as stated in its’ notice of grounds for refusal of 27/02/2019 with the definition of the verbal elements ‘PREVENT’ as ‘keep (something) from happening’, ‘WAR’ as ‘a state of armed conflict between different countries or different groups within a country’ or ‘a state of competition or hostility between different people or groups’, ‘SHAPE’ as ‘to plan, devise, or prepare’, ‘PEACE’ as ‘freedom from disturbance; tranquillity.’ or ‘a state or period in which there is no war or a war has ended’. Therefore, the sign for which protection is sought, ‘PREVENTING WAR. SHAPING PEACE.’, would simply be perceived by the relevant English-speaking public as a promotional laudatory slogan, the function of which is to communicate an inspirational or motivational statement. Moreover, the relevant English-speaking public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services in question, namely that their only purpose is to prevent disputes from arising or from escalating into conflicts and to encourage all sides towards the path of peace. The only objective of the statement ‘PREVENTING WAR. SHAPING PEACE.’ is encouraging people to do so, and thus, the sign does not indicate the origin of the goods or services in question.

3. In addition, in view of the nature of some of the goods and 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 020 621 is hereby rejected for all the goods/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.

Ali KÜÇÜKŞAHİN