favoriteRefusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 03/02/2016

ZIVKO MIJATOVIC & PARTNERS

Avenida Fotógrafo Francisco Cano 91A

E-03540 Alicante

ESPAÑA

Application No:	014427918
Your reference:
Trade mark:	Baby's Favorite
Mark type:	Word mark
Applicant:	LE SHI INTERNET INFORMATION & TECHNOLOGY (BEIJING) CORPORATION Room 6184, 6th Floor, Building 19, No. 68 Xueyuan South Road, Haidian District Beijing REPÚBLICA POPULAR DE CHINA

1. Summary of facts

The Office raised an objection on 22/09/2015 pursuant to Article 7(1)(b) 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.

2. Observations by the applicant

The applicant submitted its observations on 23/10/2015, which may be summarised as follows.

• The examiner has considered that the mark is acceptable for ‘set-top boxes’ in Class 9 and for ‘evening dress rental’ in Class 45. However, for instance, by analogy, ‘television apparatus; televisions; projection apparatus’ in class 9 and ‘clothing rental’ in class 45 should have also been included in the acceptance as there is no reasoning that justifies the examiner’s decision to the contrary.

• With regards to the relevant public, the examiner distinguishes in general between mass consumption goods/services and specialised public; however, she does not give enough detail as to which of the contested goods and services said classification corresponds, not being homogenous groups, so those would need to be inferred (judgment of the

• By accepting part of the goods and services and refusing others with the same nature and purpose and giving a decision under a general reasoning despite of being different category of products and services contested, it is clear that an erroneous reasoning in this matter has led to an arbitrary decision infringing Regulation (EC) No 207/2009, Article 75 CTMR, which oblige to state the reasons on which a decision was based (judgment of 17/10/2013, C-597/12 P, ‘ZEBEXIR/ZEBINIX’, paragraph 26-27; judgment of 18/03/2010, C-282/09 P, ‘P@YWEB CARD’ and ‘PAYWEB CARD’, paragraphs 37-40).

• The mark applied for is distinctive for the services claimed.

• Further reflection is needed on the part of the relevant public before the meaning of the expression ‘Baby’s Favorite’ claimed by the examiner, is given to the mark. This is because it is not known what the ‘baby’ preference is, since it is not indicated in the mark. Otherwise, if the mark or slogan included a promotional message it would be in connection to food, hygiene aspects or games aimed at infants as the examiner perceives, but not in connection with the goods and services at issue.

• The semantic meanings of the terms assigned by the examiner to the words ‘baby’ and ‘favorite’ (something that a recently born child, or the youngest or smallest of a family likes most or prefers above all others) is also contested. The word ‘Baby’ is a term of endearment addressed to women/men and it could refer to the tastes of woman/men instead of those alleged by the examiner related to infants or young people. Contrary to the assertions of the examiner it is exactly this ‘play on words’ which makes the mark distinctive for the goods and services designated.

• The content of the expression is that of an abstract message, requiring a degree of interpretation of the relevant public (minimal cognitive process) that is being exposed to it. As such, the expression is likely to be easily remembered by the relevant public, and, hence is able to indicate the commercial origin of the goods concerned (judgment of 21/01/2010, C-398/08 P, ‘VORSRUNG DURCH TECHNIK’, paragraph 47.)

• The distinctive character of the marks consisting on ‘play of words’ is emphasized in the Guidelines for Examination in the Office, Part B, Examination, SECTION 4 ABSOLUTE GROUNDS FOR REFUSAL, page 22. The mark applied for ‘Baby’s Favorite’ will be perceived as a play of words, for instance, in relation to the following list of services: ‘On-line social networking services; Online social networking services provided through a community website; Escorting in society [chaperoning]; Chaperoning; Marriage partner introduction or dating services; Marriage agencies; Dating services; Clothing rental; Security consultancy.’

• The fact that the sign requires further reflection on the part of the consumer means that the mark applied for has at least the minimum distinctive character required for a sign to be eligible for trademark protection.

• According to the case-law ‘Suggestive or vaguely evocative terms not perceivable as directly or indirectly descriptive of the goods and services are not descriptive’ (judgment of 31/01/2001, T-24/00, ‘Vitalite’).

• The expression ‘Baby’s Favorite’, is fanciful and does not immediately inform the relevant public about the characteristics of the services applied for.

• The fact that ‘baby’ or/and ‘favorite’ may be common terms is not sufficient in itself to justify the application of Article 7(1)(b) CTMR, as it does not amount to proof that the sign would not enable the target public to distinguish the applicant’s goods/services from those of its competitors (judgment of 27/02/2002, T-34/00, ‘EUROCOOL’, paragraph 43).

• It is also settled case-law that ‘a sign’s lack of distinctive character, within the meaning of Article 7(1)(b) CTMR, cannot arise merely from the finding that the mark is unimaginative, or does not look unusual or striking.

• The mark ‘Baby’s Favorite’ does not make even a subtle allusion to the nature of some specific goods and services for which protection is sought.

• The Office has earlier accepted similar trade marks for goods and services in the same classes, for example ‘BABY born’, CTM no 2 968 121, ‘BABY COUTURE’, CTM no 12 834 248, ‘BABY born’, CTM no 2 468 346, ‘BABY LIFE’, CTM no 6 036 693, ‘MY FAVORITE INVESTMENT’, CTM no 9 002 908, ‘YOUR FAVORITE COLOR’, CTM no 8 833 188.

3. Decision

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. A mark which enables the goods or services in respect of which registration of the mark has been sought to be distinguished as to their origin has distinctive character within the meaning of that provision. It is not necessary for that purpose for the mark to convey exact information about the identity of the manufacturer of the goods or the supplier of the services. It is sufficient that the mark enables the consumer, without any possibility of confusion, to distinguish the goods or services that it designates from those which have a different trade origin, and to conclude that all the goods or services that it designates have been manufactured, marketed or supplied under the control of the owner of the mark and that the owner is responsible for their quality (judgment of 19/09/2001, T-337/99, ‘White and red round tablet’, paragraph 43 and judgment of 29/9/1998, C-39/97, ‘Canon’, paragraph 28, judgment of 05/12/2002, T-130/01, ‘Real People, Real Solutions, paragraphs 19-20).

The distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T-348/02, 'Quick', paragraph 29, judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik, paragraph 34). In order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must be considered. As the Court has consistently held, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

Despite the applicant’s submissions the Office considers that the expression ‘Baby’s Favorite’ conveys a clear message with laudatory connotations in respect of the goods and services objected to.

The applicant has requested a detailed reasoning as to how the objection applies to each of the goods and services covered by the application.

As the Court has already held, an examination of the absolute grounds for refusal must be carried out in relation to each of the goods and services for which trade mark registration is sought and, secondly, the decision of the competent authority refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods or services. With regard to that last requirement, the Court has stated that the competent authority may use only general reasoning for all of the goods and services concerned where the same ground of refusal is given for a category or group of goods or services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (judgment of 18/03/2010, C-282/09 P, P@yweb card / Payweb card, paragraphs 37-38 and 40).

In the present case the contested goods and services are sufficiently interlinked for the objection under Article 7(1)(b) CTMR to apply to all of them, to the extent that the mark applied for conveys the meaning that each and every one of the goods and services objected to are preferred above all others and are especially popular and particularly well liked by infants and the youngest or smallest members of a family, which amounts to a laudatory message, highlighting a positive aspect of the goods and services claimed.

As the Office is willing to accept the mark for ‘set-top boxes’ in Class 9 and for ‘evening dress rental’ in Class 45, the applicant argues that it should accept the mark also for ‘television apparatus; televisions; projection apparatus’ in class 9 and for ‘clothing rental’ in class 45. The Office does not share the applicant’s view. A ‘set-top box’ is defined as ‘a hardware device that allows a digital signal to be received, decoded and displayed on a television. The signal can be a television signal or Internet data and is received via cable or telephone connection’ (definition extracted from Techopedia on 02/02/2016 at https://www.techopedia.com/definition/2284/set-top-box-stb ). Taking into account the technical nature and function of these goods, the Office finds it unlikely that they would be used by, or aimed at infants, or that these goods contain features and functions that would be appreciated by these children. On the other hand ‘televisions’ or ‘projection apparatus’ may be aimed at these users and they may contain characteristics or features making them more attractive for them. Therefore, the expression ‘Baby’s Favorite’ applied to these goods would merely serve to highlight the positive aspects of the goods concerned, namely that they are preferred above all others and are especially popular and particularly well liked by infants. As regards the accepted service ‘evening dress rental’ compared with the ‘clothing rental’, that the Office objected to, the latter service is broader and would include services rendered to infants. ‘Evening dress rental’ would not include services aimed at babies.

The applicant also argues that it is not known what the ‘baby preference is, since it is not indicated in the mark’ and further, that if the mark or slogan ‘Baby's Favorite’ included a promotional message this would be in connection with food, hygiene aspects or games aimed at infants but not in relation to the goods and services concerned. Admittedly the expression ‘Baby’s Favorite’ is not specific because it does not explain why the goods and services are preferred above all others and are especially popular and particularly well liked by babies. However, this vagueness does not turn a laudatory message into a trade mark. The failure to state why the goods and services are preferred above all others by infants does not make the expression distinctive. The Office disagrees with the applicant that the laudatory message conveyed by the mark would only relate to food, hygiene aspects or games aimed at infants. On the contrary, the laudatory message remains the same when applied to almost any goods or used in relation to any service having a connection with children or infants.

The applicant has argued that the mark ‘Baby’s Favorite’ does not immediately inform the relevant public about the characteristics of the services applied for. This argument is not relevant. The objection raised in the present case is based on Article 7(1)(b) CTMR, since the mark applied for is deemed to be devoid of any distinctive character in relation to the goods and services in question. The mere fact that the mark is not descriptive of the goods and services concerned is not sufficient to render it distinctive for the goods and services applied for. According to established case-law, a mark may be devoid of any distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (judgment of 12/02/2004, C-363/99, ‘Koninklijke KPN Nederland’, paragraph 86).

The Office also confirms that the objection in the present case is not based on the finding that the mark ‘Baby’s Favorite’ consists of two common words in English, or simply because the mark conveys a promotional, motivational message, but rather because the mark is considered non-distinctive pursuant to Article 7(1)(b) CTMR. The mark applied for is composed of two ordinary English words and the expression taken as a whole is meaningful: Something that a recently born child, or the youngest or smallest of a family likes most or prefers above all others. When applied to the goods or used in relation to the services in question, the mark ‘Baby’s Favorite’, merely serves to highlight positive aspects of the goods and services concerned, namely that they are preferred above all others and are especially popular and particularly well liked by children or infants. Contrary to the assertions of the applicant the message is immediately understood and does not require any further interpretation, thought, or deep analysis on the part of the relevant public.

According to the established case-law, the fact that a word mark can have a number of meanings, or constitute a play on words or be perceived as imaginative, surprising and unexpected and, in that way, be easily remembered - although the existence of such characteristics is not a necessary condition for establishing that an advertising phrase or slogan has distinctive character - is likely to endow that mark with distinctive character (judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, paragraph 47). None of these characteristics is present in the expression ‘Baby’s Favorite’. There is nothing grammatically or syntactically unusual about the structure of the expression. It does not diverge from English rules of grammar and syntax but rather complies with them. Furthermore, the message is expressed in plain, everyday language and generic words and the expression does not contain anything memorable in terms of wordplay or a subliminal message. Consequently, the laudatory meaning of the expression is instantly apparent to the relevant professional consumer. On seeing the mark applied to the goods or used in relation to the services concerned, the relevant consumer will perceive it merely as a promotional laudatory message, the function of which is to communicate a customer service statement and/or value statement to the consumer. Since the mark conveys purely promotional information to the relevant consumer, he will not take the time either to enquire into the mark’s various possible functions or to mentally register it as a trade mark. The mark ‘Baby’s Favorite’ will therefore be perceived by the relevant professional public primarily as a promotional expression, based on its inherent meaning, rather than as a trade mark (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraphs 29 and 30).

The applicant has argued that the word ‘Baby is a term of endearment addressed to women/men and it could refer to the tastes of woman/men instead of those alleged by the Examiner related to infants or young people’. The applicant concludes, therefore, that the expression is a ‘play on words’ which makes the mark distinctive for the goods and services designated. The Office agrees with the applicant that the word ‘Baby’ is also a term of endearment used in English. However, even if the relevant consumer understood the word ‘Baby’s’ in this way, the expression would nevertheless merely serve to highlight positive aspects of the goods and services concerned, namely that they are preferred above all others and are especially popular and particularly well liked by a beloved person. Therefore, the assumption that the relevant public would not understand the word ‘Baby’ as a reference to the youngest or smallest of a family’ but rather as a term of endearment for adults, as the applicant suggested, would merely make the objection broader (i.e. to cover even ‘evening dress rental’).

It is clear from the case-law the absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination, as the applicant has correctly pointed out. A Community trade mark is not necessarily a work of invention and is founded not on any element of originality or imagination but on its ability to distinguish goods or services on the market from goods or services of the same kind offered by competitors. However, the distinctiveness of a trade mark within the meaning of Article 7(1)(b) CTMR means that the mark in question makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or service from those of other undertakings and, therefore, is able to fulfil the essential function of the trade mark. For the reasons explained above, this requirement is not met in the present case.

According to the established case-law, the laudatory connotation of a mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers, as the applicant correctly pointed out. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. In so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula, has no bearing on its distinctive character (judgment of 21/01/2010, C-398/08 P, ‘Vorsprung durch Technik’, paragraph 45).

In its observations the applicant relies, among others, on the above cited judgment of the European Court of Justice. The Office has taken into account the said judgment and the other case-law cited by the applicant. This does not, however, change the outcome in the case at hand. As mentioned already above, the mark applied for is objected to not because it conveys a promotional message, but rather because it consists of an expression that lacks distinctive character. The expression ‘Baby’s Favorite’ has a clear and unambiguous laudatory meaning which serves to highlight positive aspects of the goods and services concerned, namely that they are preferred above all others and are especially popular and particularly well liked by infants and the youngest or smallest members of a family. The Board of Appeal has, in its decision of 04/04/2011, R-1863/2010-2, ‘Technology to Inspire Innovation’, assessed the meaning and importance of the Court’s decision on ‘Vorsprung durch Technik’ as follows (paragraphs 33-34, underlining added):

33 The Board stresses, as noted in the contested decision, that the sign was not rejected merely because it was a promotional slogan, but rather because it was a banal slogan, with a clear and unambiguous laudatory meaning. Nor can it be said, on a more general level, that the Court’s statements in ‘Vorsprung durch Technik’ have radically changed the law in relation to verbal expressions serving as promotional or advertising messages. Although that judgment indeed clarifies certain questions relating to the acceptability of slogans as trade marks, it cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan.

34 Furthermore, in the case ‘Vorsprung durch Technik’, the Court gave importance to the finding that the slogan was widely known as a consequence of its use by the applicant over many years (see judgment of 21 January 2010, C-398/08 P, ‘Vorsprung durch Technik’, para. 59). As will also be dealt with hereunder for the purposes of establishing the applicability of Article 7(3) CTMR, the evidence in the file does not justify a finding that the expression ‘Technology to Inspire Innovation’ is widely known by the relevant public.

In the Vorsprung durch Technik-judgment, at paragraph 59, the Court held that the slogan exhibited “…resonance which makes it easy to remember”. It is clear from the context of this passage (the next sentence in paragraph 59), that the resonance identified by the Court was due largely to the fact that ‘Vorsprung durch Technik’ was “a widely known slogan which has been used by Audi for many years”. The Court held in effect that the slogan was inherently distinctive in relation to a wide range of goods and services unconnected with motor vehicles as a result of the distinctiveness acquired through long-standing use as a slogan for promoting the sale of cars. Similar considerations do not apply in the present case, in that the applicant has not argued that the term ‘Baby’s Favorite’ has acquired distinctiveness through its use in relation to any class of goods or services. The Office considers that the expression applied for does not exhibit any resonance either. On the contrary it is a banal, laudatory expression in English which, in connection with almost any goods or services, tells consumers that the goods and services are preferred above all others and are especially popular and particularly well liked by the infants and the youngest or smallest members of a family. Since the message that the mark applied for conveys has been expressed in such an ordinary, obvious manner, the expression ‘Baby’s Favorite’ is also one that other traders should be free to use. Moreover it is one that would not be seen as an indicator of trade origin, or that would distinguish the goods and services of one trader from those of others (decision of the Boards of Appeal of 29/01/2014, R-1835/2013-1, ‘LOOK INSIDE’, paragraph 32).

Article 7(1)(b) CTMR makes it clear that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. (judgment of 19/09/2001, T-337/99, ‘Round red and white tablet’, paragraph 44, and judgment of 29/09/2009, T-139/08, ‘Representation of half a smiley smile’, paragraph 16). However, in order to have the minimum degree of distinctiveness required under Article 7(1)(b) CTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the Community trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin (judgment of 13/06/2007, T-441/05, ‘I’, paragraph 55 and judgment of 05/12/2002, T-130/01, ‘Real People, Real Solutions’, paragraphs 19-20). For the reasons explained above, this requirement is not met in the present case. The mark therefore, taken as a whole is devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR.

The Office has taken into account all the CTM registrations cited by the applicant. However, these do not change the decision reached by the Office in the present case. None of the cited trade marks is identical with the mark applied for. The Office remarks that assessing distinctiveness is not an exact science. According to well-established case-law, while the Office must strive for coherent practice in assessing signs with respect to absolute grounds for refusal, the legality of decisions concerning registration 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 the Office’s previous decision-making practice or a decision handed down in a Member State. Furthermore, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination or constitute a reason to invalidate a decision which per se appears to be reasonable and to conform to the CTMR, as interpreted by EU judicature.

In addition, as regards absolute grounds examination, the Court has ruled as follows (underlining added),

Although, in the light of the principles of equal treatment and sound administration, OHIM must take into account the decisions already taken in respect of similar applications and must consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality. Moreover, 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. Accordingly, such an 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 (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 to 77 and the case-law cited).

(judgment of 23/01/2014, T-68/13, ‘CARE TO CARE’, paragraph 51, judgment of 30/04/2013, T-640/11, ‘RELY-ABLE’, paragraph 34; judgment of 10/03/2011, C-51/10 P, ‘1000’, paragraph 77, judgment of 22/05/2014, T-228/13, ‘EXACT’, judgment of 14/07/2014, T-404/13, ‘SUBSCRIBE’).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 427 918 is hereby rejected for the following goods and services:

Class 9 Computer software [recorded]; Electronic publications [downloadable]; Television apparatus; Televisions; Projection apparatus; Computer operating programs, recorded; Portable media players; portable telephones; Cell phones; Smartphones; glasses; Time recording apparatus; Downloadable image files; Downloadable music files.

Class 41 Organization of competitions [education or entertainment]; Providing on-line music, not downloadable; Providing on-line videos, not downloadable; Publication of electronic books and journals on-line; Shows (Production of-); Film and video tape film production; Entertainment information; Providing on-line computer games; Modelling for artists; Radio and television programmes (Production of-); Entertainer services; Entertainment services; Organization of shows [impresario services]; Live performances (Presentation of-); Online entertainment, namely, providing talent evaluations for aspiring and professional performers via an online network; online entertainment, namely, providing a website featuring online videos and other information in the field of acting and performing arts for aspiring and professional performers; Providing on-line electronic publications, not downloadable.

Class 45 On-line social networking services; Online social networking services provided through a community website; Escorting in society [chaperoning]; Chaperoning; Marriage partner introduction or dating services; Marriage agencies; Dating services; Clothing rental; Security consultancy.

The application is accepted for the remaining goods and services, namely for:

Class 9 Set-top Boxes.

Class 45 Evening dress rental.

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.

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a Community trade mark (Article 7 CTMR and Rule 11(1) CTMIR),

of 22/09/2015, 4 pages