of the First Board of Appeal
of 18 July 2016
In Case R 1759/2015-1
Hrvatska turistička zajednica / Croatian National Tourist Board
Iblerov trg 10/IV
Applicant / Appellant
represented by Stefan Stefanek, Ilica 191D, 10 000 Zagreb, Croatia
APPEAL relating to European Union trade mark application No 13 717 806
The First Board of Appeal
composed of Ph. von Kapff as a single Member having regard to Article 135(2) and (5) EUTMR, 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 First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member
Registrar: H. Dijkema
gives the following
By an application filed on 5 February 2015, Hrvatska turistička zajednica / the Croatian National Tourist Board (‘the applicant’) sought to register the word mark
KROATIEN, VOLLER LEBEN
for the following list of services:
Class 35 - Distribution of promotional matter; Publicity and sales promotion services; On-line advertising on a computer network; Online advertisements; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Handbill distribution; Business information; Demonstration of goods for promotional purposes; Collection and systematisation of information into computer databases; Collection of information relating to market research; Collection of information relating to advertising; Collecting information for business; Research services relating to advertising; Promotional marketing; Providing an on-line commercial information directory on the internet; Provision of commercial business information by means of a computer database; Provision of information relating to marketing; Advertising services relating to the travel industries; Providing business information via a web site; Provision of information relating to advertising; Provision of advertising space by electronic means and global information networks; Compilation of business statistics and commercial information; Dissemination of commercial information; Dissemination of business information; Information services relating to advertising; Issuing and updating of advertising texts; Writing of publicity texts.
Class 39 - Services for the arranging of excursions for tourists; Organisation of holiday travel; Arranging of holiday transport; Tourist travel reservation services; Holiday travel reservation services; Provision of tourist travel information; Sightseeing, tour guide and excursion services; Travel agents services for arranging travel; Consultancy services relating to transportation; Coordinating travel arrangements for individuals and for groups; Travel information; Provision of tours; Provision of information relating to the transportation of passengers; Provision of travel information by computer; Computerised information services relating to the carriage of passengers; Computerised information services relating to travel; Computerised information services relating to travel reservations; Itinerary travel advice services; Consultancy for travel planning of routes; Tour operator services; Services for the arranging of tours; Travel arrangement services; Escorting of travellers; Tour reservation services; Tour guide services; Information services relating to transport timetables; Information services relating to methods of transport; Information services relating to road conditions; Computerised transport information services; Information services relating to traffic; Transportation information.
Class 41 - Audio-visual display presentations; Electronic desktop publishing; Electronic online publication of periodicals and books; Production of films for educational purposes; Film production, other than advertising films; Aerial photography; Photography; Photographic reporting; Production of music; Musical entertainment; Orchestra services; Musical floor shows provided at performance venues; Music publishing services; Information and advisory services relating to entertainment; Racing information services; Information services relating to recreation; Provision of information relating to sports; Ticket information services for shows; Ticket information services for sporting events; Ticket information services for entertainment events; Entertainment information; Interactive entertainment services; Internet games (non-downloadable); On-line publishing services; Publication of posters; Publishing of electronic publications; Publication of electronic magazines; Publication of electronic newspapers accessible via a global computer network; Publication of music books; Publication and editing of printed matter; Publication of directories relating to tourism; Publication of directories relating to travel; Publication of instructional literature; Publication of educational teaching materials; Issue of publications; Publishing services for books and magazines; Publication and edition of books; Publication of electronic books and journals on-line; Publication of books relating to entertainment; Publication of books, magazines, almanacs and journals; Publication of the editorial content of sites accessible via a global computer network; Exhibition services for entertainment purposes; Exhibition services for educational purposes; Performance of dance, music and drama; Presentation of television programmes; News reporters services; News syndication reporting; Publishing and reporting; Entertainment, sporting and cultural activities; Summer camps [entertainment and education]; Recreation information; Publication of leaflets; Publication of calendars of events; Publication of material which can be accessed from databases or from the internet; Publication of material on magnetic or optical data media; Publication of educational texts; Publication of printed matter relating to education; Publication of manuals; Publishing by electronic means; Publication of texts; Publication of printed matter and printed publications; Photo editing; Education and instruction; Presentation of live performances; Provision of on-line entertainment; Organization of exhibitions for cultural or educational purposes; Organisation of entertainment and cultural events; Arranging of demonstrations for cultural purposes; Arranging of demonstrations for educational purposes; Arranging of demonstrations for training purposes; Arranging of demonstrations for entertainment purposes; Organisation of events for cultural, entertainment and sporting purposes; Arranging and conducting of congresses; Arranging and conducting of symposiums; Arranging and conducting award ceremonies; Arranging of conferences relating to advertising; Arranging of competitions for cultural purposes; Arranging of courses of instruction for tourists; Arranging of courses of instruction; Party planning; Provision of translation services; Presentation of radio programmes; Showing of prerecorded entertainment; Exhibition of video films; Animation production services; Production of audio/visual presentations; Production of audio-visual recordings; Production of audio entertainment; Production of documentaries; Production of shows; Production of radio and television programmes; Production of television programmes; Production of video and/or sound recordings; Booking of performing artists for events (services of a promoter); Booking of sports personalities for events (services of a promoter).
Class 43 - Reservation of tourist accommodation; Rating holiday accommodation; Arranging of accommodation for holiday makers; Booking agency services for holiday accommodation; Hotels, hostels and boarding houses, holiday and tourist accommodation; Tourist inns; Restaurant information services; Provision of hotel accommodation; Providing temporary trailer park facilities; Providing accommodation for meetings; Appraisal of hotel accommodation; Provision of information relating to restaurants; Provision of information relating to hotels; Provision of information relating to bars; Provision of information relating to the booking of accommodation; Provision of facilities for exhibitions; Provision of facilities for conventions; Provision of conference facilities; Providing accommodation for functions; Making reservations and bookings for restaurants and meals; Services for reserving holiday accommodation.
The first language is Croatian, the second language is English. The list of services was provided in both languages. The English version is the authentic version in accordance with Article 120(3) EUTMR.
The applicant maintained its request for registration notwithstanding the objections raised by the examiner.
By letter of 30 June 2015, received by the applicant on 1 July 2015, the examiner notified the applicant of her decision (hereinafter the ‘contested decision’) that the trade mark applied for was not eligible for registration for any of the services applied for under Article 7(1)(b) EUTMR. She based her decision mainly on the following arguments:
Since the mark KROATIEN, VOLLER LEBEN having the meaning of CROATIA FULL OF LIFE is composed of German words, the relevant public with reference to which the absolute ground for refusal must be examined is the German-speaking consumer in the European Union;
The relevant consumers will understand CROATIA, FULL OF LIFE as a meaningful expression. In this sense it is a banal slogan. The applied trade mark cannot be immediately perceived as an indication of the commercial origin but first and foremost as promotional or advertising information which conveys to the relevant public a laudatory message, when it comes to its use for a state. Two following characteristics of a slogan may contribute to establishing of its distinctiveness: 1) an unusual syntactical structure or 2) use of linguistic or stylistic figures such as metaphor, rhyme or paradox, etc. The mark does not comply with any of the above mentioned criteria;
On 31 August 2015, the applicant filed a notice of appeal against the contested decision, requesting the decision to be set aside in its entirety. The appeal was filed in Croatian.
On 28 October 2015, the applicant explicitly requested a change of language of proceedings from Croatian to English. On the same day, his request was granted by the Chairperson of the First Board.
On 30 October 2015, the translated notice of appeal was filed, followed by a statement of grounds in which the applicant requested the Board to annul the contested decision in its entirety and accept the entire application for EUTM registration. In support of the appeal the applicant submitted the following main arguments:
EUIPO has misinterpreted the meaning and extent of the legal standings of the Court of Justice regarding the appreciation of distinctive character of slogans;
Marks consisting of expressions that are at the same time used as advertising or promotion slogans should not be excluded from registration just by virtue of their use. Especially tourist services are characterized by an emphasized promotion, and the promotion represents an inseparable part of these services. Therefore, the promotional character of tourist services shall not be considered as lack of distinctiveness;
The average tourist/traveller would be aware of the promotional character of applicant’s services and would immediately perceive the trade mark of the applicant as a reference to the origin of services;
Even more so it is for professionals as they would be able to identify the applicant’s trade mark with the applicant even without any further interpretation;
The applicant disagrees with the EUIPO’s definition of the target consumers of the trade mark as consumers from English speaking countries. Instead, the EUTM is designated to all member states of the European Union;
The applicant considers that the examiner failed in careful analysis of the meaning of the trade mark message. The separate words may have many meanings and the slogan as a whole cannot, therefore, be regarded as ‘banal’. The message is imaginative and would not have a meaning or value without addressing to the origin of the services which is the Croatian national institution for promotion of tourism in Croatia;
Contrary to the examiner´s ungrounded findings that ‘the trade mark is constructed from expressions that is in long use in everyday life’, the expression ‘full of life’ requires further interpretation by target consumers, especially together with the word ‘Croatia’. ‘Croatia’ is not just a geographical term; it is also a geopolitical term, designation of culture, nation, etc. and, on top of that, part of the applicant’s name;
The examiner is generally applying the same criteria with regard to the distinctiveness of every type of the trade marks but the perception of the distinctiveness differs between the different types of trade marks. Slogan is a specific sub-type of the verbal trade mark and requires more imagination than figurative trademarks thus, making it more distinctive;
The advertising message of the trade mark also contributes to the distinctive character of the trade mark, especially as regards the tourist services.
The appeal complies with Articles 58, 59 and 60 EUTMR and Rules 48 to 49 of CTMIR. It is therefore admissible.
In particular, the appeal is not inadmissible in application of Rule 48(2) CTMIR following statements of grounds that were filed in the second language following a change of language requested by the applicant after having filed the notice of appeal in the first language. On 28 October 2015, the applicant had requested the change of language.
In accordance with Article 119 EUTMR, the first language may be Croatian, the second language English, such as in the present case. In the present case and in accordance with its paragraph 4, the language of proceedings in ex parte examination of absolute grounds for refusal has started as being Croatian. A change of language is not provided for in ex parte proceedings; however, parties in inter partes proceedings may, according to paragraph 7, agree that a different official language of the Union is to be the language of the proceedings. English is such an official language of the Union.
Article 119(7) EUTMR may be applied by analogy to ex parte proceedings. Firstly, it is recognised that the language system is a result of the right of defence of a party in administrative proceedings, as enshrined in Article 41(2) EU Charter of Fundamental Rights and has been confirmed in the case law of the Court of Justice.
In a case where the applicant wished to restrict the possible languages for all proceedings to the first language, the Court of Justice explained that the first language had to be used for all ‘procedural documents’, as opposed to other ‘written communications’. It defined ‘procedural document’ as covering ‘any document that is required or prescribed by the Community legislation for the purposes of processing an application for a Community trade mark or necessary for such processing, be they notifications, requests for correction, clarification or other documents.’ (Kik, paragraph 46). Moreover, the Court stressed that the choice of the language is in principle to be made by the citizen, even if there is ‘no general principle of Union law that confers a right on every citizen to have a version of anything that might affect his interest drawn up in his language in all circumstances’. Kik, 82).
In another case, the applicant had applied for a trade mark indicating Greek as the first language and English as the second language, and the decision of the examiner to refuse the application because of absolute grounds for refusal and the decision of the Board of Appeal to reject the appeal were both taken in English, since the applicant always defending the case on the substance in English. The General Court took the view that since the applicant was able to understand fully the reasons for the examiner’s decision and, therefore, to reply to them in its appeal, it cannot be concluded that its rights to obtain an examiner’s decision of procedural documents in the first language adversely affected the exercise of its right of appeal or rendered it more difficult or that that fact interfered in any way whatsoever with the exercise of its rights of the defence during the proceedings before the Board of Appeal (Top para 41, 43, 45).
Secondly, both Article 119 paragraph 4 and 7 EUTMR show that the examiner must be able to work in all official languages of the Office, including English.
Nor is there any specificity of the appeal proceedings. Rule 48(2) EUTMR establishes that the ‘notice of appeal shall be filed in the language of the proceedings in which the decision subject to appeal was taken’. Firstly, there is no provision not allowing a change in the language of the proceedings, at a later stage, for the statement of grounds. Secondly, Rule 48(2) EUTMR must be interpreted in the light of Article 119 EUTMR. If the EUTMR allows the applicant changing the language of proceedings at any time, the implementing rules must be interpreted accordingly.
In addition, it should be pointed out that the interests of the applicant with respect to the right to obtain any procedural document in the first language may legitimately change. On the one hand, the applicant may validly have an interest in changing the language in order to have more examiners being capable to work on the application or to facilitate the submission of supporting documents.
On the other hand, the EUTM is not only a tool for economic operators in the internal market of the EU, but is as well itself a product that can be object of transfers, licences and services, to which the principles of free circulation of goods and of services apply. The applicant’s main language may change when the application is transferred to an applicant in another country or when the applicant chooses to be represented by a representative that does not use the initial applicant’s main language. It would not be a good balance of the interests of the applicant if he would be obliged to surrender his trade mark and to file for a new trade mark in order to be able to change the linguistic regime in ex parte cases, where no third parties interests are involved.
Nor is there any other reason apparent which would speak against the change of the language at the moment of statement of grounds.
However, the appeal is not well founded in respect of the order sought and the decision of the examiner cannot be annulled. The trade mark application has to be rejected under Article 7(1)(b) EUTMR (absence of distinctive character).
Firstly, the trade mark applied for KROATIEN, VOLLER LEBEN is composed of German words having the meaning of ‘Croatia, full of life’. The relevant public with reference to which the absolute ground for refusal must be examined is the German-speaking consumer in the European Union. The applicant argues correctly that the relevant consumer is not limited to those in Germany, Austria, Belgium, Italy, where German is one of the official languages. However, this does not change the perception of the trade mark by the relevant public that understands German as part of the European Union in the sense of Article 7(2) EUTMR.
Secondly, the relevant consumers will understand ‘Croatia, full of life’ as a meaningful expression. It consists of a term that is in long-term use in everyday life. ‘Full of life’ is used in relation to a natural person (‘person, full of life’), cities (‘city, full of life’) and states (‘Colombia / Israel, full of life’). The meaning of the expression is that Croatia is not lifeless or boring, but lively. It says that Croatia is a country, full of life – a country rich in natural beauty, cultural and historical sights and all the things that make life interesting, attractive, and meaningful – or that the services related to the mark are associated with such a country.
As argued by the applicant itself, Croatia is firstly a geographical term and indirectly stands for certain characteristics of the services related to Croatia having its origin in the nation, the history, the landscape etc. The indication of the geographic origin of the designated goods and services, or the place where these services are delivered, constitutes, to the relevant public, a ‘characteristic’ of the goods or services (10.10.2014, R 574/2013–G, SUEDTIROL, para. 26).
It is a well-known fact and confirmed by the publicly available information (https://www.facebook.com/visitacroacia/, https://www.facebook.com/Info.VisitCroatia/, http://croatia.hr/en-GB) that Croatia has a high diversity: festivals, nightlife, bars, sports facilities, music, animal life.
Thirdly, the slogan in issue merely has an advertising function, of an informational, promotional nature, rewarding the user with feelings, such as enjoyment, excitement or pleasure, in one sentence. The relevant public, including the general and professional public, is accustomed to the use of promotional slogans and does not need any interpretive effort in order to understand the message. In this sense it is a banal slogan. The applied trade mark cannot be immediately perceived as an indication of the commercial origin but first and foremost as promotional or advertising information which conveys to the relevant public a laudatory message, when it comes to its use for a state.
The applicant argues that slogans are typical instruments in the area of tourism and may not be separated from the services. This statement is correct, does not however lead to acceptance of the trade mark. The function of a promotional slogan is different from a trade mark.
The Court of Justice has established criteria which should be applied when assessing the distinctive character of slogans. According to these criteria, the commercial slogan may be distinctive if it represents more than just a commercial or advertising message which points out the positive characteristics of products or services applied for. An unusual syntactical structure or use of linguistic or stylistic figures such as metaphor, rhyme or paradox, may contribute to distinctive character. However, the trade mark applied for has no unusual syntactical structure and the metaphor is banal.
‘KROATIEN, VOLLER LEBEN’ is a grammatically correct sentence advertising positive characteristics. In the applicant’s own words:
“Fülle dein Leben nicht mit Tagen, fülle deine Tag mit Leben, Kroatien ist der richtige Ort dafür.’[‘Life shouldn’t just be filled with days; days should be filled with life! And there is nowhere better to put this philosophy into practice than in Croatia! ]