Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/11/2015

CARPMAELS & RANSFORD (Trade Marks) LLP

One Southampton Row

London WC1B 5HA

REINO UNIDO

Application No:	013964408
Your reference:	T038477EM
Trade mark:	PURE JOY TO WEAR
Mark type:	Word mark
Applicant:	Lyssé Partners, LLC 101 West Ohio Street, Suite 1350 Indianapolis, Indiana 46204 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/05/2015 pursuant to Article 7(1)(b) and 7(2) CTMR 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 24/07/2015, which may be summarised as follows:

1. The mark has a double meaning (the experience of wearing the applicant’s clothing is a pure joy or the applicant’s clothing itself is identified as pure joy), which endows the mark with a distinctive character. The ambiguity of the mark requires a degree of interpretation or reflection on the part of the average consumer, so it is not simply communicating a promotional message.

2. The mark is distinctive for the services in Class 35.

3. An online search for the words ‘PURE JOY TO WEAR’ supports the assertion that the mark is able to distinguish the goods and services of the applicant from those of other undertakings. The results are overwhelmingly associated with the applicant, which indicates that the mark does more than simply convey information about the goods and services in question.

4. The identical mark was accepted by the USPTO. Even though the Office is not bound by the decisions of other national offices, it should be considered that the USPTO, which is in a very large, English-speaking jurisdiction, has accepted the mark regardless of this absolute ground.

Pursuant to Article 75 CTMR, 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) CTMR, ‘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) CTMR 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 (judgment of 16/09/2004, C 329/02 P, ‘SAT.1’, paragraph 25).

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’ (judgment of 04/10/2001, C 517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T 138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 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 (judgment of 29/04/2004, joined cases C 456/01 P and C 457/01 P, ‘Henkel’, paragraph 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 (judgment of 05/03/2003, T 194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T 305/02, ‘Forme d'une bouteille’, paragraph 34).

1. Regarding the argument that the mark can be interpreted in different ways, it should be recalled that, for a registration to be refused, it is sufficient that a word sign is devoid of distinctive character in at least one of its possible meanings (see, by analogy, judgment of 06/06/2013, T-515/11, ‘Innovation for the real world’, paragraph 31 and the case-law cited and decision of 07/05/2014 – R 2286/2013-5 – ‘We care for the things you love’, paragraph 22).

2. As for the argument that the mark is distinctive for the services in Class 35, the Office has included those services within the scope of the objection, since the goods that are the subject of the services are articles of clothing and the purpose of the services is simply retailing such goods online. Therefore, for both the goods and the services in question, the mark cannot be perceived immediately as an indication of origin, but will be perceived merely as a promotional message stating that the goods and services will bring happiness and contentment to customers.

3. The fact that online search results on the mark are mainly related to the applicant does not automatically show that the mark possesses the minimum degree of distinctiveness required for registration. 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 consumers as designating the commercial origin of the goods and services in question.

4. The applicant claims that the mark has been accepted in the USA. Since registrations already granted in Member States are not a decisive factor, it follows, a fortiori, that registrations granted in countries whose legislation is not subject to Community harmonisation, cannot prove that identical criteria to those set out in Article 7(1)(c) CTMR have been met (see judgment of 08/06/2005, T-315/03, ‘Rockbass’, paragraphs 28 to 36).

5. Despite the arguments of the applicant, the Office remains of the view that the mark is not capable of attracting the attention of the relevant public, but instead is an obvious promotional laudatory slogan. It would not be perceived immediately as an indication of the commercial origin of the goods and 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’ (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T 122/01, ‘BEST BUY’, paragraph 21).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 13 964 341 is hereby rejected for all the goods and services claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

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