Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 02/06/2016

BERWIN LEIGHTON PAISNER LLP

Adelaide House, London Bridge

London EC4R 9HA

REINO UNIDO

Application No:	014764914
Your reference:	IGRU/JDZA/O0171.nm
Trade mark:	THE THINKING PERSON'S CRUISE
Mark type:	Word mark
Applicant:	Viking River Cruises (Bermuda) Ltd. Clarendon House, 2 Church Street Hamilton HM 11 LAS BERMUDAS

The Office raised an objection on 20/11/2015 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR 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 29/03/2016, which may be summarised as follows:

1. The mark must be considered in its entirety. The mark consists of two concepts, ‘THINKING PERSON’ and ‘CRUISE’. The words ‘THINKING PERSON’ creates an attractive but unusual concept when combined with the word ‘CRUISE’. ‘THINKING PERSON’ is an unusual expression and is not used by others. It is distinctive for all the services for which registration is sought on its own, and it is still more distinctive when combined with the word ‘CRUISE’. The meaning of these words, when combined, is unclear, since the expression ‘THINKING PERSON’ is not descriptive of cruise services. Therefore, the mark is sufficiently distinctive to be registered when considered in its entirety.

2. The mark ‘THINKING PERSON’ applied for in parallel by the applicant has been accepted by the Office for identical services. It would be inconsistent for the Office to refuse an application that is on a par with another, accepted, application.

3. The vast majority of the services for which registration is sought could not be described as ‘provision of cruise on a ship’. For example, ‘video arcade services’, ‘health club services’, ‘casino services’, ‘casino gaming’, etc., in Classes 41 and 43 have no connection with a journey or a cruise on a ship. The mark bears no relation to these services and therefore cannot be said to be devoid of distinctive character. The distinctiveness of the mark must be assessed in relation to the services for which registration is sought. The mark does not have a direct link with the services in question.

4. The relevant public will not perceive the mark as a promotional statement in relation to the services for which registration is sought. It would be seen as a trade mark denoting origin and capable of functioning as such.

Pursuant to Article 75 EUTMR, 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) EUTMR, ‘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) EUTMR 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).

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) EUTMR 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 responds to the applicant’s observations as follows:

When assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of the trade mark’s individual features (judgment of 09/07/2003, T-234/01, ‘Stihl’, paragraph 32).

The Office has considered the mark ‘THE THINKING PERSON’S CRUISE’ both in regard to its individual elements and as a whole. As a result, contrary to the applicant’s argument, the Office is of the opinion that the expression ‘THINKING PERSON’S’ is not an unusual concept in itself or even when it is combined with the word ‘CRUISE’, since the words making up the mark ‘THE THINKING PERSON'S CRUISE’ have easily understandable meanings as defined in the Office’s previous letter; in addition, the way in which the words are combined is no way unusual. Furthermore, the results of a Google search show that the expression ‘THINKING PERSON’S…’ is commonly used in various fields of business.

https://www.amazon.co.uk/Happiness-Thinking-Persons-Richard-OConnor/dp/0091929520

http://www.campaignlive.co.uk/article/1349339/breakfast-briefing-introducing-new-thinking-persons-daily-download#

http://www.telegraph.co.uk/culture/tvandradio/tv-and-radio-reviews/11948970/The-Last-Kingdom-BBC-One-review.html

http://www.theregister.co.uk/2015/06/27/subaru_outback_lineartronic_review/

http://www.brand51.co.uk/post/2016/01/20/making-more-with-what-you%E2%80%99ve-got-the-thinking-person%E2%80%99s-marketing-approach/45/

http://www.elmwood.com/daily-poke/thinking-person%E2%80%99s-beer

Therefore, the mark will be easily understood by the relevant consumers as a meaningful expression referring to ‘cruise services which are suitable for intelligent consumers’. Furthermore, in relation to the services for which registration is sought, it will be perceived as a promotional message highlighting the positive qualities of the services in question to encourage the relevant consumer to choose and purchase those services.

As regards the applicant’s argument that the expression ‘THINKING PERSON’ included in the mark, is not used by others, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question … The lack of prior use cannot automatically indicate such a perception.’ (judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 88).

The applicant argues that the mark ‘THE THINKING PERSON’ applied for in parallel, has been accepted by EUIPO. In this regard, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR and each case must be decided on its own merits. In the present case, the Office has examined both marks applied for in their entirety on the basis of the same rules and practice. The Office considers that the marks may be similar to a certain degree, but they are quite different overall for the purposes of assessing distinctiveness character; therefore, there is no inconsistency between the two decisions.

As regards the applicant’s argument that the vast majority of the services for which registration is sought could not be described as ‘provision of a cruise on a ship’ and have no direct link with the mark, the Office considers that not only the services in Class 39 but also all the services in Classes 41 and 43, related to entertainment, restaurant services or accommodation services, are included broadly in cruise services. The results of a Google search show that cruise services in the relevant market include a wide range of entertainment, accommodation and restaurant services. Therefore, the mark is not considered distinctive in relation to the services in Classes 39, 41 and 43 as stated in the Office’s previous letter.

http://artoftouring.com/cruise-service/

http://www.meistermeetings.com/services_5_cruises.html

http://www.syl.com/travel/internationalcruiseservicesdifferences.html

http://ros-travel.net/cruises.html

http://www.starcruises.com/en/home/get-prepared/onboard.aspx

Despite the arguments of the applicant, the Office remains of the view that the mark is not capable of attracting the attention of the relevant public, but instead is an obvious promotional message. It would not be perceived immediately as an indication of the commercial origin of the goods and 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 764 914 is hereby rejected for all the services for which registration is sought.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

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