Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/11/2019

Christian Rapani

Radetzkystraße 10

A-8010 Graz

AUSTRIA

Application No:	018052006
Your reference:	WordMarkTakeYourChance
Trade mark:	Take Your Chance
Mark type:	Word mark
Applicant:	LOPOCA LTD 95 Strovolos Avenue CY-2020 Strovolos, Nicosia CHIPRE

The Office raised an objection on 14/05/2019 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 08/07/2019, which may be summarised as follows:

1. The position of the Office with regard to the registrability of the slogan ‘Take Your Chance’ is in conflict with the practice of a number of national trade mark offices, WIPO and previous decisions of EUIPO.

2. If the slogan ‘Take Your Chance’ has been found distinctive for cheese in class  29, there is no impediment to allowing registration of the same slogan for goods and services in classes 9, 16, 28, 35, 36, 38, 41, 42 and 45.

3. The laudatory connotation of a word mark does not exclude the ability of a slogan to guarantee to consumers the indication of the commercial origin of the goods and services.

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.

General remarks on Article 7(1)(b) EUTMR

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 to the applicant’s arguments

1. The position of the Office with regard to the registrability of the slogan ‘Take Your Chance’ is in conflict with the practice of a number of national trade mark offices, WIPO and previous decisions of EUIPO.

As regards the national decisions referred to by the applicant, 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).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 40).

As regards the applicant’s argument that a similar registration has been accepted by the EUIPO, 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‑s36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67).

Nevertheless, and by way of clarification, in order for previous registrations to be considered analogous to the present case, it is not enough to simply show that they contain similar component parts of the sign applied for, because the sign has been objected to when viewed as a whole and not because of the meanings of its individual component parts. Moreover, every trade mark application is examined based on its own merits and the Office is in no way bound by previous decision. The previous registrations cited by the applicant are all sufficiently dissimilar to the present application for them to be dismissed as arguments in favour of the registration of the present sign. In particular, the earlier registration granted by EUIPO, EUTM 010598126, in fact refers to a much more complex slogan, namely ‘No limits in cheese TAKE YOUR CHANCE !’ than the one being subject of the present proceedings, which possibly has tipped the scales in favour of its acceptance.

Moreover, while the Office should endeavour to apply a consistent practice in examining trade marks in relation to absolute grounds for refusal, apart from the fact that registration practices develop over time, it is unfortunately inevitable that doubtful trade marks are sometimes registered.

2. If the slogan ‘Take Your Chance’ has been found distinctive for cheese in class  29, there is no impediment to allowing registration of the slogan for goods and services in classes 9, 16, 28, 35, 36, 38, 41, 42 and 45.

In this regard, it must be noted that the sign should never be assessed in isolation; it is crucial to take into consideration how the expression at hand will be seen by the relevant public in relation to the specific goods and services covered by the application.

As the Office pointed out in its notice of 14/05/2019, the sign at issue, ‘Take Your Chance’, will merely be perceived by the relevant public as a promotional slogan encouraging the consumers to take the opportunity and try any of the goods or services that the applicant offers under the mark.

Moreover, apart from the promotional message explained above, with regard to some of the goods in classes 9, 28 and services in classes 35 and 41 relating to games or gambling or financial services in class 36, the sign ‘Take Your Chance’ will be perceived as an inspiration to take the risk, make the bet, seize the opportunity, try one’s luck with the hope of success.

As a result, the Office maintains that in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the banal promotional information conveyed in relation to the goods and services in question, namely that the relevant consumers should grab the chance and try them; use the goods and services with the hope of success, even if it’s risky.

Furthermore, the fact that the sign at issue 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 84).

In view of the above, the Office insists that due to the banal promotional message aimed at inciting the relevant consumers to take the risk and try the goods and services offered under the sign, the slogan ‘Take Your Chance’ would be considered devoid of distinctive character for any goods and services.

3. The laudatory connotation of a word mark does not exclude the ability of a slogan to guarantee to consumers the indication of the commercial origin of the goods and services.

The Court of Justice in its judgments of 21/01/2010, C 398/08 P, ‘Vorsprung durch Technik’, and of 13/04/2011, T 523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, § 37), provided a number of criteria to be used when assessing the distinctive character of a slogan (judgments of 21/01/2010, C 398/08 P ‘VORSPRUNG DURCH TECHNIK’, § 47, and of 13/04/2011, T 523/09, ‘WIR MACHEN DAS BESONDERE EINFACH’, § 37).

An advertising slogan is likely to be distinctive whenever it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because it:

• constitutes a play on words and/or

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or

• has some particular originality or resonance and/or

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness:

• unusual syntactic structures

• the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.

After due consideration of the sign in question and the applicant’s observations, it has been found that the mark applied for does not meet the criteria set by the Court of Justice.

In the case at issue the sign ‘Take Your Chance’ is composed of commonplace words which are constructed by means of a grammatically and syntactically correct structure of the English language. No stylistic devices such as alliteration, metaphor, rhyme or paradox have been used to design the slogan. Additionally, the combination of elements does not constitute a play on words nor introduces elements of conceptual intrigue. Quite the opposite, from a semantic point of view, the combination of words can only be interpreted as a direct and meaningful expression: take the opportunity, take the risk, try your luck, make a bet.

While it is more common in the English language to use the expression ‘take a chance’, the fact that in the sign applied for the indefinite article ‘a’ is replaced by the possessive pronoun ’your’ will not trigger a cognitive process in the mind of the relevant public. In fact, the expression ‘Take Your Chance’ is readily intelligible for the relevant consumer and no interpretative effort is required to grasp its meaning.

There is no doubt that the expression will be perceived as a mere promotional slogan, encouraging the consumers to take the opportunity and try any of the goods or services that the applicant offers under the sign at issue.

As such, the slogan ‘Take Your Chance’ is not capable of fulfilling the essential function of a trade mark, that is of acting as a badge of commercial origin, identifying the goods and services of a company since it merely conveys an inspirational and promotional message encouraging to purchase the applicant’s goods and services (see by analogy decision of the First Board of Appeal, of 24/10/2012, R 776/2012-1, ‘LUCKY LUCKY’, para. 20-29.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018052006 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.

Anna MAKOWSKA

Attachment: Notice of 14/05/2019 of absolute grounds for refusal