Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/01/2016

Angelo Giardini

Via dell'Industria - Palazzo Zenith, Int. 304

I-62014 Corridonia (Mc)

ITALIA

Application No:	014190524
Your reference:	WELLNESS_CONCIERGE
Trade mark:	WELLNESS CONCIERGE
Mark type:	Word mark
Applicant:	Fiona Gilbert Inc. 217 Ada Ave #38 Mountain View, California California 94043 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/07/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 29/10/2015, which may be summarised as follows:

1. The word ‘WELLNESS’ is an English word and the word ‘CONCIERGE’ has a clear French and Latin derivation, and will be understood mainly by French-speaking consumers. Therefore, the relevant public will be not only English-speaking consumers, but also French- and Latin-speaking consumers. The sign as a whole is distinctive, because it is not common or easy for two different languages to be combined to form a unique brand.

2. The word ‘CONCIERGE’ has many different meanings not related to ‘wellness’, and it could be perceived as either a person or a place.

3. The sign ‘WELLNESS CONCIERGE’ does not describe characteristics of the services at issue, as it is not common to ask a ‘CONCIERGE’ for tips about health and well-being.

4. The Office has registered ‘TRIP ADVISOR’ and ‘BOOKING’ trade marks that are comparable to the sign at issue.

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)(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 service’ are not to be registered.

Since 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, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T‑118/00, ‘Procter & Gamble’, paragraph 59).

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Given that the mark has a clear descriptive meaning in relation to the services 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. Accordingly, it also has to be rejected under Article 7(1)(b) CTMR.

The Office will now respond to the applicant’s comments.

1. The sign ‘WELLNESS CONCIERGE’ is a distinctive conjunction of two words, each derived from a different language

The Office disagrees with the applicant’s statement that the sign ‘WELLNESS CONCIERGE’ is a distinctive conjunction of two words derived from different languages. In its letter of 10/07/2015, English dictionary definitions were provided for each of the component parts of the sign. As the English dictionary cited is an acknowledged reference source, its entries demonstrate that both components of the trade mark application are known in the English-speaking part of the European Union, regardless of the etymology of the words. Therefore, contrary to the applicant’s statement, the sign at issue will have meaning for the relevant public.

Furthermore, the sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the country.

Moreover, the Office is not obliged to show that the meaning of the word is immediately apparent to the relevant consumers. It suffices that the word is meant to be used, or could be understood by part of the relevant public, as a description of the goods or services for which registration is sought, or a characteristic of the goods and services (judgment of 17/09/2008, T‑226/07, ‘PRANAHAUS’, paragraph 36).

2. The word ‘CONCIERGE’ has many different meanings

The Office does not dispute that the word ‘CONCIERGE’, taken in isolation and without any services to use as a point of reference for assessment, has various different meanings. However, the mere fact that the word happens to have another meaning does not entitle the trade mark to be registered. It is not uncommon for a word to have more than one meaning, depending on the context, and this does not preclude a legitimate objection being raised under Article 7(1)(c) CTMR.

According to settled case law, for a trade mark to be refused registration under Article 7(1)(c) CTMR, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of 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 such signs and indications could be used for such purposes. A 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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32).

According to settled case law, the fact that a sign 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 84).

3. The sign ‘WELLNESS CONCIERGE’ does not describe characteristics of the services

The Office disagrees with the applicant’s assertion that the expression ‘WELLNESS CONCIERGE’ does not have a descriptive meaning in relation to the services in question. The Office has sufficiently justified its objections by providing dictionary references and examining the meaning of the term, firstly, by reference to the services for which registration is sought and, secondly, by reference to the perception of the relevant public.

As a result, the Office concluded that the expression ‘WELLNESS CONCIERGE’ consists exclusively of a meaningful expression easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the services in question, namely that they are services in Class 41, such as health and fitness club services that are rendered by or target persons who assist others in becoming healthier and fitter. In Class 42, the sign describes developing technology platforms and websites related to fitness, wellness, health and lifestyle aimed at or rendered by people who care about healthy lifestyle. In Class 44, the sign describes, inter alia, counselling services in the fields of health, wellness, fitness and nutrition that are rendered by people who assist in improving the well-being of others. Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the services in question.

Taken as a whole, the meaning of the expression ‘WELLNESS CONCIERGE’ is clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the services for which registration is sought. Moreover, as showed by the screenshots attached to the Office’s letter of 10/07/2015, the expression ‘WELLNESS CONCIERGE’ is commonly used on the relevant market in connection with services related to advice and information about health and well-being. Therefore, no undertaking should have the right to monopolise this sign in relation to the services at issue. This sign, being a direct and unambiguous descriptive term within the meaning of Article 7(1)(c) CTMR, must be kept freely available to competitors.

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) CTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods or services, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

Furthermore, by prohibiting the registration as Community trade mark of the signs and indications to which it refers, 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 for which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

4. Similar registrations have been accepted by the Office

As regards the applicant’s argument that a number of similar registrations have been accepted by the Office, according to settled case law, ‘decisions concerning registration of a sign as a Community trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Moreover, the mere fact that the Office has, at some point, registered a trade mark, perhaps in error, does not entitle even the same applicant to stake a claim for subsequent registrations. It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

The Office strives to be consistent and always has regard to its previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. Moreover, it is worth noting that, for example, CTM No 4 759 767 ‘tripadvisor’, CTM No 6 989 404 ‘tripadvisor’ and CTM No 5 752 274 ‘BOOKING.COM’ are figurative signs containing a graphical element that endows the sign with distinctive character, and therefore the Office does not agree that these registrations are analogous to the trade mark at issue. Moreover, CTM application No 12 330 932 ‘TRIPADVISOR’ was deemed descriptive for goods and services in Classes 9, 39 and 43 and withdrawn by the applicant. CTM No 12 777 421 ‘TRIPADVISOR’ is registered for goods in Class 9, which do not relate to a person who gives advice regarding tours, journeys or voyages.

In addition, it is not part of the examination of the current trade mark application to examine other trade marks that have previously been examined by the Office. The Office must examine each mark on its own merits and take a decision based on the current guidelines.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 190 524 is hereby rejected for all the services for which registration is sought, namely:

Class 41 Physical fitness instruction for adults and children; Health club services [health and fitness training]; Provision of educational health and fitness information; Instruction courses relating to physical fitness; Educational services relating to physical fitness; Personal trainer services [fitness training]; Health and fitness club services; Training services relating to fitness; Exercise [fitness] advisory services; Health club [fitness] services; Conducting fitness classes; Physical fitness consultation; Fitness club services; Sports and fitness; Entertainment services; Video and other media entertainment services in the field of fitness.

Class 42 Developing technology platforms and websites related to fitness, wellness, health and lifestyle.

Class 44 Consulting and counseling services in the field of health, wellness and fitness, namely, providing clients with advice and information about health, wellness and fitness service providers; Providing clients with advice and information about health, wellness and fitness programs and treatments; Counseling services in the fields of health, wellness, fitness and nutrition; Providing healthy lifestyle, fitness, wellness and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; Providing personalized healthcare, fitness and rehabilitation information in the nature of providing strategic advice about health and lifestyle services specifically targeted to the clients’ needs and individual profiles; Nutrition counseling; Health counseling; Medical counseling; Medical testing services, namely, fitness evaluation; Fitness testing.

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.

Monika Karolina SZALUCHO