Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 26/08/2019

HGF LIMITED

4th Floor, Merchant Exchange Building, 17-19 Whitworth Street West

Manchester M1 5WG

REINO UNIDO

Application No:	018048102
Your reference:	LKS/T247470EP
Trade mark:	FOREVER UNIQUE
Mark type:	Word mark
Applicant:	Forever Unique Limited 98 Cheetham Hill Road Manchester M4 4EX REINO UNIDO

The Office raised an objection on 07/05/2019 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 02/07/2019, which may be summarised as follows:

1. Only marks that are entirely devoid of distinctive character should be refused pursuant to Article 7(1)(b) EUTMR as the wording of the Regulation means that only marks which are so low in distinctiveness, e.g. SOAP for soap products, should be caught by this section. In addition, according to the Office’s Guidelines terms denoting a particular positive or appealing quality or function of the goods and services should be refused if applied alone or in combination with the descriptive terms ‘ECO’, ‘FLEX/FLEXI’, ‘GREEN’, ‘MEDI’, ‘MULTI’, ‘MINI’, ‘MEGA’, ‘PREMIUM’, ‘PLUS’, ‘SUPER’, ‘ULTRA’ or ‘UNIVERSAL’. The list does not include the words ‘FOREVER’ or ‘UNIQUE’ alone or in combination.

2. The word combination ‘FOREVER UNIQUE’ is not commonly used phrase in relation to the goods and services applied for and it is not a phrase that other traders would need to use in order to refer to the goods and services covered by the application.

3. Case law confirms that marks do not need to have an average degree of distinctiveness or any particular linguistic or artistic creativity or imaginativeness in order to escape an objection under Article 7(1)(b) EUTMR.

4. The examiner claims that the mark serves to highlight that the items are one of their kind. The retail services in Class 35 are not ‘items’ that would be capable of being ‘one of the kind’ or being ‘timeless’.

5. The goods at hand are offered to consumers within the fashion market. Such goods are rarely unique or ‘one of a kind’. The applicant has not sought protection for the mark FOREVER UNIQUE in relation to e.g. custom tailoring or dressmaking, for which the mark may be considered as more of a promotional phrase.

6. The consumer of apparel/fashion goods and related services is considered to be savvy as fashion items are a considered purchase with consumers deliberating between styles as well as brands before making any purchase. The consumers within the fashion market are accustomed to perceiving FOREVER + WORD marks as indicators of trade origin.

7. The Office has previously accepted the following marks for apparel goods and related services: EUTM No 1425612 ‘FOREVER NEW’, EUTM No 17626136 ‘FOREVER YOUNG’, EUTM No 13203104 ‘FOREVER BESPOKE’, EUTM No 5853015 ‘FOREVER 21’ and EUTM No 1073527 ‘FOREVER YOURS’.

8. The applicant’s mark ‘FOREVER UNIQUE’ was accepted registered in 2009 by the UK IP Office based on it being inherently distinctive.

9. The applicant reserves the right to make a subsidiary claim that the mark has acquired distinctiveness through use in the relevant territories of the EU.

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).

As regards the distinctive character of a trade mark, according to settled case-law, distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (judgments of 29/04/2004, joined cases C-468/01 P to C-472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; and 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33).

In the letter of objection dated 07/05/2019, the Office stated that the absolute ground for refusal under Article 7(1)(b) precludes the registration of the sign ‘FOREVER UNIQUE’ as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), namely at least in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

Contrary to the applicant’s view, the Office is of the opinion that the expression ‘FOREVER UNIQUE’ is entirely devoid of any distinctive character with respect to the goods and services applied for as it is not capable of distinguishing the goods and services applied for from those of other undertakings.

In the present case, the mark consists of the words ‘FOREVER’ and ‘UNIQUE’. The definitions given in the letter of the objection show that both of the terms making up the mark has a clearly defined meaning in the English language.

As noted earlier by the Office, the term ‘FOREVER’ refers to ‘without end; everlastingly; eternally’ and the term ‘UNIQUE’ stands for ‘the only one of its kind’ or ‘to describe things that you admire because they are very unusual and special’.

As established in case-law, distinctiveness can be assessed only by reference first to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (judgment of 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 24 and case-law cited).

Following the above, the Office notes that when the mark ‘FOREVER UNIQUE’ is used in relation to the goods in Classes 9, 14, 18 and 25 and related services in Class 35, the mark would be therefore perceived as highlighting that the items are one of their kind or special (unique) or have a ‘timeless’ quality.

Therefore, the mark applied for, FOREVER UNIQUE, would be perceived as a promotional expression communicating a value statement when used in connection with the goods and related services. The fact that the mark does not contain any of the terms listed in the Office’s Guidelines (Guidelines for Examination, in the Office, Part B, Examination, page 4) does not as such make the mark distinctive, as it nevertheless does not allow the public at whom the goods and the related services are directed to be guided as to the commercial origin of the goods and the services. Indeed, the list of the non-distinctive terms provided in the Office’s Guidelines is by no means an exhaustive one.

Lastly and with respect to the applicant’s example regarding the assessment of a hypothetical mark ‘SOAP’ for soap products, the Office would like to remind the applicant that the objection has not been raised due to descriptiveness under Article 7(1)(c) EUTMR but only pursuant to Article 7(1)(b) EUTMR as the meaning of the mark ‘FOREVER UNIQUE’ comes from promotional or advertising information which the relevant public will perceive the first and foremost as such, rather than as an indication of the commercial origin of the goods and services. It is sufficient that the semantic content of the word mark indicated to the consumer a characteristics of the goods and/or services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive the first and foremost as such, rather than as an indication of the commercial origin of the goods and/or services (30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, ECLI:EU:T:2004:198, § 31).

As regards the applicant’s argument that the expression ‘FOREVER UNIQUE’ is not commonly used phrase in relation to the goods and services applied for and it is not a phrase that other traders would need to use in order to refer to the goods and services covered by the application, the Office notes that the expression nevertheless has a clear laudatory meaning in the English language as shown above even if the term would not be currently in use in the relevant market as the applicant claims.

Indeed, even if no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The Office agrees with the applicant that distinctive character within the meaning of Article 7(1)(b) EUTMR is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. It suffices that the trade mark would enable the relevant public to identify the origin of the goods or services protected thereby and to distinguish them from those of other undertakings (05/04/2017, T-291/16, Anta, EU:T:2017:253, § 29, 30 and the case-law cited therein).

However, the above does not have any impact on the case at hand, as the laudatory message conveyed by the trade mark applied for is immediately clear, without the need for any mental process and the mark does not allow the public at whom the goods and related services are directed to be guided as to the commercial origin of the goods and services.

As regards the applicant’s argument that the retail services in Class 35 are not ‘items’ that would be capable of being ‘one of the kind’ or ‘timeless’, the Office notes that, as the applicant has also pointed out himself in the letter of observations, the retail services applied for are related to the goods for which the mark is applied for. Thus, the mark would be seen as informing that the retail services at hand concern items that are one of their kind or special (unique) or have a ‘timeless’ quality.

As regards the applicant’s argument that the goods applied for are offered to consumers within the fashion market and thus are rarely unique or ‘one of the kind’, the Office states that the objection has been raised due to Article 7(1)(b) EUTMR as the mark ‘FOREVER UNIQUE’ would be seen as a promotional laudatory expression, not because the mark would directly describe the quality of the goods at hand and be thus objectionable pursuant to Article 7(1)(c) EUTMR. Furthermore, it is common in the relevant market, including the fashion sector, to personalise goods making them one of a kind or otherwise special for consumers and on the other hand, to come up with ideas and solutions to distinguish the goods and the consumers of the brand from those of others by offering them special/unique items.

Furthermore, it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. 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).

As regards the relevant public, the Office would like to point out that in the case at hand the goods and services are aimed at average consumers mostly.

While it is true that some part of the relevant public might have a higher level of attention when it comes to purchasing fashion items, it is nevertheless established case law that the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers (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 and cited case-law).

In addition, the Office would like to draw the applicant’s attention to the list of goods and services applied for, which also contains goods (and related retail services) that are intended for everyday consumption and aimed at average consumers who are reasonably well informed and reasonable observant and circumspect. By means of an example, most of the goods in Class 3 are inexpensive goods for daily use and the degree of attention with respect to such goods is considered to be average, at the most.

As regards the applicant’s argument that a number of marks containing the word ‘FOREVER’ with another word element have been accepted by the Office, it is to be noted that those trade marks are not at issue in the present proceedings. It must also be kept in mind that the assessment of absolute grounds for refusal has to be made on a case by case basis. Each case must be considered on its own merits with its own peculiarities.

Although it is correct that, when making an assessment consistent appraisals should be sought as far as possible, this cannot lead to trade marks which are considered as not eligible for registration being registered solely because other marks which include one of their elements have been registered. The mere fact that the marks listed consist of or contain the word ‘FOREVER’ does not make them (evidently) similar with the sign at hand nor could it be concluded that the application mark would be distinctive.

The Office concurs with the applicant that the cited marks, namely EUTM No 1425612 ‘FOREVER NEW’, EUTM No 17626136 ‘FOREVER YOUNG’, EUTM No 13203104 ‘FOREVER BESPOKE’, EUTM No 5853015 ‘FOREVER 21’ and EUTM No 1073527 ‘FOREVER YOURS’ bear some similarity with the mark at hand, insofar as the marks contain the word ‘FOREVER’. However, no meaningful conclusions can be drawn as to the intrinsic distinctive character of the mark ‘FOREVER UNIQUE’ for the goods and services at hand.

As far as the acceptance of the mark ‘FOREVER UNIQUE’ by the UK Intellectual Property Office (UKIPO) is concerned, the Office points out that this has been taken into account. However, the Office does not consider that it should follow the UK example, for the reasons stated above. It must be recalled that national decisions cannot relieve the Office of its duty to arrive at its own reasoned decision. It follows that it is the trade mark law of the U.K. which determines whether the sign was validly acquired and what scope of protection it has.

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).

The Office notes that the applicant has reserved the right to make a subsidiary claim that the mark applied for has acquired distinctiveness through use.

Following the above, the applicant is invited to submit the evidence in support of the acquired distinctiveness pursuant to Article 7(3) EUTMR in the English-speaking territory, namely at least at the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The evidence must prove that distinctiveness through use was acquired prior to the EUTM application’s filing date, in the present case before 04/04/2019.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 018 048 102 is declared to be non-distinctive in the relevant English-speaking territory for all the goods and services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Päivi Emilia LEINO