Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 28/10/2019

Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB

Beselerstr. 4

D-22607 Hamburg

ALEMANIA

Application No:	018048409
Your reference:	WZ107453/DE/KJ
Trade mark:	BUILDING HEALTHY SPACES
Mark type:	Word mark
Applicant:	Citron Hygiene LP 555 Alden Road Markham, Ontario Ontario L3R 3L5 CANADÁ

The Office raised an objection on 11/6/2019 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 11/10/2019, which may be summarised as follows:

1. The particular combination of these single words and its semantic content indicates to the consumer a characteristic of the (recently amended) services relating to their market value which the relevant public will perceive as an indication of the commercial origin of the Services (30/06/2004, T-281/02, 'Mehr für Ihr Geld', ECLI:EU:T:2004:19S, 5 31).

2. It is not merely a common advertising message, but contains a play on words. The expression is catchy and unusual in the context of the relevant services. It is necessary for the relevant public to perform greater analysis of the trade mark by considering that "services have to do with the hygiene of washrooms" + "a washroom should be a healthy place" + "the Services concerned are in the nature of making an area healthy". Hence, it gives the slogan some degree of originality and expressiveness which makes it memorable.

3. "Building" is primarily used as a noun meaning a structure with walls and a roof, such as a house or factory". Where "build" is used as a verb, its meaning is the process of creating or developing something which does not exist. Hence, the slogan "BUILDING HEALTHY SPACES" could be considered, if at all, descriptive with regard to construction and construction services of class 37, but not with regard to other services of class 37.

4. The mark has been accepted for registration in the US and Canada.

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).

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 contested sign will be immediately understood by the relevant English-speaking public as highlighting a desirable characteristic of the services provided by the applicant, namely that the washroom, hygiene and cleaning services provided by the applicant make the area where they are provided healthy, or create a healthy with the provision of first aid kits, defibrillators, etc.

In relation to the services applied for, the term ‘BUILDING HEALTHY SPACES’ will be seen as a purely promotional, generic message which merely serves to highlight positive aspects of the services concerned, namely that they contribute to the health of the users coming to those areas with the provision of such services in those particular areas (21/01/2010, C 398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45; 12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 34).

The broad laudatory meaning of the contested sign is clear. The expression triggers no cognitive process nor does it require any interpretive effort to understand. Its meaning is clear and directly related to each of the refused services. It informs the relevant public that these services are destined towards the construction, formation, building of salutary, healthy places by delivering those services, services such as fixture of sanitizing products, disposal of soaps and other sanitizing products, disposal of cleaning products; first aid kits, defibrillators, etc, where the applicant contributes to the health of the users by the provision of hygienic products and/ or defibrillators or first aid kits. When used with the services at issue, the slogan is banal with a simple and direct laudatory message (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 29-30; 06/12/2013, T 428/12, Valores de futuro, EU:T:2013:629, § 46 and 54; 03/09/2015, R 192/2015-4, IT’S A LIFESTYLE, § 11).

As regards the national decisions referred to by the [applicant][holder], according to case-law, ‘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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18048409 is hereby rejected for all the 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.

Claudio MARTINEZ MÖCKEL