Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 05/11/2019

Rocks Off Limited

Satisfaction House, Unit C

Northfield Point

Cunliffe Drive

Kettering, Northamptonshire NN16 9QJ

REINO UNIDO

Application No:	018075324
Your reference:	Regala
Trade mark:	REGALA
Mark type:	Word mark
Applicant:	Rocks Off Limited Satisfaction House, Unit C Northfield Point Cunliffe Drive Kettering, Northamptonshire NN16 9QJ REINO UNIDO

The Office raised an objection on 26/06/2019 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 20/07/2019, which may be summarised as follows:

1. The mark must be assessed as a whole rather than seeking to analyse various elements of the mark separately.

2. Minimum level of distinctiveness is sufficient. Registration of a mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness.

3. The mark does not have direct meaning in relation to the goods for which protection is sought and it is not descriptive. Mental steps need to be taken in order to understand the meaning of the mark in relation to the goods in question. The mark is vaguely allusive at most.

4. The mark is an unusual juxtaposition of two words.

5. There is no need to keep the term free for competitors. It must be considered whether third parties are likely to use a sign corresponding to the mark applied for in order to describe characteristics of the goods/services.

6. Even if the mark would be perceived as a promotional expression it does not mean that the mark cannot function as a trade mark. The applicant refers to the mark ‘Vorsprung durch Technik’ which the ECJ recognised as a distinctive slogan in its decision of 21 January 2010, C-398/08 P.

Classification of goods and services

On 13/06/2019, the Office sent a notice of requirement to amend classification of the list of goods and services to the applicant.

The applicant sent an amendment to Class 10 specifying some of the terms on 27/06/2019. On 27/06/2019, the Office sent a confirmation of amendment of classification and the list of goods and services now reads as follows:

Class 10 Massage instruments and apparatus; manually-operated massage devices; instruments and apparatus for vibromassage; massage apparatus for use as marital aids; vibrators, being adult sexual aids; stimulators, being adult sexual aids; dildos; marital aids; sexual massage devices and apparatus; sex toys; sexual aids and appliances; sex erection aids; apparatus for the treatment of sexual dysfunction; devices to be worn on the penis; penile sheaths; prosthetic sexual aids; sexual apparatus, devices and articles of rubber, silicone or other elastomers for, prophylactic, therapeutic, medical or sexual purposes, namely, condoms for hygienic purposes, condoms for prophylactic purposes, therapeutic apparatus incorporating massaging facilities, massage apparatus [for medical purposes], sexual activity apparatus; condoms; Nonchemical contraceptives; Contraceptives [apparatus]; contraceptive devices; parts and fittings for all the aforesaid goods.

The Office notes that the amendment of the list of goods and services does not have any impact on the objection on absolute grounds as the nature of the goods was already sufficiently clear in order to assess distinctiveness of the mark when the absolute grounds objection was raised.

As regards absolute grounds for refusal

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).

It should also be recalled that pursuant to Article 7(2) EUTMR a trade mark shall not be registered even if the grounds of non-registrability are met only in part of the European Union. Therefore, an obstacle pertaining to one of the territories of the European Union is deemed to be sufficient in order to reject a trade mark application.

The Office agrees with the applicant that distinctiveness of a mark must be assessed in a manner that takes into account the mark as a whole. However, the Office would like to point out that nothing prevents the Office from examining each of the mark’s individual elements separately (09/12/2010, T 282/09, Carré convexe vert, EU:T:2010:508, § 18; 21/01/2011, T-310/08, executive edition, EU:T:2011:16, § 28 and 27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 21 and the case-law cited).

It must be borne in mind that, although the average consumers normally perceive a mark as a whole and do not engage in an analysis of its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, as in the present case, suggest a concrete meaning or which resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

The Office agrees with the Applicant that only signs that are entirely devoid of any distinctive character are excluded from registration.

However, 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 Office notes that the mark ‘REGALA’ is entirely devoid of any distinctive character. As stated in the letter of objection, the relevant Spanish and Italian-speaking consumer would understand the sign as having the following meaning: give as a present.

In Spanish the word mark applied for, REGALA, is the second-person singular imperative form and third person singular form of the verb ‘regalar’ which has the meaning ‘to give; give as a present’ and ‘to give sb sth; make sb a present of sth’ in English. In Italian, the term ‘REGALA’ is the second-person singular imperative form and third person singular form of the verb ‘regalare’ which has the meaning ‘to give sth (as a present); to give sth away’ in English.

The sign for which protection is sought, REGALA, would simply be perceived by the

relevant public as a promotional laudatory slogan. Moreover, in the present case, the

relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to invite the consumers to give the goods in questions as presents to another.

Following the reasons presented above, the Office is of the opinion that the word mark applied for does not allow the public at whom the goods are directed to be guided as to the commercial origin of the goods. 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).

As regards the applicant’s argument that the mark does not have any direct meaning in relation to the goods applied for, 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 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 goods 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 goods, entirely devoid of distinctive character. The Office maintains that the mark has a clear laudatory meaning for the relevant Spanish and Italian-speaking consumer and therefore it does not have capacity to function as a badge of origin.

As noted in the letter of objection, the term ‘REGALA’ is the imperative form of the verb ‘regalar’ in Spanish and ‘regalare’ in Italian and it is not an unusual juxtaposition of two words for the relevant public as the applicant claims.

Furthermore, the Office would like to point out that the applicant’s argument that there is no need to keep the term free for competitors is completely irrelevant in the present context as the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned (judgment of 21/01/2010, C-398/08 P, ‘Audi’, ECLI:EU:C:2010:29 § 45; 12/07/2012, C-311/11 P, ‘Smart Technologies’, ECLI:EU:C:2012:460, § 34).

As regards the applicant’s argument that also a slogan can function as a trade mark, the Office notes that 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 Spanish and Italian language and has a clear laudatory meaning in Spanish and Italian, has a clear laudatory meaning with respect to the goods for which protection is sought as the mark would encourage the relevant consumers to buy such goods as presents.

In defence of the mark, the applicant relies heavily on the case-law, in particular on the judgment in the case ‘Vorsprung durch Technik’ (C-398/08 P). As regards the referred to ‘Vorsprung durch Technik’, the Office is aware of the judgments but the judgment does not have any impact on the case at hand as in the present case there is a clear meaning for the mark applied for which is entirely devoid of any distinctive character for the claimed goods.

As also rightly pointed out by the applicant, the registration of a mark cannot be denied merely because a mark is laudatory or has a promotional message ‘Vorsprung durch Technik’). The Court, in ‘Vorsprung’, draws the logical conclusion that the fact that the trade mark ‘is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character’ (by analogy, 04/10/2001, C-517/99, ‘Bravo’, EU:C:2001:510). This is of course true, if the public perceives a trade mark as an indication of commercial origin, it is distinctive, irrespective of whether the trade mark also has other functions.

The cited judgment however does not imply that suddenly all slogans have become registrable (see 12/02/2014, T-570/11, ‘La qualité est la meilleure des recettes, EU:T:2014:72). Although it indeed clarifies certain questions relating to the acceptability of slogans as trade marks, it 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. In contrast, trade marks which are merely an ordinary advertising message, which require no effort, which follow obviously from the slogan or do not set off a ‘cognitive process in the minds of that public’ are not distinctive.

The ‘resonance’ of ‘Vorsprung durch Technik’ identified by the Court was rather due to the fact that the sign was ‘a widely known slogan which has been used by Audi for many years’. It was held in effect that the slogan was distinctive in relation to a wide range of goods and services as a result of the distinctiveness acquired through longstanding use as a slogan for promoting the sale of cars. The individual case is therefore always relevant.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 075 324 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.

Päivi Emilia LEINO