Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 25/08/2020

STUDIO TORTA S.p.A.

Via Viotti, 9

I-10121 Torino

ITALIA

Application No:	018202412
Your reference:	MC5799/bc
Trade mark:	PASSIONATE ABOUT PROGRESS
Mark type:	Word mark
Applicant:	Petroliam Nasional Berhad (PETRONAS) Tower 1, Petronas Twin Towers, Kuala Lumpur City Centre Kuala Lumpur 50088 MALASIA

The Office raised an objection on 02/04/2020 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 29/05/2020, which may be summarised as follows:

1. The use of the term “PASSIONATE” for goods such as fuels, lubricants, petroleum related goods and services is for sure uncommon as it would affirm that a person could be passionate about them.

2. The term “PROGRESS” is rather used in the field of technology, not in relation to emotions or feelings.

3. For the refusal to be applicable to PASSIONATE ABOUT PROGRESS, the words should be commonly used in trade for the goods and services at issue. This is not the case.

4. As for the goods in Classes 1 and 4, none of them is related to passion or enthusiastic feelings. Concerning Classes 18 and 25, words referring to enthusiastic or passionate feelings and progress are not used in relation to fashion items, rather these items are described in terms of their materials, style, and composition. As for the services applied for, “PASSION” or “PROGRESS” are not terms that commonly define a service.

5. The full expression “PASSIONATE ABOUT PROGRESS” does not exist in dictionaries. Thus, this combination is extremely uncommon, surprising, offering a new and original image of opposite concepts (i.e. emotions/feelings vs artificial/technology) to the relevant public with regard to the goods and services at issue.

6. The laudatory meaning indicated is an extrapolation, where the relevant goods and services are not taken in due consideration.

7. The relevant public is not used to associate the images of “PASSION” and “PROGRESS” to the goods and services, and therefore perceives the sign as a slogan that “originates from a producer or provider”.

8. The mark PASSIONATE ABOUT PROGRESS is perceived by the relevant public as imaginative, surprising and unexpected in relation to the goods and services at issue.

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).

Concerning the applicant’s argument, that the sign as a whole does not exist in dictionaries, 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).

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).

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

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 ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, thus enabling 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).

As regards the applicant’s argument that the application is uncommon, ‘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).

Moreover, the Boards of Appeal have held that if the word combination does not convey any information about the nature of the goods or services concerned, it is not sufficient to make the sign distinctive. See the decision of 06/06/2007, R 1487/2006-4, FOCUSED AND ON TARGET, § 20, 21 where it stated that “The slogan will be perceived as a message that the services offered by the applicant are better than those of its competitors. Such statements are utterly vague. They cannot be verified or falsified in objective terms. Rather, they will serve a promotional and laudatory function in the sense that the customer’s attention will be directed at the presence of an advantageous offer, and only thereafter, once the customer’s interest has been created, will he be led into comparing the details of such an offer, namely what exactly the offer consists of, what exact price and quality features it has, and also what the exact trade origin of the offer is. Also, the fact that the applied-for slogan does not contain exact indications about the content or nature of the services offered under the mark or the way in which the services are focused or on target, is irrelevant. The Court of First Instance has held on various occasions that for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its 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; the mere fact that the applied-for word combination does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (Court of First Instance, Judgment of 30.6.2004 in Case T-281/02, ‘Mehr für Ihr Geld’, par. 31, OJ OHIM 2005, 986).”

Furthermore, a search on Google shows that the expression is used in a number of fields in order to signal that a trader is an ardent seeker of progress. See for instance the following web sites (found on 25/08/2020):

https://www.plusagency.co.uk/our-services/

“We’re experts in brand strategy, identity, communications, brand engagement, reputation and brand management. Our projects often fall into these two categories.

…We are passionate about progress, always looking at new ways we can make a real impact and create positive change for your business.”

https://www.fbxsolutions.co.uk/services/management-consultancy-services/

https://bee-midtown.com/about/

“The destination of choice for business in London

…We’re passionate about progress and the power of a world-class transport infrastructure. “

The relevant consumers will perceive the sign “PASSIONATE ABOUT PROGRESS” only as a promotional laudatory slogan, the function of which is to communicate an informational statement. Additionally, the application will not be perceived as a badge of origin but will be seen merely as an indication of informative and promotional value, namely that they originate from a producer or provider enthusiastic and ardent about developing and innovating better and more modern goods and services in the indicated sectors.

The sign applied for, composed in accordance with English word composition rules and without any additional graphic element, is incapable of performing the essential function of a trade mark and does not enable the consumer who bought the goods or used the services in question to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 202 412 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.

Anne-Lee KRISTENSEN