Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 02/09/2019

CSY London

10 Fetter Lane

London GB_LND EC4A 1BR

United Kingdom

Application No:	18052708
Your reference:	AJC/LB/71519EM1
Trade mark:	TO BETTER DAYS
Mark type:	Word mark
Applicant:	Horopito Limited 82 St John Street London EC1M 4JN United Kingdom

The Office raised an objection on 17/05/2019 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 17/07/2019, which may be summarised as follows.

1. The sign ‘TO BETTER DAYS’ is not a normal form of words for an English speaker as it would be correct to say “for better days”. The sign, therefore, sounds unusual to the English-speaker’s ear and does not correspond to the promotional significance attributed to it by the Office. If anything, the use of the first word “TO” might evoke the perception of the words of a toast (which are often directed towards the listener’s continued good health).

2. The sign has been registered in various English-speaking countries.

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.

1.

As summarized above, the applicant essentially based its arguments on the assertion that the sign applied for is an unusual combination of words, and the resulting sum possesses the necessary distinctiveness. The Office cannot endorse these assertions for the reasons set forth below.

In the present case, the sign consists of the juxtaposition of words whose dictionary meanings were provided in the Office’s objection letter. The applicant has not questioned those definitions according to which it was found that the mark as a whole indicates the goods are meant to have a positive effect and improve one’s condition. Rather, the applicant asserts that the correct expression would be ‘for better days’. While it is not disputed that this term exists, it does not mean that the information conveyed by the sign, differing only in having ‘to’ instead of ‘for’, would not be clear to consumers. The presence of the word combination ‘better days’ in itself contains an unambiguous and laudatory message as regards the desired/promoted positive effect of the goods in question. This is all the more probable as this is exactly the fundamental purpose of the relevant goods, namely to make one’s condition better or to make one feel better. This obvious message cannot in any way be made distinctive by adding ‘to’ since it merely refers to a future point of time. The sign, therefore, consists of a non-distinctive combination of words which is neither striking nor unusual and consumers would require no mental effort to understand the underlying, laudatory, message. Furthermore and based on the foregoing, the applicant’s claim that the sign would be perceived, if anything, as the words of a toast, cannot alter the above findings as it is sufficient for a trade mark to be refused registration if one of the possible interpretations of the sign designates a characteristic of the goods or services concerned. (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

2.

The applicant refers to registration of the same mark in the United Kingdom, in the United States of America and in New Zealand. In this regard, it is recalled that, 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). Also, 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). Furthermore, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. Therefore, the mere existence of registration of the same sign in other jurisdictions is not sufficient to waive the objection.

As the mark conveys a clear and understandable meaning in relation to the goods, the Office maintains that the sign in question is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR. Only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that Article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. From the impression produced by the mark, the connection between the relevant goods and the mark is not sufficiently indirect to endow the mark with the minimum degree of inherent distinctiveness required under Article 7(1)(b) EUTMR (see also 12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 99). The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the goods for which registration is sought.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 052 708 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.

Ferenc GAZDA