Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/10/2019

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

UNITED KINGDOM

Application No:	018022522
Your reference:	TMU/RD/6204728
Trade mark:	CLEAN OCEAN PROJECT
Mark type:	Word mark
Applicant:	Unilever N.V. Weena 455 NL-3013 AL Rotterdam NETHERLANDS

The Office raised an objection on 04/03/2019 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.

With the above notice the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 29/04/2019, which may be summarised as follows:

1. The personal care goods covered by the application would be seen as fast-moving consumer goods, the relevant consumer of such goods is likely to pay average attention to the various products available on the market when selecting them.

2. The applicant understands potentially how an objection may arise for CLEAN OCEAN PROJECT when considered in relation to services involving environmental services or a scheme to raise money for such purposes, for example. However, in relation to toiletry goods the statement CLEAN OCEAN PROJECT has no particular meaning and the potential laudatory nature is lost. The sign has no inherent link to the applied for goods, creating a mark which is sufficiently far removed from the goods covered. Indeed, the sign would bring into the consumers’ mind ‘services’ rather than ‘products’. When encountering the sign in the context of the goods applied for, the average consumer would have to pause and take a mental leap in order to form an association. It requires an interpretative effort by the consumer to understand the nature and purpose of the phrase.

3. It is not correct to exclude the mark from registration on the grounds that, in general and in the abstract, it is devoid of distinctive character. The lack of distinctive character must always be relevant in relation to the specific goods and/or services in question. The sign should be allowed as a lack of distinctive character in relation to the goods has not been demonstrated. The application meets the relevant requirements to be inherently registrable.

4. The EUIPO has accepted the applications for marks in a similar vein to that of the applicant, which would be construed as promotional statements if used in relation to services, registered in respect of identical goods in class 3, e.g. OCEAN DREAM (EUTM 000056903), BEEN PROJECT (IR 1332825), THE EDEN PROJECT (EUTM 002704005), ECO-CONSCIOUS PRODUCT PROUIT ECO-RESPONSIBLE (EUTM 009465444).

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 based on the following reasons.

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).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

In that sense, the applicant states that the personal care goods covered by the application would be seen as fast-moving consumer goods, the relevant consumer of such goods is likely to pay average attention to the various products available on the market when selecting them.

In relation to it, as stated in the notification dated 04/03/2019, the relevant consumer is the English-speaking public that will understand the sign ‘CLEAN OCEAN PROJECT’ as ‘a project/plan to keep oceans clean and unpolluted’.

The Office should point out that even in the case that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (judgment of 12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications (as in the present case), whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (judgments of 29/01/2015, T-609/13, SO WHAT DO I DO WITH MY MONEY, EU:T:2015:688, § 27; T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27).

Furthermore, the applicant argues that the statement ‘CLEAN OCEAN PROJECT’ in relation to toiletry goods has no particular meaning and the potential laudatory nature is lost. In addition to that, the applicant says that the sign has no inherent link to the applied for goods, creating a mark which is sufficiently far removed from the goods covered. The applicant states that the sign would bring into the consumers’ mind ‘services’ rather than ‘products’. When encountering the sign in the context of the goods applied for, the applicant considers that the average consumer would have to pause and take a mental leap in order to form an association and it will require an interpretative effort by the consumer to understand the nature and purpose of the phrase.

With regard to this, for sake of clarity, the Office states that the objection is based exclusively in the lack of distinctiveness of the sign within the meaning of Article 7(1)(b) and 7(2) EUTMR. In that sense, as stated in the above mentioned-notification, the Office has considered (and still considers) that the sign ‘CLEAN OCEAN PROJECT’ would simply be perceived by the relevant public as a promotional laudatory slogan, the function of which is to communicate a value statement. Moreover, in this case, the relevant 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 in question, namely that the goods applied for will not pollute the seas, and therefore stimulate consumers to be ecologically conscious by choosing the applicant’s goods, which would produce less waste and pollution to the ocean.

In accordance with it, because of its meaning, the sign ‘CLEAN OCEAN PROJECT’ is not an indication which could serve in trade to distinguish the goods claimed. Consumers who are confronted with the trade mark application will not perceive it as a reference to a specific commercial origin. Taken as a whole, the words immediately inform relevant consumers without further reflection that the applied for goods, e.g. soaps, shampoos, hair colorants, cosmetics and deodorants, will not cause pollution (or, cause less pollution) since they are part of a project/plan to keep oceans clean. Consequently, the targeted consumers will perceive the sign as a promotional formula and not as an indication of commercial origin. In this sense, the Office considers that the sign will be considered a (non-distinctiveness) promotional slogan without further reflection that appeals to consumer concerns in ocean pollution, particularly as a result of the entry into them of chemicals and plastics, among others products and substances, used in the whole industry including the cosmetic one.

In line with the above, this Office disagrees with the applicant when it states that the evaluation on the distinctiveness of the mark has been done in general and in the abstract. On the contrary, the lack of distinctive character has been evaluated in relation to all the goods in question, finding that the sign, in connection with these, lacks of distinctive character under Article 7(1)(b) and 7(2) EUTMR.

Different conclusions for the individual claimed goods are finally not possible. The meaning of the present promotional slogan may relate to all the goods of the application. The words say nothing more than that what has been explained before. A determination of the characteristics of each individual product is not required in the scope of Article 7(1)(b) EUTMR.

Finally, the applicant cannot successfully rely on other and registered EU trade marks. The trade mark registrations of similar trade marks for the same or comparable goods are incapable in this respect of substantiating any other conclusion. The circumstances which led to the acceptance of the marks ‘OCEAN DREAM’, ‘THE EDEN PROJECT’, ‘ECO-CONSCIOUS PRODUCT PROUIT ECO-RESPONSIBLE’ cannot be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

It must further be pointed out that these trade marks are not the subject of these proceedings and may at best be examined in invalidity proceedings, which may be initiated by anyone (24/05/2012, C-196/11 P, ‘F1-Live’, EU:C:2012:314). Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The principle of equal treatment must be reconciled with the principle of legality (e.g. ‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210).

Notwithstanding the foregoing, this Office should indicate that the aforementioned signs brought forward apply to different concepts. They have little or nothing in common with the application mark and have been found to be distinctive in their own right. The mere fact that, in some of the cases, they consist of the indication ‘OCEAN’ or ‘PROJECT’ does not make them evidently similar with the sign at hand nor could it be concluded that the application mark would be distinctive and thus cannot support its registrability.

It must be noted that the trade marks cited by the applicant, are not only European trade marks but International Registrations too, but in both situations they differ from the mark applied for including additional and different elements, e.g BEEN PROJECT and ECO-CONSCIOUS PRODUCT PROUIT ECO-RESPONSIBLE are figurative trade marks. Thus, they will not be perceived in the same way as the applicant’s sign on account of their different meanings and different elements.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘CLEAN OCEAN PROJECT’ will be perceived by the consumers as pointing to the commercial origin of the goods at issue.

From the above considerations and for the reasons set out in the objection letter attached, the Office concludes that the mark sought does not have an inherent capacity to act as a trade mark for the objected goods unless the consumer has first been taught to appreciate it as a trade mark, through the use made of it.

Since the mark lacks an inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b) and 7(2) EUTMR.

The absolute ground for refusal under Article 7(1)(b) precludes the registration of the sign ‘CLEAN OCEAN PROJECT’ as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR the application for European Union trade mark No 018022522 is hereby rejected.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 be filed only when the appeal fee of EUR 720 has been paid.

Jack CIEZA PASTOR