DECISION

of the Second Board of Appeal

of 2 October 2015

In Case R 3189/2014-2

South Beach Beverage Company, Inc.
40 Richards Avenue Norwalk, Connecticut 06854 United States of America	Applicant / Appellant

represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom

APPEAL relating to Community trade mark application No 12 931 804

The Second Board of Appeal

composed of H. Salmi as a single Member having regard to Article 135(2) and (5) CTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the Second Board’s Resolution No 2014-1 of 3 June 2014 on decisions by a single Member.

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 3 June 2014, South Beach Beverage Company, Inc. (hereinafter ‘the applicant’) sought to register the word mark

ADRENALINE RUSH

for the following list of goods:

Class 21 – Drinking vessels;

Class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice;

Class 32 – Mineral and aerated waters and other non-alcoholic drinks; Energy drinks; Carbonated soft drinks; fruit flavoured beverages; Nutrient enhanced beverages; Vitamin enhanced beverages; sports drinks; fruit drinks and fruit juices; syrups; beverages; flavours or essences; concentrates and other preparations for making the aforementioned drinks.

2. On 25 June 2014, the examiner informed the applicant that following Article 7(1)(b) (c) and (2) CTMR the trade mark applied for could not be registered for part of the goods. The examiner’s arguments may be summarised as follows:

• The mark applied for is considered objectionable for the following goods:

Class 30 – Coffee, tea, cocoa, artificial coffee;

Class 32 – Mineral and aerated waters and other non-alcoholic drinks; Energy drinks; Carbonated soft drinks; fruit flavoured beverages; Nutrient enhanced beverages; Vitamin enhanced beverages; sports drinks; fruit drinks and fruit juices; syrups; beverages; flavours or essences; concentrates and other preparations for making the aforementioned drinks.

• The objectionable goods covered by the mark applied for are everyday consumption/mass consumption goods and are mainly aimed at average consumers. In view of the nature of the goods in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘ADENALINE RUSH’ consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the European Union.

• The trade mark consists of the words ‘ADRENALINE RUSH’ with the following meanings:

ADRENALINE: A hormone secreted by the adrenal glands, especially in conditions of stress increasing rates of blood circulation, breathing, and carbohydrate metabolism and preparing muscles for exertion: performing live really gets your adrenaline going

http://www.oxforddictionaries.com/definition/american_english/adrenaline

RUSH: Deliver (something) quickly to (someone): we’ll rush you a copy at once;

A sudden flow or flood: she felt a rush of cold air

A sudden intense feeling

A sudden thrill or feeling of euphoria such as experienced after taking certain drugs

http://www.oxforddictionaries.com/definition/american_english/rush?q=rush

• Taken as a whole, the words ‘ADRENALINE RUSH’ immediately inform consumers without further reflection that the goods applied for give a sudden boost of energy and physical strength, as a sudden thrill or feeling of euphoria: Caffeine triggers the release of adrenalin.

• Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods in question. It is descriptive for the subject matter of coffee as caffeine may trigger the release of adrenaline.

• It follows that the link between the words ‘ADRENALINE RUSH’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) CTMR.

• Given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

• An internet search has revealed that the words in question are commonly used in the relevant market:

Does coffee increase adrenaline?

Adrenaline is a hormone released by the adrenal gland. It is a stress-triggered hormone that is intended to heighten your physical strength for a short period of time. Release of the hormone is marked by an elevated heart rate, elevated blood pressure and a boost to your energy, according to Dr Christiane Northrup. Caffeine may trigger the release of that hormone, giving you a quick burst of energy and physical strength followed by a crash marked by fatigue and irritability, in some cases.

http://www.livestrong.com/article/530337-does-coffee-increase-adrenaline/

• Consequently, the contested mark ‘ADRENALINE RUSH’ is devoid of any distinctive character and is not capable of distinguishing the mentioned goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

3. On 5 August 2014, 2 and 23 September 2014, the applicant submitted its observations in reply, which were summarised by the examiner as follows:

• The mark applied for is not descriptive in relation to the goods in question. Merely using the words ‘Adrenaline’ and ‘Rush’ in a trade mark is not sufficient to inform the consumers of the kind or intended purpose of the goods in question.

• The average consumer is not able to identify the purpose of a product named ‘ADRENALINE RUSH’ from its name alone, because there is no element to connect the name with the product’s purpose.

• The mark applied for is a neologism that is not directly descriptive of the goods at issue.

• The trade mark has distinctive character, as the trade mark taken as a whole has a sufficient impact on the relevant public. The expression ‘ADRENALINE RUSH’ does not convey obvious and direct information regarding the kind and intended purpose of the goods in Classes 30 and 32.

• The word ‘RUSH’ has numerous different meanings and the trade mark ‘ADRENALINE RUSH’ is not used in common parlance for the goods in question. In light of the goods claimed, any potential meaning remains vague at most and, therefore, renders the trademark ‘ADRENALINE RUSH’ suggestive, clearly bringing it outside of the scope of lack of distinctive character.

• The applicant referred to several similar UK and Community trade mark registrations.

4. By decision of 27 October 2014 (hereinafter ‘the contested decision’), the Office maintained the objections raised in the previous notification. Its reasoning is summarised as follows:

• There is nothing unusual about the structure of the sign ‘ADRENALINE RUSH’. The words ‘ADRENALINE’ and ‘RUSH’ form an expression which is syntactically correct and entirely descriptive.

• Furthermore, from the point of view of the target English-speaking public, ‘ADRENALINE RUSH’ will be perceived as a meaningful expression rather than as a trade mark. The meaning of the trade mark, which contains the elements ‘Adrenaline’ and ‘Rush’, cannot be ignored, as what matters is how the relevant trade circles will understand it. Based on an interpretation of the case-law established by the Courts, the sign must be refused registration under Article 7(1)(b) CTMR if, on the basis of its most obvious meaning for the goods in question, it is devoid of distinctive character.

• The interpretation of the expression applied for does not affect its recognisable descriptive meaning. A trade mark must be assessed in conjunction with the goods in question. As previously mentioned, the expression ‘ADRENALINE RUSH’ immediately informs consumers that the goods applied for give a sudden boost of energy and physical strength, as a sudden thrill or feeling of euphoria: Caffeine triggers the release of adrenalin.

• Even if the particular combination of the words ‘ADRENALINE RUSH’ does not exist in current use or in any dictionary and is, therefore, considered a neologism when the words are combined, neither the individual meanings of the components nor their meaning in the combination applied for can be in dispute in the context of the goods applied for. Contrary to the applicant’s argument, the expression applied for will not be understood by the relevant public as a combination of words out of context in connection with the contested goods and services.

• The impact of the trade mark on the relevant consumer will be clear and obvious. The expression ‘ADRENALINE RUSH’ used in relation to the goods for which registration is sought will immediately be perceived by the relevant consumer as a descriptive and non-distinctive message.

• The combination of the two words ‘Adrenaline’ and ‘Rush’ is immediately understandable. The expression, taken as a whole, is descriptive of the kind and intended purpose of the goods in question. The sign ‘ADRENALINE RUSH’ lacks any additional element that could be regarded as unusual and the relevant public will immediately perceive the sign’s descriptive meaning.

• Finally, as regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, the Office must, of course, attempt to be consistent in its examination of trade marks. Nevertheless, examination procedures are not perfect and it is inevitable that questionable marks make their way onto the register from time to time. Procedures exist for removing them.

• As regards the national decisions referred to by the applicant, the Community trade mark regime is an autonomous system which is not bound by previous national decisions

• Moreover several of the registrations quoted by the applicant do not appear to be directly descriptive of the goods at hand. For example the word ‘ADRENALIN’ on its own is vague and the combination ‘ADRENALIN SPRITZ’ requires interpretation on the part of the consumer.

• It follows that the applicant has not convinced the Office that ‘ADRENALINE RUSH’ will be perceived by the consumers of the relevant goods as a trade mark indicating their commercial origin.

• For the aforementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for the Community Trade Mark ‘ADRENALINE RUSH’ is hereby rejected in part namely for:

Class 30 – Coffee, tea, cocoa, artificial coffee;

Class 32 – Mineral and aerated waters and other non-alcoholic drinks; energy drinks; carbonated soft drinks; fruit flavoured beverages; nutrient enhanced beverages; vitamin enhanced beverages; sports drinks; fruit drinks and fruit juices; syrups; beverages; flavours or essences; concentrates and other preparations for making the aforementioned drinks.

• The application will be accepted for the remaining goods.

5. On 16 December 2014, the applicant filed a notice of appeal. The statement of grounds of appeal was received on 27 February 2015.

6. The appeal was submitted to the examiner for revision pursuant to Article 61 CTMR. It was remitted to the Boards of Appeal on 10 March 2015.

7. On 19 June 2015, the applicant sent a letter together with a document from the UK Intellectual Property Office showing that the identical mark ‘ADRENALINE RUSH’ covering a broad range of goods in Class 32 has been accepted.

Grounds of appeal

8. The applicant requests that the Board overturn the contested decision and accept the contested application in its entirety or at least for all the goods claimed in Class 32. The applicant refers to its arguments made before the examiner and further elaborates as follows:

• The mark applied for does not directly describe or exclusively describe a characteristic of the goods.

• The web links used by the examiner to support the grounds for the initial objection were not valid. No basis or foundation has been provided for the objections.

• Many of the goods claimed do not contain caffeine.

• It has not been demonstrated that the goods applied for ‘give some boost of energy and physical strength, as a sudden thrill or feeling of euphoria’.

• The examiner has erred in not taking into consideration the numerous earlier marks previously accepted and registered by the Office.

Reasons

Admissibility of the appeal

9. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible.

Article 7(1)(c) CTMR

10. Under Article 7(1)(c) CTMR, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, shall not be registered. In addition, it is clear from the wording of Article 7(2) CTMR that a sign is to be refused registration where it is descriptive or is not distinctive in the language of one Member State, even if it is registrable in another Member State (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 40).

11. Article 7(1)(c) CTMR pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. Accordingly, that provision prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 35-36; 27/02/2002, T‑219/00, Ellos, EU:T:2002:44, § 27 and 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 25).

12. The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or services in respect of which registration is sought (29/04/2004, C‑468/01 P - C‑472/01 P, Tabs, EU:C:2004:259, § 39; 26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34 and 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).

13. It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (13/11/2008, T‑346/07, Easycover, EU:T:2008:496, § 49 and the case-law cited therein; 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25 and 27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 40).

14. For a trade mark which consists of a neologism or a word produced by a combination of elements to be regarded as descriptive for the purposes of Article 7(1)(c) CTMR, it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37; 12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31 and 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, §).

15. A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of the characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) CTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts. This presupposes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word or neologism is more than the sum of its parts (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 100 and 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41).

16. It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) CTMR actually be in use at the time of the application for registration in a way that is descriptive of the goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that those signs and indications could be used for such purposes. A word sign must, therefore, be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32 and 20/03/2002, T‑355/00, Tele Aid, EU:T:2002:79,§ 30).

17. The descriptiveness of a mark must be assessed not only in relation to the goods or services concerned, but also in relation to the relevant public. In the present case the relevant consumer of these goods is the average consumer who is deemed to be reasonably well informed, observant and circumspect. Since the word mark at issue is composed of a word combination coming from the English language, the targeted public by reference to whom the absolute ground of refusal must be assessed is, as considered in the contested decision, an English-speaking public.

18. The trade mark must be considered as a whole. However, an analysis of the components of the trade mark may be made when evaluating the overall impression made by that mark. The mark applied for consists of the words ‘ADRENALINE’ and ‘RUSH’. The definitions of these words as given by the examiner have not been disputed.

19. The goods at issue for which the examiner refused the contested mark and which form the scope of appeal are:

Class 30 – Coffee, tea, cocoa, artificial coffee;

Class 32 – Mineral and aerated waters and other non-alcoholic drinks; energy drinks; carbonated soft drinks; fruit flavoured beverages; nutrient enhanced beverages; vitamin enhanced beverages; sports drinks; fruit drinks and fruit juices; syrups; beverages; flavours or essences; concentrates and other preparations for making the aforementioned drinks.

20. In the Board’s view the expression ‘ADRENALINE RUSH’ is no more than the mere joining of two words to make a correct and fully understandable expression, in strict compliance with common syntax rules. The way in which the sign is configured is not ‘unusual’ and is in conformity with normal grammatical rules.

21. The Board agrees with the examiner that the mark ‘ADRENALINE RUSH’ taken as a whole immediately informs consumers without further reflection that the goods applied for give the consumer an ‘adrenaline rush’, in other words a sudden boost of energy and physical strength, as a sudden thrill or feeling of euphoria. Therefore, this expression contains obvious and direct information on the kind, quality and intended purpose of the goods mentioned by the examiner in Classes 5 and 32. For all these goods, consisting of different kinds of drinks and ingredients used in them, it is perfectly feasible that they could contain ingredients which give an ‘adrenaline rush’, or an equivalent feeling, or that at least the applicant claims that they do. Whether or not they actually in reality give the consumer a sudden boost of energy and physical strength, as a sudden thrill or feeling of euphoria, is irrelevant.

22. The applicant claims that the word combination ‘ADRENALINE RUSH’ is not used in ordinary parlance and therefore should be accepted for registration. Although it may be true that according to English common parlance, consumers could perhaps use another expression, it is reasonable to believe that consumers do not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and perceive the descriptive message of the mark. No other interpretation is reasonably open to the relevant public in the context of the goods and services concerned. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods in question, it is a combination of words that might profitably be employed for such goods. It should be observed that under Article 7(1)(c) CTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods and services in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 40 and the case-law therein cited) and therefore whether the links referred to by the examiner show actual use on the market and whether these web links were valid or not, is also irrelevant.

23. Therefore the expression ‘ADRENALINE RUSH’ taken as a whole constitutes an immediate, direct and easily understandable indication of the kind, quality and intended purpose of the goods and does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed.

24. It follows that the link between the expression ‘ADRENALINE RUSH’ and the goods objected to by the examiner is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) CTMR.

25. It is sufficient for one of the absolute grounds of refusal to apply for the sign not to be registered as a Community trade mark. Nevertheless, the Board shares the contested decision’s finding that the sign applied for also lacks distinctiveness with respect to the goods concerned for the purpose of Article 7(1)(b) CTMR. As confirmed by the Court, a word mark which is descriptive of characteristics of goods for the purposes of Article 7(1)(c) CTMR is necessarily devoid of any distinctive character in relation to those goods within the meaning of Article 7(1)(b) CTMR (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86 and 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein). A mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the marked goods to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the goods from others which have another origin.

26. In support of its assertion that the contested mark should be accepted, the applicant also refers to trade marks accepted by the United Kingdom authorities and various CTM marks that have been accepted by the Office.

27. Insofar as the applicant alleged that similar or identical trade marks have been registered in the United Kingdom, it must be borne in mind that, as is clear from case-law, the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant EU rules.

28. The consequence of the content in the previous paragraph is that, neither the OHIM nor, as the case may be, the Courts of the European Union are bound by decisions adopted in a Member State, or a third country, finding a sign to be registrable as a national trade mark. Registrations already made in Member States are factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark (12/07/2012, T‑470/09, Medi, EU:T:2012:369, § 41, confirmed in 16/10/2013, C‑410/12 P, Medi, EU:C:2013:702, § 35). That is so even if such a decision was adopted in a country belonging to the linguistic area in which the word mark in question originated (29/03/2012, T‑242/11, 3D eXam, EU:T:2012:179, § 44 and the case-law therein cited).

29. Insofar as the applicant cites other signs that have been accepted by the Office, it is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Board must consider whether it should be followed. The Board must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Board concludes that the mark is barred from registration by the terms of Article 7(1)(c) CTMR, it cannot decide otherwise simply because an equally non-distinctive mark has been registered in the past.

30. Further, it must be noted that decisions concerning the registration of a sign as a Community trade mark which the Office, including the Boards of Appeal, are called on to take under the CTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 73 to 75 and 16/07/2009, C‑202/08 P & C‑208/08 P, RW feuille d’érable, EU:C:2009:477, § 57 and the case-law cited therein).

31. In addition, the comparable precedents have to concern cases which the Boards have had the opportunity to decide upon. The Boards cannot be bound by decisions of first-instance Office departments (for example, the Examination or Cancellation Division) which have not been appealed (see, with respect to Opposition Division decisions, 27/03/2014, T‑554/12, Aava Mobile, EU:T:2014:158, § 65, second sentence).

32. Moreover, insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited).

33. Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 77 and the case-law cited therein).

34. In the present case, it has become apparent that the application is caught by the grounds for refusal set out in Article 7(1)(b) and (c) CTMR because of the goods in respect of which registration is sought and because of the way in which the sign, consisting of a word combination, as a whole would be perceived by the relevant public.

35. Under these circumstances, the applicant cannot reasonably rely on the Office’s previous decisions, for the purposes of casting doubt on the conclusion that the trade mark applied for is not descriptive in accordance with Article 7(1)(b) and (c) CTMR.

36. The appeal must therefore be dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed H. Salmi

Registrar: Signed H.Dijkema