Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/10/2019

STOBBS

Building 1000

Cambridge Research Park

Cambridge CB25 9PD

REINO UNIDO

Application No:	018062414
Your reference:	2681/10048/JM1/HD1/LS1
Trade mark:	NEO FORMA
Mark type:	Word mark
Applicant:	Neo Forma SAS 12, Place Moreau David F-94120 Fontenay-sous-Bois FRANCIA

The Office raised an objection on 04/07/2019 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 03/09/2019, which may be summarised as follows.

1. Instead of examining the sign as a whole, the Office has artificially disseminated the sign into two separate components. Each of the sign’s individual elements is capable of having multiple meanings. There are other ways to express in Greek the meaning established by the Office. The mark, as a whole, is a vague, unusual combination of words and not commonly used to denote this particular meaning.

2. There is no use of the exact phrase on the marketplace.

3. There is no clear and direct link between the goods and services for which the protection is sought and the sign because of its vague meaning and the mental effort it would require on the part of the relevant consumer. The sign appears to be nonsensical or out of the place in relation to the goods and services to which it applies.

4. The Office accepted for registration signs consisting of or containing the word ‘NEO’. In view of these registrations, the present mark should be also accepted.

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).

Article 7(2) EUTMR states that Article 7(1) applies notwithstanding that the grounds for preventing registration obtain in only part of the European Union.

The Office has noted the applicant’s comments in its first argument. However, when assessing a mark, the Office must consider it not in its strictest grammatical sense, but as it would be perceived by the relevant public when encountered in relation to the goods or services for which registration is sought and who form an opinion on its meaning.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office is not convinced by the applicant’s argument that the mark as a whole is a vague, unusual combination of words, not commonly used to denote the particular meaning. The sign at issue is a combination of readily identifiable and ordinary, transliterated, Greek words. The first word is ‘NEO’, which is the Greek term ‘νέο’ transliterated into the Latin alphabet, and means ‘new; latest; most recent’ (information extracted from WordReference Greek-English Dictionary on 03/07/2019 at https://www.wordreference.com/gren/%CE%BD%CE%AD%CE%BF%CF%82 ). The second is ‘FORMA’, which is taken from the Greek term ‘φόρμα’ and means ‘form; shape; formula’ (information extracted from WordReference Greek-English Dictionary on 03/07/2019 at https://www.wordreference.com/gren/%CF%86%CF%8C%CF%81%CE%BC%CE%B1 ).

The words are easily recognisable and presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant Greek-speaking public will perceive the mark not as unusual, but rather as a meaningful expression with the meaning of the new, latest, most recent form, shape or formula.

The Office maintains that, taken as a whole, the expression ‘NEO FORMA’ consists exclusively of a meaningful expression easily understood by the relevant public. It will be perceived not as a trade mark, but as promotional or advertising information indicating to the consumer the positive aspects of the goods and services concerned and, therefore, a characteristic of the goods and services related to their market value.

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 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).

Furthermore, as regards the applicant’s argument that there is no use of the exact phrase on the marketplace and that 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).

As far as the use of the expression ‘NEO FORMA’ on the internet is concerned, the Board of Appeal stated that ‘although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) EUTMR, it is not a conditio sine qua non’ (28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

The Office has noted the applicant’s comments in its third point. Insofar as the applicant seems to argue that Article 7(1)(b) EUTMR is not applicable because the mark ‘NEO FORMA’ is not descriptive and does not designate the goods in question or any of their characteristics, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) EUTMR for reasons other than the fact that it may be descriptive (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 46).

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

As explained above, the Office asserts that this reasoning also applies and the expression in question is meaningful and will easily be understood in respect to all the goods and services, including the services specifically mentioned by the applicant, such as consultancy services relating to training and expert advice arranging of displays for training purposes in Class 41 (in the sense of a new, unconventional, original way of providing the consultancy, or arranging or designing the displays, respectively), rental of computer equipment in Class 42 (for example, as an innovative way of renting adapted to the specific customer needs), as well as to provision of osteopathy services and providing healthcare information by telephone in Class 44 (a unique or state-of-the-art osteopathy treatment, or, a modern communication technology exploiting ways of provision of healthcare information).

Therefore, as stated in the initial notification of 03/07/2019, the Office maintains that the expression ‘NEO FORMA’ is a promotional laudatory message, the function of which is to communicate value and to act as a motivational statement. The expression communicates the message that the contested goods and services are manufactured, created or provided to reflect the newest or most recent formula or methods in the given field, and, in addition, with respect to the contested goods, that they represent their newest form or shape, and/or their most recent, latest version, and it is considered highly improbable that the relevant public would fail to grasp the sign’s promotional laudatory message.

The meaning of the whole expression, ‘NEO FORMA’, is clear to any Greek-speaking consumer, who will immediately, and without any difficulty, establish a direct and specific link between the mark and the goods and services for which protection is sought. Therefore, the Office considers that the expression, ‘NEO FORMA’, is readily intelligible when encountered by the relevant consumer, in conjunction with the goods and services for which protection is sought.

Furthermore, there is nothing in the expression ‘NEO FORMA’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the contested goods and services. Taking into account the goods and services for which registration is sought, the expression ‘NEO FORMA’ will be understood simply as a promotional, laudatory message indicating a characteristic of the applicant’s goods and services. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have a certain originality or resonance that makes it easy to remember (23/06/2011, R 1967/2010‑2, INNOVATION FOR THE REAL WORLD, § 26).

The Office stresses that the sign applied for is rejected not merely because it is a promotional slogan, but rather because it has a clear and unambiguous laudatory meaning. The references to case-law on which the applicant relies cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (23/06/2011, R 1967/2010-2, INNOVATION FOR THE REAL WORLD, § 27).

In addition, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of a trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

The Office has noted the applicant’s comments in its fourth, and final, point. However, the above findings do not contradict the relevant case-law on which the applicant relies, in particular the decisions in cases (20/09/2001, C‑383/99 P, BABY-DRY, EU:C2001:461; 27/11/2003, R 500/2002-2, PRICESCAN, and 06/10/2005-2, R 149/2005-2, IPHONE). The applicant cannot successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances that led to the acceptance of those marks cannot be subject to the objections in the present proceedings. Nor do they represent a valid argument to overcome the objection of lack of distinctiveness of the sign at issue. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

International registration No 1 262 405 ‘NEO’ and the EU trade mark registration No 1 214 143 ‘NEOPIXEL’ both apply to different concepts. They have little or nothing in common with the mark applied for and have been found distinctive in their own right. The trade marks referred to have no obvious and immediate meaning in relation to the goods and services for which they are registered and therefore would give the relevant consumer different impressions in relation to the goods and services in question. The mere fact that they have one of their component words in common with the mark applied for does not mean that they are similar to the sign applied for, or lead to the conclusion that the sign applied for, ‘NEO FORMA’, would be distinctive. Therefore, they are not comparable, for examination purposes, to the mark at issue.

Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle the applicant to equal treatment leading to a registration of the trade mark in question. ‘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’ (27/02/2002, T‑106/00, Streamserve , EU:T:2002:43, § 67; 02/05/2012, T‑435/11, UniversalPHOLED, EU:T:2012:210, § 38).

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).

It follows from all the above that the applicant has not succeeded in convincing the Office that the sign applied for, ‘NEO FORMA’, will be perceived by consumers as denoting the commercial origin of the goods and services for which registration is sought. For the abovementioned reasons, the expression ‘NEO FORMA’ lacks any distinctive character in respect of the contested goods and services for which registration is sought, pursuant to Article 7(1)(b) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace; that is, it fails to distinguish the applicant’s goods and services from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its laudatory sense.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 18 062 414 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.

Robert KLECUN