Refusal of application for a European Union trade mark

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

Alicante, 24/05/2016

MATHYS & SQUIRE LLP

Abbey House 32 Booth Street

Manchester M2 AB

UNITED KINGDOM

Application No:	015002611
Your reference:	T14526CTM
Trade mark:	EXTENDING HEALTHY LIFE
Mark type:	Word mark
Applicant:	Everon Biosciences, Inc. 640 Ellicott Street, Suite 444 Buffalo New York 14203 UNITED STATES OF AMERICA

The Office raised an objection on 04/03/2016 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 04/05/2016, which may be summarised as follows:

• The Office made an error in assessing the distinctive character of a trade mark by carrying out solely an analysis of its descriptive character. (30/11/2011, T 123/10, Complete, EU:T:2011:706, § 58)

• The services for which protection is being sought are very specialised and thus targeted at a relevant purchasing public whose awareness will be high. Accordingly, they will be sufficiently well-educated and/or conversant with English to recognise that the phrase ‘Extending Healthy Life’ is one which is grammatically unusually and does not overtly act as a meaningful expression; particularly when used in relation to the highly technical and specialised services of the application.

• Accordingly, the Applicant asserts that its mark is purely fanciful, and that its highly-aware and well-informed consumers would not leap to the conclusion that the mark pertains to services that are intended to extend one’s life or view it as having a promotional laudatory meaning

• Marks such as ‘how healthy works’, ‘healthy gums’. healthy life’, ‘technology for a healthy world’, ‘healthy extra’, ‘healthy thinking’, ‘healthy cooking in minutes’, ‘quick&healthy’, ‘healthy indulgence’, ‘nutiriton for healthy living’, ‘healthy start’, ‘healthy extras’, ‘healthy outlook’ and ‘healthy balance and healthy kids’ have all been registered by the Office, despite their (in many instances far greater than the present mark’s) allusive qualities

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 (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 25).

The marks referred to in Article 7(1)(b) EUTMR 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’ (27/02/2002, T 79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 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’ (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’ (11/12/2001, T 138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 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 (29/04/2004, C 456/01 P & C 457/01 P, Tabs, EU:C:2004:258, § 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 (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 42 and 03/12/2003, T 305/02, Bottle, EU:T:2003:328, § 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) 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’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 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 (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

The applicant submits that The Office made an error in assessing the distinctive character of a trade mark by carrying out solely an analysis of its descriptive character and refers to the General Court decision Paul Hartmann AG/OHIM 30/11/2011, T 123/10, Complete, EU:T:2011:706, § 58.

The Office agrees with the applicant that an assessment of the distinctive character of a trade mark based solely on an analysis of its descriptive character would constitute an error. But such an error has not been made in this case. The Objection raised on 04/03/2016 clearly states that the application is not eligible for registration under Article 7(1)(b) CTMR. The objection is based on the premise that the relevant consumer will understand the words as a meaningful expression “making life longer in good health” and that whilst not specific, it comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the services. Nowhere was mentioned that the expression is directly descriptive of the services applied for.

The applicant further put forward that the targeted public consists of professionals and that the services for which protection is being sought are very specialised and thus targeted at a relevant purchasing public whose awareness will be high. Accordingly, they recognise that the phrase ‘Extending Healthy Life’ is one which is grammatically unusually and does not overtly act as a meaningful expression; particularly when used in relation to the highly technical and specialised services of the application.

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 (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

As already stated in the objection notice the claimed services are addressed at a professional public. However the Court of Justice has established that the level of attention of the public is relatively low when it comes to promotional indications (17/11/2009, T 473/08, Thinking ahead, EU:T:2009:442, § 33). This applies also in the case of a professional public (09/07/2008, T 58/07, Substance for success, EU:T:2008:269, § 23).

In terms of language, since the slogan applied for is in English, the relevant public for the assessment is the English-speaking public, in other words primarily the public in the United Kingdom, Ireland and Malta (see Article 7(2) EUTMR). However, since the slogan consists of general English words and because the relevant public consists of (medical) professionals who usually have a good command of English, the word sequence will undoubtedly also be understood throughout the entire territory of the European Union.

The mark consists of the expression ‘EXTENDING HEALTY LIFE’. The words are juxtaposed in accordance with the rules of English grammar and common parlance. The expression transmits a direct message as a slogan, namely, as indicated in the first objection, that the services applied for intend to expand, prolong a person’s lifespan and also in good health.

For the services applied for, ‘research and development in the fields of cellular biology, biotechnology and pharmaceutical sciences, and providing information in connection therewith’ the slogan indicates that these are directed at the extension of life in good health. It follows that the slogan highlights a positive characteristic and goal of these services.

Therefore the targeted public will see the word sequence applied for as a general laudatory term without regarding it as containing an indication of commercial origin which refers to a specific undertaking behind the indication.

As regards the earlier CTM and EUTM registrations of slogans mentioned by the applicant, the individual earlier registrations cannot be compared to each other or to the application that is the subject of proceedings, as they involve different expressions and different goods or services. It should also be emphasised that decisions of the Office on the registration of a sign as a European Union trade mark under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. The legality of the registration is therefore to be assessed purely on the basis of the EUTMR and not on the basis of earlier decision-making practice. The argument put forward concerning the registrability of other trade marks is only relevant if it contains grounds which call into question the assessment of the examiner in the case at hand (15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47 to 51 and 06/03/2007, T 230/05, Golf USA, EU:T:2007:76, § 57 to 64). As already mentioned, the trade marks that are the subject of the earlier registration and the appeal proceedings cited cannot be compared with the trade mark applied for that is the subject of these proceedings.

Besides, the mere fact that the Office has at one point in time, registered a trade mark – maybe in error – does not entitle even the same applicant to stake out a claim for subsequent registration as the observance of the principle of equal treatment must be reconciled with the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 67 and 10/03/2011, C 51/10 P, 1000, EU:C:2011:139, § 76-77).

The sign is therefore devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR in respect of all of the services claimed.

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 15002611 is hereby rejected for all services.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Steven C. STAM