Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/07/2020

BEAUTY BRANDS CONCEPT SPÓŁKA Z OGRANICZONĄ ODPOWIEDZIALNOŚCIĄ

UL. ŻYTNIA 19

05-506 LESZNOWOLA

POLONIA

Application No:	018189520
Your reference:	BBC20200130-01
Trade mark:	SKIN BIORYTHM
Mark type:	Word mark
Applicant:	BEAUTY BRANDS CONCEPT SPÓŁKA Z OGRANICZONĄ ODPOWIEDZIALNOŚCIĄ UL. ŻYTNIA 19 05-506 LESZNOWOLA POLONIA

The Office raised an objection on 31/03/2020 pursuant to Article 7(1)(b) and 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, which forms an integral part of this decision.

The applicant submitted its observations on 01/06/2020, which may be summarised as follows:

1. The trade mark ‘SKIN BIORYTHM’ has a minimum of inherent distinctiveness and the EUIPO disregarded criteria for the assessment of the inherent distinctiveness of the word marks being slogans.

2. The applicant argues that before the filing of the application in question the Office allowed many registrations of the signs having the same characteristics with analogues promotional formula.

3. The applicant claims that it has been erroneously assumed that the printouts from the internet contained tin the objection letter show the widespread use of the ‘SKIN BIORYTHM’ sign on the market.

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 trade mark ‘SKIN BIORYTHM’ has a minimum of inherent distinctiveness and the EUIPO disregarded criteria for the assessment of the inherent distinctiveness of the word marks being slogans.

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).

As previously pointed out, the relevant English-speaking consumers will understand the mark ‘SKIN BIORYTHM’ as, ‘biorhythm of the skin’ and instantly recognized that the element ‘BIORYTHM’ constitutes a misspelled version of the English term ‘BIORHYTHM’. The quoted definitions were extracted from the Collins English Dictionary and constitute objective and clear evidence of the meaning of the terms. The fact that other possible interpretations may occur does not invalidate the finding that a substantial part of the English-speaking public in the EU will understand the sign as per the meaning provided by the Office in its initial notification.

The applicant claims that the sign in question is not descriptive of cosmetic products.

As regards the applicant’s claim that the mark cannot be regarded as purely descriptive in its totality, because no sufficiently direct link can be established between the trade mark and the goods applied for, the Office would like to highlight that the objection raised and notified on 31/03/2020 concerns exclusively the lack of distinctive character of the trade mark applied for, pursuant to Article 7(1)(b) and 7(2) EUTMR, and not its descriptiveness.

Indeed, for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods/services relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods/services in question (judgment of 30/06/2004, T‑281/02, ‘Mehr für Ihr Geld’, paragraph 31; emphasis added).

Furthermore, the Office has taken the mark into account as a whole and has assessed its distinctive character in relation to the goods in question, in accordance with the overall impression produced by the mark and taking into consideration the commercial field in which the relevant goods are generally marketed.

In the present case, the relevant public will immediately perceive the expression ‘SKIN BIORYTHM’ as a promotional laudatory message, the function of which is to communicate a customer service and a value inspirational statement vis-à-vis the relevant goods. The consumers 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, namely that the goods in question will maintain and/or stimulate the skin´s natural physiological state and in this way allowing the skin to maintain its biological balance.

Consequently, as explained in the Office objection, when encountering this expression, the relevant English-speaking consumers will not tend to perceive it as an indication of any particular commercial origin, but will understand it as a mere promotional and informative statement.

The market reality shows that consumers are used to coming across such promotional messages, and to perceive them first and foremost as complementary informational or advertising indications, rather than as an indication of the commercial origin of the respective goods and services.

Furthermore, these conclusions were corroborated by the search made online, which confirmed that the words in question are commonly used online in relation to the relevant goods, as per the results provided in the Office’s objection letter of 31/03/2020.

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.

The Office respectfully disagrees with the applicant’s contention that the combination of the elements ‘SKIN BIORYTHM’ create an expression that apart from conveying a laudatory message will be able to function as a badge of origin for the goods applied for. The Office notes that expression as such does not constitute a play on words or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort as it would be a case in the decision mentioned by the applicant - decision of the Second Board of Appeal of the Office of 23/09/2010, in case R 443/2010-2, RED LIQUID FLOWING IN SEQUENCE OF STILLS, §. 21 a movement mark in relation to the goods in Class 9 and services in Classes 38 and 41. However, the Office notes that the question regarding the registrability of the said mark concerned Article 4 CTMR and Article 7(1)(a) CTMR and not Article 7(1)(b) EUTMR in combination with Article 7(2) EUTMR).

As mentioned above, in the present case, the word ‘SKIN’ will be perceived according to the meaning mentioned in the objection letter and the word ‘BIORYTHM’ as a misspelled version of the English term ‘BIORHYTHM’. Consequently, the expression ‘SKIN BIORYTHM’ does not trigger a complex mental process on behalf of the consumers and the Office considers that the above described comprehension is simple and immediate for the average English-speaking consumer.

Consequently, the sign applied for would not allow the relevant public to distinguish the commercial origin of the goods from those of other undertakings providing identical or similar ones and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) and 7(2) EUTMR.

Furthermore, it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods/services which are likely to be known by anyone and are in particular known by the consumers of those goods/services (see, by analogy, judgment of 22/06/2004, T‑185/02, ‘PICARO’, paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T‑129/04, ‘Shape of a plastic bottle’, paragraph 19).

On the basis of that practical experience, the Office considers that, in relation to the part of the goods applied for, the word mark ‘SKIN BIORYTHM’ has no features that might lead the relevant public to believe that it is an indication of commercial origin.

2. The applicant argues that before the filing of the application in question the Office allowed many registrations of the signs having the same characteristics with analogues promotional formula.

As regards the applicant’s argument that a similar registrations containing a promotional formula have 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 registration cited by the applicant is sufficiently dissimilar to the present application for it to be dismissed as argument in favour of the registration of the present sign. The earlier registration referred to by the applicant - EUTM No 5300132 ‘BIORYTHM’ has been filed on 07/09/2006 and registered by the Office on 16/08/2007 in relation to goods in Class 3. In contrast to the present application, this previous registration does not contain the word ‘SKIN’ which conveys a very concrete concept as to the subject of application for the relevant goods in Class 3. Furthermore, it was registered thirteen years ago. The practice of the Office changes regularly on the basis of the regulations, the applicable and relevant case law, and the changing market reality. The trade mark application which is the subject of this decision has been analyzed on its merits in the context of the current situation on the economic market of the European Union. Additionally and for the sake of completeness it is worth mentioning that while the Office should endeavor 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.

3. The applicant claims that it has been erroneously assumed that the printouts from the internet contained in the objection letter show the widespread use of the ‘SKIN BIORYTHM’ sign on the market.

As to the applicant argument, it has to be put forward that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods/services which are likely to be known by anyone and are in particular known by the consumers of those goods/services (see, by analogy, judgment of 22/06/2004, T‑185/02, ‘PICARO’, paragraph 29). In such a case, the Office is not obliged to give examples of such practical experience (judgment of 15/03/2006, T‑129/04, ‘Shape of a plastic bottle’, paragraph 19). In this regard, the Office wishes to kindly remind that the printouts from the internet included in the objection letter are used as examples of how the trade mark ‘SKIN BIORYTHM’ is used nowadays in the market in relation to cosmetics and cosmetics preparations.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18189520 is hereby rejected for some of the goods in Class 3, namely for:

Klasa 3: Nielecznicze preparaty do pielęgnacji urody; Preparaty kosmetyczne do złuszczania naskórka; Kremy do redukcji cellulitu; Preparaty do sztucznego opalania; Środki złuszczające skórę; Preparaty do mycia i pielęgnacji ciała; Balsamy po opalaniu; Olejki do opalania; Balsamy do redukcji cellulitu; Środki nawilżające po opalaniu; Preparaty złuszczające do pielęgnacji skóry [peelingi]; Środki do usuwania makijażu; Kremy ujędrniające skórę; Żele po opalaniu [kosmetyki]; Środki wyszczuplające [kosmetyki], inne niż do celów medycznych; Mydła do pielęgnacji ciała; Kosmetyczne środki nawilżające; Kremy do opalania skóry; Kosmetyki do cery zmarszczkowej; Kremy do mycia; Płyny do mycia; Chusteczki nasączone preparatem do oczyszczania skóry; Olejki po opalaniu [kosmetyki]; Preparaty odżywiające skórę; Emulsje do mycia ciała nie zawierające mydła; Preparaty kosmetyczne do oczyszczania skóry; Kosmetyki do makijażu; Preparaty do pielęgnacji skóry; Mydła; Kosmetyki do pielęgnacji skóry; Żele do opalania; Nielecznicze mydła toaletowe; Kremy złuszczające; Kremy wybielające do skóry.

The application may proceed in relation to the remaining goods in Class 3, namely:

Klasa 3: Lakier do paznokci do celów kosmetycznych; Preparaty do włosów; Odżywki utwardzające do paznokci [kosmetyki]; Środki do pielęgnacji włosów; Kosmetyki do włosów; Olejek do skórek wokół paznokci; Zmywacze do paznokci; Preparaty do pielęgnacji zębów; Preparaty do pielęgnacji paznokci; Odżywki do włosów; Emalie do paznokci; Płyny do stylizacji; Płyny do stylizacji włosów; Szampon do włosów; Środki do nawilżania włosów.

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.

Monika CISZEWSKA

Attachment: 110 letter of 31/03/2020