Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/07/2019

Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB

Postfach 10 26 05

D-86016 Augsburg

ALEMANIA

Application No:	018024801
Your reference:	A/GRAC-013-EM
Trade mark:	Proven Quality. Leading Technology.
Mark type:	Word mark
Applicant:	Graco Minnesota Inc. 88 11th Avenue N.E. Minneapolis Minnesota 55413-1894 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/04/2019 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 03/06/2019, which may be summarised as follows:

1. The relevant consumer is the average consumer who is interested in using paint spray guns and not a specialist.

2. Terms which are laudatory and arouse positive connotations, without specifically referring to the goods and services, are not excluded from registration. Furthermore, as the mark applied for is a compound mark which is fanciful, surprising and vague and should be assessed as a whole, not broken into parts.

3. The mark can have several meanings.

4. The term is already in use in promotional material.

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.

Article 7(1)(b) EUTMR – general remarks

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).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, “Proven Quality. Leading Technology.” is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and, instead, it will be understood by the relevant public as a promotional message that merely serves to highlight positive aspects of the services concerned, namely that the goods offered are of a tried and tested high standard and provide the consumer with a product that uses the most important and successful scientific methods.

In replying to the Applicant’s arguments summarized above, the Office wishes to state the following:

1.

The applicant states that the relevant consumer is not a specialist but rather an average consumer who is interested in using paint spray tools. After noting this precision regarding the relevant consumer, the Office maintains that the perception of the sign in question, “Proven Quality. Leading Technology”, would be the same for a non-professional English-speaking consumer who was interested in using the goods applied for, as for a professional using these tools.

2.

The Office is well aware of the applicant’s argument that laudatory slogans or promotional formulas may also function as a trade mark indicating origin, and that a minimum degree of distinctive character is enough for the sign to function as a badge of origin. Nevertheless, the Office maintains that as the mark applied for is a word mark, composed of four verbal elements in a normal typeface, with no distinctive character which together form an unambiguous term which could be considered neither surprising nor fanciful, this minimum degree of distinctiveness is not achieved. The trade mark does not have any additional distinctive elements, such as a figurative element or a distinctive verbal element, that would allow the mark to distinguish the goods for which registration is sought from those of competitors.

Case law has established that 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’ (judgment of 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’ (judgment of 11/12/2001, T - 138/00, Das Prinzip der Bequemlichkeit, EU: T:2001:286, § 44).

But it has also established that a sign, such as 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’ (judgment of 05/12/2002, T - 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and of 03/07/2003, T - 122/01, Best Buy, EU:T:2003:183, § 21).

Since the applicant claims that the trade mark it seeks to register is distinctive, despite the Office’s analysis that the relevant consumers would perceive the sign as ordinary and not as the trade mark of a particular proprietor, it is then 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 (judgment of 05/03/2003, T - 194/01, Soap device, EU:T:2003:53, § 48).

3.

The applicant argues that the term “Proven Quality. Leading Technology.” can have several meanings and can be considered a play on words that is ironic and unexpected. The Office disagrees with this affirmation, as stated above. However, even if the mark were considered to have different meanings, the fact that a sign can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements 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 so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin.

(15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

4. With regard to the arguments put forward by the applicant that the relevant consumer will perceive the term “Proven Quality. Leading Technology.” as an indication of origin because it is already used as a tagline in promotional material, the Office would like to state that using a term in promotional material is not considered use as a trademark and furthermore, such a use does not demonstrate that the relevant public associate the term exclusively with the applicant’s goods, nor that such an association, were it to exist, would thereby be extended to the application under consideration.

Finally, the Office points out that no objection was raised under Article 7(1)(c) EUTMR and therefore the arguments submitted in sections 33 to 38 of the response are irrelevant in relation to overcoming the Office’s objection.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018024801 is hereby rejected for all the goods 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.

Mary DESMOND