Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 04/03/2016

Gleiss Große Schrell und Partner mbB

Leitzstr. 45

D-70469 Stuttgart

ALEMANIA

Application No:	014661516
Your reference:	205820_EM
Trade mark:	HANDPICKED INGREDIENTS FOR A HAPPY, HEALTHY HIVE
Mark type:	Word mark
Applicant:	Zarbee's Inc. 50 Old Field Point Road Greenwich Connecticut 06830 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/10/2015 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 23/12/2015, which may be summarised as follows:

1. The word “hive” has a secondary meaning and therefore the applied for expression “HANDPICKED INGREDIENTS A HAPPY, HEALTHY HIVE” has to be seen as a creative and inventive slogan.

2. The Office has wrongly considered that the goods are intended for animals and not for human beings.

3. The criteria for the assessment of distinctive character are the same for the various categories of marks; that means the same also applies for a combination of words (slogans). The requirements for a finding of distinctive character should not be too strict.

4. The minimum degree of distinctiveness is sufficient to overcome the obstacle of absolute grounds for refusal.

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.

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, EU:T:2002:42, § 26).

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, Bravo, EU:C:2001:510, § 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, EU:T:2001:286, § 44).

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, EU:T:2002:301, § 20 and judgment of 03/07/2003, 03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 21).

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

1) The word “hive” has a secondary meaning and therefore the applied for expression “HANDPICKED INGREDIENTS A HAPPY, HEALTHY HIVE” has to be seen as a creative and inventive slogan.

In response to the Applicant’s statement the Office explains that in the present case the applied for trade mark lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely that the expression “HANDPICKED INGREDIENTS A HAPPY, HEALTHY HIVE” will be perceived as an expression of trade origin. The Office agrees with the Applicant’s statement that it is possible to assign to the word HIVE several meanings, but that does not preclude the fact that, in the context of the applied for goods, the word “HIVE” indicates a container in which bees live and make honey. Therefore, in the context of the claimed goods, at least one of the possible connotations of the claimed sign is devoid of any distinctive character. Even if it were possible to attribute to the applied for trade mark the meaning claimed by the Applicant, that would not preclude the fact that one of the trademark’s possible connotations remains non-distinctive. Consequently, the mark as a whole would be perceived by the relevant public as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement. The mark only highlights positive aspects of the goods concerned, namely, that they are exclusive, carefully selected, and enable the best result to be achieved. There is nothing about the expression ‘HANDPICKED INGREDIENTS FOR A HAPPY, HEALTHY HIVE’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods in question (judgment of 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

2) The Office has wrongly considered that the goods are intended for animals and not for human beings.

The Office explains that the wording of the claimed list of goods enables one to produce goods that are intended to be used in various fields, and that they are thus not limited only to human consumption. Nevertheless, even if the list of goods contains only goods for human consumption, then the mark still would be perceived by the relevant consumer as a motivational expression, the purpose of which is to urge the consumer to buy and consume the Applicant’s goods. The public would still perceive that the expression “HANDPICKED INGREDIENTS FOR A HAPPY, HEALTHY HIVE”, when used in relation to “Dietary and nutritional supplements”, as an expression inviting and encouraging the consumer to buy and consume healthy and environmentally friendly dietary and nutritional supplements. The mark is therefore considered non-distinctive.

3) The criteria for the assessment of distinctive character are the same for the various categories of marks; that means the same also applies for a combination of words (slogans). The requirements for a finding of distinctive character should not be too strict.

According to case law 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, EU:T:2002:42, § 26). When the Office assessed the claimed mark there were not adapted any additional stricter criteria. The Office followed the principles adopted by the court. When assessing the distinctiveness of the applied for trademark the Office first assessed the relevant consumer and its degree of awareness; also, the Office assessed how the relevant public would understand the mark claimed according to its dictionary meaning and how the relevant public would perceive the mark in the context of the claimed goods. Therefore in the present case the Office has found correctly that 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 and services concerned, namely, that they are exclusive, carefully selected, and enable the best result to be achieved. In the Office’s opinion, this promotional information does 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, EU:T:2002:42, § 26).

4) The minimum degree of distinctiveness is sufficient to overcome the obstacle of absolute grounds for refusal.

The Office explains that it is common to use imperative, motivational statements in marketing in order to urge consumers to consume. These motivational expressions are commonly used by various traders only for the purpose of encouraging the consumer to buy goods or to employ services. The relevant consumers are familiar with this fact and are used to such kinds of expressions and perceive them only as laudatory and motivational statements that might be used by various traders with the purpose of motivating and moulding consumers. Therefore these motivational expressions will be seen as fairly commonplace in the language of marketing and it follows that they do not have the ability to distinguish services. In the present case “HANDPICKED INGREDIENTS FOR A HAPPY, HEALTHY HIVE”, when used in relation to “Dietary and nutritional supplements” will be seen as inviting and encouraging the consumer to buy and consume healthy and environmentally friendly dietary and nutritional supplements. The mark is therefore considered non-distinctive, not just in relation to the claimed goods. The mark lacks any secondary or covert meaning, has no fanciful elements, and its message to the consumer is plain, direct and unambiguous. For these reasons, it is unlikely that “HANDPICKED INGREDIENTS FOR A HAPPY, HEALTHY HIVE” will be perceived as an expression of trade origin

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 661 516 is hereby rejected.

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.

Liina PUU