Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 01/10/2019

LANE IP LIMITED

The Forum, St Paul’s

33 Gutter Lane

London EC2V 8AS

REINO UNIDO

Application No:	018060604
Your reference:	0901.0021
Trade mark:	CARING FOR BIG AND LITTLE HEARTS
Mark type:	Word mark
Applicant:	Mezzion Pharma Co., Ltd., 3F, C&H Bldg 35, Teheran-ro 87-Gil Gangnam-Gu, Seoul 06167 REPÚBLICA DE COREA (LA)

The Office raised an objection on 05/06/2019 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 05/08/2019, which may be summarised as follows:

1. The mark ‘CARING FOR BIG AND LITTLE HEARTS’ has at least the minimum level of distinctiveness.

2. The expression is not common parlance and consumers do not refer to the services or the service provider as ‘CARING FOR BIG AND LITTLE HEARTS’. The mark has no meaning in relation to the services for which protection is sought and the Office has not provided any evidence in support that the expression is used in relation to these services.

3. If a mark is descriptive pursuant to Article 7(1)(c) EUTMR, the mark is also devoid of any distinctive character pursuant to Article 7(1)(b) EUTMR. However, when it is shown that the mark does not hold any descriptive meaning, it must be also accepted under Article 7(1)(b) EUTMR.

4. The applicant refers to the cases ‘MEDI’ (12/07/2012, T-470/09, Medi, EU:T:2012:369) and ‘ECO PRO’ (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220) and states that those marks were less distinctive than the mark applied for.

5. The mark applied for is not promotional as the meaning of the term ‘promotional’ is ‘designed to advertise something in order to sell it’. Additionally, it should be kept in mind that it is inappropriate to apply stricter criteria to slogans when assessing their distinctiveness. The mark is vague and requires some interpretation from consumers. It has an unusual syntactic structure and the mark is allusive as it does not explicitly mention what the ‘CARE’ is being provided or how the care is being administered.

On 12/06/2019, the Office sent a notice of requirement to amend classification of the list of goods and services. On 18/07/2019, the applicant replied to the Office’s notice and approved the transfer of the term ‘medical testing and screening services’ from Class 42 to the proper class, Class 44.

After the amendment of the classification, the list of goods and services reads as follows:

Class 41 Educational services, namely, seminars, blogs, websites and other materials in the field of pharmaceuticals, medicine, health, wellbeing, and cardiac issues.

Class 42 Medical and pharmaceutical research and development services; scientific and technological research services related thereto; clinical trials; on-line nondownloadable software in the field of medical and pharmaceutical information, research and testing.

Class 44 Medical testing and screening 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.

Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Taken into account the mark as a whole with respect to the services for which protection is sought, the Office does not find the applicant’s argument convincing that the mark ‘CARING FOR BIG AND LITTLE HEARTS’ would have at least the minimum level of distinctiveness.

Although it is acknowledged that even signs with low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character. This is because the distinctive character means that the trade mark guarantees the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (15/09/2005, C-37/03, ‘BioID’, ECLI:EU:C:2005:547).

In the present case, the mark ‘CARING FOR BIG AND LITTLE HEARTS’ is an expression that has a clear meaning in English. As stated in the letter of objection, the word ‘CARING’ comes from the verb ‘care’ that according to Collins Dictionary (at: https://www.collinsdictionary.com/) has the following meaning ‘to have regard, affection, or consideration (for) and ‘careful and serious attention’. The preposition ‘FOR’ is followed by the adjective ‘BIG’, which can refer to ‘grown-up’ according to the same dictionary. Furthermore, the conjunction term ‘AND’ in the mark is followed by the adjective ‘LITTLE’ that can refer to ‘young’ according to Collins Dictionary. The last word of the mark, ‘HEARTS’, is the plural forms of the word ‘heart’ that has the following dictionary meaning in English: ‘the hollow muscular organ in vertebrates whose contractions propel the blood through the circulatory system’.

The expression ‘CARING FOR BIG AND LITTLE HEARTS’, taken as a whole, complies with the grammar rules of the English language and is immediately meaningful for the relevant public. The Office is still of the opinion that the mark would be simply perceived as a promotional expression highlighting positive aspects of the services in question.

In practise, the mark would inform that seminars, blogs, websites and other materials in the field of pharmaceuticals, medicine, health, wellbeing, and cardiac issues in Class 41 provide serious attention to the hearts of both grown-up and child patients or are otherwise related to such care. Furthermore, research and development services, clinical trials and online non-downloadable software in the field of medical and pharmaceutical information, research and testing in Class 42 and medical testing and screening services in Class 44 also provide careful attention to the hearts of both adults and children or are otherwise sufficiently related to such care.

The message ‘CARING FOR BIG AND LITTLE HEARTS’ does not allow the public at whom the services are directed to be guided as to the commercial origin of the services. This is why the claimed trade mark is not prima facie distinctive. It could originate from any provider or be attributed to any provider, for as long as the consumer is unable to create a link to a specific supplier in consequence of extensive use (Article 7(3) EUTMR). Thus, the mark is ineligible for registration pursuant to Article 7(1)(b) and 7(2) EUTMR.

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 applicant’s argument that the relevant consumer would not refer to the services for which protection is sought by using the expression ‘CARING FOR BIG AND LITTLE HEARTS’, for a finding that there is no distinctive character, 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).

The Office agrees with the applicant that according to the case-law of the European courts, a word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services for the purposes of Article 7(1)(b) EUTMR (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39). However, the Office would like to point out that the Office has not considered that the mark is descriptive and the objection has been raised solely pursuant to Article 7(1)(b) and 7(2) EUTMR, as the mark does not have the capacity to function as a trade mark with regard to the claimed services since it would simply be perceived as a promotional slogan. Whilst the sign does not have a direct descriptive connotation, it is nonetheless, because of its meaning, in the context with the claimed services, entirely devoid of distinctive character.

Since the sign does not immediately indicate to the consumer the origin of the services, but just gives him purely promotional information about the services, the consumer will not take the time either to enquire into the sign’s various possible functions or to mentally register it as a trade mark. It must be therefore concluded that the sign will be perceived by the relevant public primarily as a promotional slogan, based on its inherent meaning, rather than as a trade mark (see, in this sense: 05/12/2002, t-130/01, ‘Real People, Real Solutions’, ECLI:EU:T:2002:301).

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).

As regards the applicant’s argument that the mark ‘CARING FOR BIG AND LITTLE HEARTS’ is more distinctive than the marks ‘MEDI’ (12/07/2012, T-470/09, Medi, EU:T:2012:369) and the mark ‘ECO PRO’ (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220), the Office firstly notes that the marks referred to by the applicant are entirely different from the mark applied for. No meaningful conclusions can be drawn as to the intrinsic distinctive character of ‘CARING FOR BIG AND LITTLE HEARTS’ due to the refused marks ‘MEDI’ and ‘ECO PRO’.

Furthermore, the Office does not agree with the applicant’s argument that the mark in question is not promotional. Taken as a whole, the semantic content of the mark indicates to the consumers a characteristics of the 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 services (30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, ECLI:EU:T:2004:198, § 31).

It is true 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 (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). Furthermore, the Office agrees with the applicant that according to the established case law 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).

However, 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 Office thus notes that advertising slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public perceives them as a mere promotional formula. However, marks are deemed to be distinctive if, apart from their promotional function, the public perceives them as an indication of the commercial origin of the goods or services in question.

In the present case, the above-mentioned requirements for distinctiveness are not fulfilled as it is clear that the expression ‘CARING FOR BIG AND LITTLE HEARTS’ for the services applied for in Classes 41, 42 and 44 does not have capacity to function as a trade mark.

Furthermore, it is true that a slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is likely to be distinctive since consumers would not be able to establish a clear and direct link with the goods and services for which the trade mark is protected.

In the present case, however, the above is not applicable as the word mark applied for, which indeed follows the grammar rules of the English language and has a clear laudatory meaning in English, has a clear and direct link to the services applied for as described above.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 060 604 is hereby rejected for all the services claimed, namely for

Class 41 Educational services, namely, seminars, blogs, websites and other materials in the field of pharmaceuticals, medicine, health, wellbeing, and cardiac issues.

Class 42 Medical and pharmaceutical research and development services; scientific and technological research services related thereto; clinical trials; on-line nondownloadable software in the field of medical and pharmaceutical information, research and testing.

Class 44 Medical testing and screening services.

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.

Päivi Emilia LEINO