Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 05/07/2020

Bristows LLP

Avenue des Arts 56

B-1000 Bruxelles

BÉLGICA

Application No:	018196300
Your reference:	414/IBG-BOMBOM
Trade mark:	BOM BOM
Mark type:	Word mark
Applicant:	HBD SGPS, Sociedade Gestora de Participações Sociais, Unipessoal, Lda. Av. Fontes Pereira de Melo, n.º 30 – 7º andar P-1050-122 Lisboa PORTUGAL

The Office raised an objection on 21/02/2020 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.

The applicant submitted its observations in reply to the notice on absolute grounds for refusal, which may be summarised as follows:

1. The relevant public has not been defined by the Office since the letter of objection only states that the relevant public consists of the Portuguese-speaking public. In the present case, the services designated by the application are likely to be aimed at the public at large, with an average degree of attention. The degree of perception and attentiveness will average amongst such a public and they will be more inclined to understand the alliteration of the word ‘BOM BOM’ as an indication of commercial origin.

2. The translation of the term ‘BOM’ from Portuguese to English is not enough to conclude that the application is devoid of distinctive character and the Office have over simplified the meaning of the mark. The mark applied for does not highlight any positive aspects of the specific services applied for and differences between the services have not been taken into account. The services would not be described by repeating the term ‘BOM’ in the form that is the subject of the application. Using the expression “good good” (or even the common adjective “good”) would not be good enough to describe the services or highlight any of the hotel / restaurant services’ qualities / positive aspects.

3. Whilst the word ‘BOM’ on its own may be understood by Portuguese speakers, the phrase ‘BOM BOM’ is not commonly used in the Portuguese language. The mark plays on the repetition of the word ‘Bom’, which creates and unusual and original sound making it easy to remember for the consumers. The juxtaposition of these two words is unusual and the repetition of the word ‘BOM’ created a fanciful expression, an alliteration of the soft sound BOM.

4. The mark can be only refused pursuant to Article 7(1)(b) EUTMR if the mark is entirely devoid of any distinctive character.

5. The applicant reserves the right to claim that the mark has acquired distinctiveness through use pursuant to Article 7(3) EUTMR. The claim is made as a subsidiary claim.

Decision

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.

Primary remarks

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).

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.

As regards the applicant’s arguments

The Office does not agree with the applicant that the relevant public has not been defined in a sufficient manner in the letter of objection dated 21/02/2020. The Office notes that in the letter of objection it was stated that the mark consists of the repetition of the word ‘BOM’ that has a meaning in the Portuguese language and that the relevant public consists of the Portuguese-speaking public.

As noted in the dictionary reference given in the letter of objection, the term ‘BOM’ means ‘good’ in English. The Office agrees with the applicant that the services in question are mainly aimed at the public at large that has an average degree of attention. The Office does not share the applicant’s opinion that the relevant public will be more inclined to understand the alliteration of the word ‘BOM BOM’ as an indication of commercial origin.

The Office notes that the word ‘BOM’ has a very basic meaning in Portuguese and the meaning of the mark ‘BOM BOM’ taken as a whole will be immediately understood by the relevant Portuguese-public. The repetition of the term ‘BOM’ does not change the laudatory meaning of the term ‘BOM’ and does not endow the mark with distinctiveness. The Office maintains its opinion that the sign for which protection is sought, BOM BOM, 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 highlight positive aspects of the services in question, namely that the services in Class 43 are good/performed in a pleasant manner.

As regards the reasoning of the objection, the Office notes that a sufficient reasoning has been provided in the letter of objection of 21/02/2020. The Office would like to draw the applicant’s attention to the fact that the letter of objection did not only provide a dictionary meaning of the repeated term ‘BOM’ but also explained why the mark is objectionable with respect to the services applied for in the mind of Portuguese-speaking public.

As regards the translation of the mark ‘BOM BOM’, in the letter of objection the Office noted that the mark consists of the term ‘BOM’ that has been repeated twice and the Office provided a dictionary meaning for the term (Inforpedia.pt at: https://www.infopedia.pt/dicionarios/portugues-ingles/BOM). The Office notes that there was no need to repeat the meaning of the term ‘BOM’ separately for the sake of completeness of the translation and it was sufficient to conclude that the term ‘BOM’, ‘good’ in English, is twice in the mark.

As regards the applicant’s argument that the expression ‘BOM BOM’ is not laudatory with respect to the specific services applied for, the Office first of all notes that the term ‘BOM’ is a basic term in Portuguese that means ‘good’ in English. The expression ‘BOM BOM’ taken as a whole is a banal promotional expression that is not able to distinguish any of the services applied for. Due to the basic promotional character of the expression ‘BOM BOM’, the mark is not able to function as a trade mark for any of the services applied for and the same reasoning applies to all of the services at hand.

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).

Contrary to the applicant’s arguments, the examiner should not clarify why the sign is non distinctive for each concrete good or service. It is settled case-law that general reasoning can be used for goods or services which have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogenous category of goods and/or services (02/04/2009, T 118/06, Ultimate fighting championship, EU:T:2009:100, § 28.).

As regards the applicant’s argument that the phrase ‘BOM BOM’ is not commonly used in the Portuguese language, the Office notes that 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). In the present case, there is no element in the mark that easily can be perceived as an indication of commercial origin.

Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case 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 services 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).

For the reasons stated above, the Office does not agree with the applicant that the mark would be perceived as fanciful or unusual. 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).

Furthermore, according to settled case law, since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on its 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 (judgment of 05/03/2003, T-194/01, ‘Tablette ovoïde’, paragraph 48).

The Office notes that the Applicant has reserved the right to make a subsidiary claim that the mark applied for has acquired distinctiveness through use.

Following the above, the Applicant is invited to submit the evidence in support of the acquired distinctiveness pursuant to Article 7(3) EUTMR in the Portuguese-speaking territory. The evidence must prove that distinctiveness through use was acquired prior to the EUTM application’s filing date, in the present case before 14/02/2020.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 196 300 is declared to be inherently non-distinctive in the relevant Portuguese-speaking territory for the services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Päivi Emilia LEINO