Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 21/12/2015

Media Port

ul. Skarbka 11/1

60-348 Poznan

POLONIA

Application No:	014430301
Your reference:
Trade mark:	takemore.net
Mark type:	Figurative mark
Applicant:	Media Port ul. Skarbka 11/1 60-348 Poznan POLONIA

The Office raised an objection on 19/08/2015 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 14/10/2015, which may be summarised as follows:

1. The applicant claims that the name of the objected mark was absolutely intended, as they would like to convince the consumer that he will receive more, and in that respect ‘takemore.net’ is a very attractive name for a trade platform, which makes the end consumer feel that there is more than he expected.

2. The font in which the word elements are written refers to the handwriting of the youth. The words are written with very deep italic, keeping the black colour on the white background; the words ‘take’ and ‘more’ are placed under each other and are also underlined, which features result in a special effect that should attract the target audience (between the age of 25-35). This look was designed by professional graphic designers and nothing is accidental in it.

3. The applicant points out that the mark ‘takemore.net’ has been already registered as a CTM in his name for services in Class 35, and having a new logotype registered would only be a marketing movement, the company itself remains the same.

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).

The marks referred to in Article 7(1)(b) CTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) CTMR if it may be perceived immediately as an indication of the commercial origin of the goods or 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).

In addition, in view of the nature of some of the services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

Regarding the applicant’s claim that while observing the mark, the relevant consumers would be motivated to receive more or would believe that they will receive more, it must be pointed out that this is a clear and basic function of advertising slogans in general. The relevant public would perceive the expression ‘takemore.net’ as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement, and will not tend to perceive in the sign any particular indication of commercial origin.

Even if the font in which the word elements of the mark are written may be considered unusual, it does not endow the mark even with a minimum degree of distinctiveness, even if the mark would be registered as a figurative mark containing word elements. The word elements are not supported by any additional eye-catching visual elements, and in addition, the fact that the word elements ‘take’ and ‘more’ are written under each other (i.e. separately), strengthens the impression of the observer that it is a sentence composed in line with the rules of English grammar, and that the words from an expression with the simple motivational message: get or receive more. Likewise, the underlining adds a simple emphasis to that message.

The applicant reference to a similar registered Community trade mark ‘takemore.net’ (possibly CTM No 9 666 116) cannot be taken into consideration, as 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).

It should be also noted that the Community trade mark registration referred by the applicant differs significantly from the objected mark. The earlier registration referred by the applicant is a coloured figurative mark, containing a black and red background. In addition, the expression ‘takemore’ is written in one word, which is different from the normal use of those words next to each other. In the light of these factors, under no circumstances should this case be considered as identical with the present case.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 430 301 is hereby rejected for all the 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.

Volker Timo MENSING