Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 21/12/2015

BUZZI, NOTARO & ANTONIELLI D'OULX

Via Maria Vittoria, 18

10123 Torino

ITALIA

Application No:	014454409
Your reference:	MUE1010-LP/cm
Trade mark:	HEARING FIRST
Mark type:	Word mark
Applicant:	Professional Learning Center, LLC. c/o Bruce A. Rosenfield, 1600 Market Street, Suite 3600, Philadelphia 19103 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 20/08/2015, pursuant to Article 7(1)(b) and 7(2) CTMR, because it was found that this trade mark is devoid of any distinctive character (see enclosed letter of three pages).

The applicant submitted its observations on 14/10/2015, which may be summarised as follows:

1. It is not necessary for a CTM to be a work of invention; should be founded not on an element of originality or imagination but on its ability to distinguish goods and services on the market from those of competitors.

2. The sign ‘HEARING FIRST’ makes no direct reference to the contested goods and service; at most, it is merely suggestive. The applicant does not agree that the two words are commonly used together in the English language.

3. The United States Trademark Office has accepted the mark ‘HEARING FIRST’.

4. The applicant lists a series of marks containing the words ‘HEARING’ or ‘FIRST’, combined with another meaningful word, that have been accepted by the Office.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant/holder has had an opportunity to present its comments.

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).

The Office replies as follows to the applicant’s arguments:

1- It is not necessary for a CTM to be a work of invention; should be founded not on an element of originality or imagination but on its ability to distinguish goods and services on the market from those of competitors.

The applicant argues that a slogan does not have to be original or imaginative. Although this is true, to a certain extent, it is no less true that a slogan that contains some element of originality or imagination – such as a play on words, a rhyme, alliteration, a striking figure of speech or a linguistic device – is more likely to stick in the consumer’s mind and perform the essential function of a trade mark.

Article 7(1)(b) makes it clear that a minimum degree of distinctive character is sufficient for the absolute ground for refusal set out in that article not to apply. However, in the present case the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) CTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark. Due to the impression produced by the mark, the connection between the relevant services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR (see also judgment of 12/02/2004, C-363/99 ‘Postkantoor’ paragraph 99; decision of 29/07/2002, R-335/1998-2 – ‘Homeadvisor’ and decision of 03/11/ 2003, R-361/2003-2 – ‘LITIGATION ADVISOR’).

HEARING FIRST is a banal slogan that expresses the simple and direct message that the undertaking providing the goods/services attaches great importance to the consumers’ capacity to hear. As such, it is the kind of slogan that any medical-related undertaking would be entitled to use. There is nothing fanciful or unusual about the way in which the slogan is expressed. Its laudatory message is couched in the plainest of language. It possesses no quality that could endow it with distinctive character.The Office considers, therefore, that it is highly unlikely that the consumer could perceive it as a badge of origin to distinguish the applicant’s goods.

2- The sign ‘HEARING FIRST’ makes no direct reference to the contested goods and service; at most, it is merely suggestive. The applicant does not agree that the two words are commonly used together in the English language.

The Office respectfully disagrees with the applicant’s submissions.

In the present case, consumers would be aware of the meanings of the words ‘HEARING’ and ‘FIRST’, as they are basic English words, and, when confronted with the expression as a whole in relation to the goods and services would be able to directly link these meanings with those goods and services. It follows that consumers will, without further reflection, see the mark as a direct indication that the goods and services offered by the applicant are concerned foremost with hearing.

3- The United States Trademark Office has accepted the mark ‘HEARING FIRST’.

As regards the national decisions referred to by the applicant, according to case-law: the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules.

Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated. (See judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47.)

4- The applicant lists a series of marks containing the words ‘HEARING’ or ‘FIRST’, combined with another meaningful word, that have been accepted by the Office.

As regards the applicant’s argument that a series of marks containing the words ‘HEARING’ and ‘FIRST’ have been accepted by OHIM, it is sufficient to point out that, 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 that regulation, as interpreted by the Community judicature, and not on the basis of a previous practice of the Office (see judgment of 15/09/2005, C‑37/03 P, 'BioID', paragraph 47; and judgment of 09/10/2002, T-36/01, 'Glaverbel', paragraph 35).

Due to the reasons set out above, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 454 409 is hereby rejected for all the goods and services for which registration is sought.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Yannick MUNCH