Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 18/03/2016

Jean-Denis Dupuy-Manaud

1, allée de Plaisance

F-31410 Lavernose

FRANCIA

Application No:	014638423
Your reference:	QUINT/TRIPLE8
Trade mark:	GET USED TO IT
Mark type:	Word mark
Applicant:	Triple Eight Distribution, Inc. 20 W. Vanderventer Ave. Port Washington NEW YORK 11050 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/11/2015 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 21/01/2016, which may be summarised as follows:

1. The sign at issue will not be seen as a promotional laudatory statement that lacks distinctive character, because in fact it warns consumers that they have to get used to the products sold.

2. The applicant questions the relevance of the judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 34. This is because the applicant speculates on the reverse perception that it is habitual and customary and it will be kept in the memory of the relevant public.

3. As the goods are mainly safety products for sport the relevant public will have higher level of attention.

4. The relevant public will understand that the goods for which registration is sought are cumbersome and not comfortable, as sportsmen are not enough used to safety products. It will also perceive the trade mark as a message that the applicant is concerned by and engaged in safety.

5. The sign is surprising and should not be understood for what it means at face value, but the second meaning should be taken into consideration.

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).

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

The Office disagrees with the applicant’s submission that the sign ‘GET USED TO IT’ will not be seen as a promotional laudatory statement because it is a memorable expression that warns consumers that they have to get used to the sold products. As there are no additional elements which might contribute to the distinctive character of the term ‘GET USED TO IT’, such as elements of fancifulness, a play on words, a subliminal message, etc., it is a clear and promotional laudatory message, the function of which is to describe a characteristic of the goods or to communicate an inspirational or motivational statement. The relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods concerned. It will be perceived as a call to get familiar with the applicant’s goods. It is a persuasion to use/to purchase the applicant’s goods, to the extent that they become something habitual or customary for the consumer.

Consequently, the Office maintains that the trade mark applied for does not have any distinctive character. The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T 87/00, ‘EASYBANK’, paragraph 39). However, in the present case, the applicant has failed to prove that the sign has a minimum degree of distinctive character and that the consumer would easily recognise the commercial origin of the goods in question.

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).

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 fact that ‘GET USED TO IT’ products are sold only to professionals does not affect the outcome. This is because the high level of attention alone does not establish that the consumer will recognise an indication of origin when encountering such a clearly laudatory expression, unless it is portrayed in a striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex assessments of indications on goods they encounter and they will perceive the term ‘GET USED TO IT’ only as exhortation to get familiar or accustomed to the applicant’s products. The sign applied for is simple, basic and so lacking in additional distinguishing features or figurative elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

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).

The applicant argued that the sign passes two messages to the relevant consumer and that it should not be understood for what it means at face value, but the second meaning should be taken into consideration. However, the fact that the sign at issue 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 in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (See judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 84.)

What matters is the ordinary and plain meaning of the expression, properly explained in the Office’s letter of 10/11/2013. Therefore, the Office is of the opinion that the relevant public would perceive the expression ‘GET USED TO IT’ as a promotional slogan in relation not only to the goods applied for in this application but, the Office contends, to all and any conceivable products or services in trade. The fact that the applicant wants to warn consumers that they have to get used to the products sold, it is irrelevant because at least part of the relevant public could understand that the applicant’s goods are so attractive or good quality that the consumer will get used to using them. Therefore, the trade mark is a basic word combination, entirely obvious and meaningful and as such cannot in any way be shown to be memorable.

Moreover, the use of unorthodox grammatical forms must be carefully assessed because advertising slogans are often written in a simplified form, in such a way as to make them more concise and snappier (see, inter alia, judgment of 24/01/2008, T-88/06, ‘SAFETY 1ST’, para. 40).

The Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (judgment of 12/07/12, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 638 423 is hereby rejected for all the goods claimed, namely for:

Class 9 Helmets for use in sports.

Class 25 Clothing, namely, shirts, t-shirts, socks, hats, jackets and sweatshirts.

Class 28 Protective athletic devices and accessories for use in sports, namely, protective pads, wrist guards, knee pads, and elbow pads, bags specially adapted for carrying skates and skating accessaries.

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