Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/07/2019

Bruno LEDUC

11 rue Marie Georges Picquart

F-75017 Paris

FRANCE

Application No:	018024102
Your reference:	104144
Trade mark:	Healthy Mind
Mark type:	Word mark
Applicant:	Bruno LEDUC 11 rue Marie Georges Picquart F-75017 Paris FRANCE

The Office raised an objection on 01/03/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 28/03/2019, which may be summarised as follows.

1. The sign ‘Healthy Mind’ is not descriptive of any specific service or of a product’s characteristic and the relevant public will not draw a direct association between the sign and the wide range of products and services applied for, despite perceiving the sign as a means to improve well-being generally. For example, medical apparatus and instruments in Class 10, education and entertainment services in Class 41 and a wide range of services in Class 44 which could potentially have an impact on well-being (or not). The sign may have been descriptive for goods in Class 5, but this class was not applied for.

2. The sign ‘Healthy Mind’ is abstract, suggestive, could be interpreted in different subjective ways and refers to a broad category of goods and services, all of which precludes the descriptive character of the sign.

3. The sign ‘Healthy Mind’ is distinctive enough from those of the competitors because it is well recognised in the existing market of applying virtual reality to pain reduction and the internet evidence presented by the Office has not demonstrated that the sign is commonly used in the marketing of the goods and services in question, as such evidence only makes reference to ‘Virtual Reality’ but not to the expression ‘Healthy Mind’.

4. There is no guarantee that some of the services being applied for will achieve a ‘healthier mind’. This is not the main purpose of the goods and services applied for and at most they may ‘help users feeling better’.

5. A similar mark, ‘Healthy Mind VR’, with EUTMR filing number 018029337, was not objected to and has recently been registered by the EUIPO.

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)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR ‘pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks’ (emphasis added) (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (27.02.2002, T‑106/00, ‘Streamserve’, EU:T:2002:43). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods in respect of which registration is sought (20/03/2002, T-356/00, ‘Carcard’, EU:T:2002:80). A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (quoted judgment).

According to case-law, it is to be noted that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, ‘it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

The above-mentioned case-law is also relevant in relation to the Applicant’s argument that there is no guarantee that the goods and services for which registration is sought will actually achieve a ‘Healthy Mind’ or that this is their main purpose. The Office does not imply this in its previous notice, since for a finding of descriptiveness ‘it is not necessary that the sign be actually in use at the time of the application…. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes’ (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). Therefore, it is the perception of the sign by the relevant consumers in relation to those goods and services which will be the decisive factor in a finding of descriptiveness, not whether an actual use for that purpose exists.

The Applicant contends that the relevant English-speaking public, both the public at large and specialist consumers, would not draw a direct link between the expression ‘Healthy Mind’ and the goods and services applied for. But at the same time, the Applicant itself recognises that the relevant public will perceive the sign, in connection to those goods and services, as a ‘mean to improve well-being over other means’. That is precisely the association required by Article 7(1)(c) in order to preclude registration. As established above, that provision seeks to ensure that signs and indications which consumers may perceive as designating an essential characteristic of the goods and services in question remain free for use by other market operators.

The expression ‘Healthy Mind’ directly informs consumers that the goods in Class 10 assist or support the mental wellbeing of persons or animals, and that the services in Classes 41 and 43 help in building or improving mental wellness through sports, gaming, culture, music and entertainment generally. It is generally understood that a good physical health has positive effects on mental health and vice versa, as the Applicant himself argues with the abstracts of publications submitted in his reply: ‘This paper considers the influence of environmental stimuli including, light, nature scenes and sounds and video and virtual reality (VR) stimuli on pain’, ‘recent theories of pain highlight the role that sensory stimuli from the environment can play in influencing the pain experience’, ‘effects of video visual and music presentation on pain and anxiety in burn patients’, ‘patients who received audio-visual distraction used less sedative medication and reported less pain…’, ‘exposure to both natural and artificial light may have positive effects on mood in healthy and depressed individuals… by increasing serotonin levels in the body’, ‘viewing nature scenes may decrease pain perception by eliciting positive emotional responses and decreasing stress’, ‘…virtual reality (VR) as psychological treatment in 1993’, ‘… immersion technique to be effective for everything from post-traumatic stress disorder (PTSD) and anxiety to phobias and addiction… to convince patients they are in another world’, ‘placed patients into controlled traumatic scenarios, including a simulated battlefield, so they could confront and process emotions triggered in those situations…showed a reduction of symptoms, such as moodiness and depression’, ‘these systems [VR] promise clinicians an in-office tool’.

In summary, medical apparatus and instruments or physical therapy equipment in Class 10 could very well be linked with a ‘Healthy Mind’, as potentially VR is already used in the field of medicine. Or computer and video game amusement services, online entertainment services, hypnotist shows, electronic games services, visual and musical entertainment, showing of prerecorded entertainment, etc. in Class 41 could also serve the purpose of improving the mental wellbeing of animals and individuals by increasing levels of serotonin which has been directly related to improved mood and decrease in anxiety. Finally, all the services in Class 44 such as music therapy services, nursing home services, medical services, health clinic services, physical rehabilitation, etc. could also be intended to improve mental wellbeing as an expression of the worldwide known Latin phrase ‘Mens sana in corpore sano’ (translated in English as ‘a healthy mind in a healthy body’). All the goods and services of the specification may serve directly to contribute to improvements in the mental well-being of individuals, that is, to aim for a ‘healthy mind’.

Contrary to the Applicant´s contention, the Office maintains that there is nothing suggestive or allusive in the expression ‘Healthy Mind’, even if referring to an abstract noun (‘Mind’), as it will clearly be perceived as meaning ‘mental wellbeing’. The expression also follows ordinary syntactic rules of the English language, that is, an adjective (‘Healthy’) qualifying a noun (‘Mind’). And a broad list of goods and services is not an impediment per se for a finding of descriptiveness in the sign in relation to those goods and services.

For all the above, the Office maintains that the sign ‘Healthy Mind’ ‘presents no particular element that is likely to confer it a distinctive character so that the relevant public can perceive it as an indication of the origin of the goods and services covered. In particular, there is nothing in the sign that constitutes a play on words or can be perceived as imaginative, fanciful, arbitrary, subtle, linguistically unusual, surprising or unexpected and that would, on that account, be easily remembered and confer it a particular resonance (11/05/2015, R 3087/2014-4, ‘HEALTHY TARGET’, § 16 and 18-21).

As regards the evidence presented by the Office, the EU General Court has confirmed that ‘where the [Office] finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the [Office] is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19). Although the evidence submitted by the Office does not contain directly the expression ‘Healthy Mind’, it does indeed substantiate the fact that virtual reality, video, music, entertainment, games, etc. are all proven stimuli to be used and applied for improving the mental wellbeing of people and thus, it is not unreasonable to presume that the relevant consumer will draw a direct association between the sign and the goods and services applied for.

Contrary to what the Office maintains, the Applicant argues that the sign is well recognised in the existing market of applying virtual reality to pain reduction. But the evidence submitted in this regard only states that video, virtual and augmented reality environments have shown a positive effect as a therapy for pain reduction, anxiety and other mental health problems such as post-traumatic stress disorder (PTSD), depression, etc. Nowhere in such evidence the sign ‘Healthy Mind’ is mentioned as a well-recognised trade mark in the relevant market or that it has acquired distinctiveness through its use, as no such claim has been made by the Applicant at any stage of the examination of the sign.

In accordance with settled case-law, ‘a mark can be registered by virtue of Article 7(3) EUTMR only if evidence is provided that is has acquired, through the use which has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such a character’ (22/05/2017, R 1445/2016-5, LUX* RESORTS & HOTELS (fig.)’, §44 and case-law cited therein, 09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 49). Further, since the applicant claims that the trade mark sought is distinctive despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T-194/01, Soap device, EU:T:2003:53, § 48)

Finally, in relation to the argument that a similar sign, ‘Healthy Mind VR’ (EUTMR filing number 018029337) had not been objected to and has been registered by the EUIPO, the Office points out that this is a figurative mark which contains added figurative elements which made the global assessment of the mark not comparable to the present case. Therefore, both marks are in reality not similar and cannot be applied the same reasoning. And in any case, 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 derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘Healthy Mind’ will be perceived by the consumers as pointing to the commercial origin of the goods and services at issue.

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

For the reasons set out above, and in the previous notification, the sign ‘Healthy Mind’ does not possess any actual distinctive character in relation to the goods in Class 10 and to the services in Classes 41 and 44. The sign is therefore unable to function as a trade mark in the market place, that is, it is not capable to distinguish the goods and services for which registration is sought from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its plain and common descriptive sense. In consequence, pursuant to Article 7(1)(b) and (c) EUTMR, in combination with Article 7(2) EUTMR, the application for European Union trade mark No 18 024 102 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.

María Mónica TARAZONA RUÁ