Refusal of application for a European Union trade mark

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

Alicante, 02/03/2017

SHERIDANS

Seventy Six Wardour Street

London W1F 0UR

United Kingdom

Application No:	15 325 822
Your reference:	NPP/KL/WIC.8.1
Trade mark:	THE BODY COACH
Mark type:	Word mark
Applicant:	JOSEPH WICKS 164 Walkden Road, Worsley Manchester M28 7DP United Kingdom

The Office raised an objection on 30/04/2016, pursuant to Article 7(1)(b) and (c), and 7(2) CTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 05/09/2016. In its communication of 31/10/2016, also attached, the Office informed the applicant that after giving due consideration to the applicant’s arguments, it decided to maintain the objection.

Nevertheless, at the applicant’s request he was granted two months from the notification of that communication to submit evidence of acquired distinctiveness pursuant to Article 7(3) EUTMR.

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.

Article 7(1)(b) and (c) EUTMR

Reference is made to the Office’s communication of 31/10/2016 which addressed the observations of the applicant and has already concluded that the mark applied for is descriptive and devoid of any distinctive character and the term “THE BODY COACH” is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR.

Since the Applicant did not submit any additional arguments or observations relating to the Office’s conclusions, the Office maintains these findings. Consequently, in the current communication only the applicant’s claim to acquired distinctiveness and the additional evidence submitted by the applicant on 03/01/2017 and 17/01/2017 will be assessed.

Acquired distinctiveness pursuant to Article 7(3) EUTMR

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(See judgment of 10/11/2004, T-396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C-108/97 and C-109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C-25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C-299/99, ‘Philips’, paragraph 63).

Thus, in the present case, according to settled case-law, acquired distinctiveness
must be demonstrated throughout the territory in which a trade mark did not have, ab
initio, a distinctive character (judgment of 22/06/2006, C-25/05 P, ‘Sweet wrapper’,
paragraphs 83 and 86; and judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY
(Surface of a tractor)’, paragraph 30). Since the trade mark applied for is composed
of English language words, and does not have ab initio, a distinctive character in the
parts of the European Union where English is the official language, its acquired
distinctiveness at the moment of filing the application (11/04/2016), for all the goods
and services in question must be proved only in those parts of the European Union,
that is, the United Kingdom, Ireland and Malta. It should be noted that in the Netherlands and Scandinavian countries (Sweden and Denmark) English is also widely understood.

The applicant submitted its evidence of acquired distinctiveness on 03/01/2017 and 17/01/2017, which may be summarised as follows:

1. Witness statement of a motivational speaker, business leader and mentor who has been managing the business affairs of the applicant since 2013.

The witness statement states the following: “Joseph Wicks (known as The Body Coach) is a fitness coach, TV presenter and author specialising in cooking and fitness books. His first published cookbook Lean in 15: 15-minute meals was a best-selling book in 2015, having sold over 900,000 copies. He is a channel 4 television presenter with his own show THE BODY COACH.”

2. Website printouts for the site www.thebodvcoach.co.uk , screen shots OF Wayback Machine extracts showing use of the website from 2012, data on visits to the website showing over 3 000 000 new users for the UK, 300 000 for Ireland and 3.000 for Malta, for the period from 01/01/2016 to 30/08/2016 7.7 million sessions in UK, 700 000 sessions in Ireland and 3 000 sessions in Malta.

3. Bookscan International sales table showing sales figures for the applicant’s books with the following information: – UK volume (1998) 1 171 163; Nielsen bookscan figures for sales of the applicant’s books in Ireland, showing the sale of over 50 000 copies in 2015. The witness statement also contains some financial figures on book sales: UK in 2015 £ 77 552 and £1 707 810 in £ 2016, Ireland £ 2 059 in 2015 and £ 71 281 in 2016.

4. List of subscribers of The Body Coach 90 Day SSS Plan by country in 2015. For the UK, the lists show 52 576 subscribers yielding £4 460 732 in revenue. For Ireland, 3 346 subscribers yielding £289 458 in revenue. For Malta, 12 subscribers yielding £1 136 in revenue.

5. Overview of publicity material regarding the “Lean in 15” book/programme showing magazine and online advertising, buses, billboards, mainly together with the name of the applicant; the term “The Body Coach” is generally only depicted at the bottom of the books, under the name of the applicant

6. Extracts for media and press coverage, e.g. television, radio and publications from 2014 until 2016. The newspaper articles sometimes refer to the applicant a.k.a. the ‘Body Coach’ in relation to best-selling cookbooks, recipes and diet and exercise plans. The applicant also enclosed audience reach/circulation figures for these newspapers.

• One article which appeared in businessinsider.sg in December 2016 states the following: “UK-based Joe Wicks, better-known as The Body Coach, has built up a huge social media following thanks to his quirky Instagram videos capturing him throwing together easy-to-cook healthy meals in his kitchen and his fun approach to fitness. His social media fame was him quit his job las year to launch his own business – The Body Coach – which has sold virtual 90-day nutrition and exercise plans to tens of thousands of clients. In its second year of trading, the business is already on track to do £12 million in turnover this year, with next to no marketing spend.”

• Another article from dailymail.co.uk refers to 1,5 million followers on Instagram.

• An article from www.theguardian.com from 2016 June states “two years ago Joe Wicks was just another jobbing personal trainer. Then he discovered Instagram and a fitness phenomenon was born.”

7. Youtube video screenshots showing exercise plans and the term “BodyCoach”, at times with over 200.000 views/likes, Facebook statistics showing the total reach of 500.000-1.000.000 people

8. Twitter subscribers breakdown showing 85% UK subscribers

9. Figures for the Facebook subscribers listed by country. Another table shows over 1 million Facebook fans in the UK and over 160 000 in Ireland.

10. Youtube screenshot showing 2874 minutes of the Body Coach TV watched in Malta

According to current case-law of the Court of Justice in the case
T-190/09 of 09/03/2011, „5 HTP“, in assessing the distinctive character of a mark in respect of which registration has been applied for, the following may, inter alia, be taken into account (see para. 47):

• the market share held by the mark;

• how intensive, geographically widespread and long-standing use of the mark has been;

• the amount invested by the undertaking in promoting the mark;

• the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;

• statements from chambers of commerce and industry or other trade and professional associations;

• opinion polls;

• The distinctive character, also acquired through use, must be assessed in relation to the goods and services applied for (para. 65);

• The applicant has to demonstrate to the Office that its trade mark had acquired distinctive character before the filing date of the mark;

While the applicant filed extensive amounts of evidence, the Office cannot accept the acquisition of distinctiveness through use for the following reasons.

There is no evidence in relation to most of the goods and services. There is no evidence for goods in Class 28, apart from some pictures of the applicant in a gym where the term applied for is partly visible. There is no evidence of DVDs or education services. In fact, the only goods and services where the applicant has demonstrated some activity relates to application software, books, website, television show and youtube videos, and to some extent the services in Classes 43 and 44.

In relation to Ireland and especially Malta, there is little specific information or evidence to show that the mark applied for has acquired distinctive character through use in these territories for the goods and services objected to. The applicant selling 50 000 books and having 3000 subscribers for his app in Ireland can indeed be a measurement of certain commercial success but it appears to be a recent one, i.e. 2015/16 and thus this alone is not conclusive for the purposes of assessing enhanced distinctiveness. In Malta, the applicant only has 12 subscribers, some views on YouTube and the argument that 30% of 1 million tourists visiting Malta are from the UK, which is not relevant as it does not show the applicant’s intention to specifically direct the Maltese population with his goods and services and expose them to such an extent which would affect the distinctiveness of the sign applied for.

The circulation numbers of the newspapers containing articles referring to the applicant as ‘The Body Coach’ have little relevance as these papers cover a large variety of content and their readers are not expected to retain every single piece of information.

In general, the evidence of the applicant’s presence on social media, in particular the number of followers/hits/likes/views is secondary evidence. In addition, this type of data can only be evidence of temporary, transient recognition given the nature of social media focusing on one big hit before the next and it is thus preferable to demonstrate intensive and long standing use.

At the same time, most of the evidence showing big number of book sales/subscribers relates only to the last two years and in particular to the year 2016 whereas the mark was filed in April 2016.

There is certain discrepancy between the applicant’s submission and the witness statement, for example, insofar as the witness statement does not contain the turnover and advertising revenue the applicant refers to in his submission. In any event, the assertions made in the witness statement should have been backed up by further evidence. Statements coming from the sphere of the trade mark applicant are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (decision of 11/01/2011, R 0490/2010-4, BOTODERM, § 34; decisions of 27/10/2009, B 1 086 240 and of 31/08/2010, B 1 568 610). In general, further material is necessary for establishing evidence of use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important.

However, in the present case there are no figures on turnover, market share, advertisement spending. The only remotely relevant information comes from the newspaper Business Insider Singapore, which claims the applicant “is on track to do £12 million in turnover this year, with next to no marketing spend.”

The Office highlights that, according to the General Court, a distinction must be made
between “direct proof” of acquisition of distinctive character (surveys, evidence on the
market shares held by the mark, statements from chambers of commerce and
industry or other trade and professional associations) and “secondary evidence”
(sales volumes and advertising material, duration of use) that are merely indicative of
the mark’s recognition on the market. Though secondary evidence may serve to
corroborate direct proof, it cannot substitute it. In the case at hand, all the documents
provided would be considered as secondary evidence. The documents submitted
show that the applicant has commercial activity in relation to book sales, subscribers, television, website, etc.

However, the sales figures declared, together with the promotional material (which does not necessarily show the mark) and extracts from webpages and social media accounts may only be regarded as secondary evidence. This documentation could only serve to consolidate, if necessary, direct evidence of distinctiveness acquired through use, such as statements from professional associations or market surveys (29/01/2013, T-25/11, Cortadora de cerámica, EU:T:2013:40, § 74).

There is a lack of substantive evidence from independent sources
such as trade associations, consumer organisations or chambers of commerce to
adequately demonstrate the degree of recognition of the mark on the market. The only argument of the applicant in this respect relates to the five-star Itunes rating of his application. However, this rating is not generated by independent official bodies but users with unknown background or location.

More importantly, there is a lack of evidence that focuses on the perception of the relevant consumer in respect of the mark in the relevant territory. The applicant could have demonstrated this for instance by conducting a survey to show the percentage of the relevant consumers concerned who are able to identify the goods and services objected to on the basis of the trade mark.

Therefore, following a careful assessment of the evidence provided the Office finds
that it does not allow the assessment of the proportion of the public who, because of
the mark, would identify the services at issue as originating from a particular
undertaking and as such, the Office concludes that it is not sufficient to demonstrate
that the mark has acquired distinctive character in consequence of the use made of
it. Therefore, the content of Article 7(3) EUTMR cannot be applied to waive the
objection applicable to the present case.

Finally, the Office notes that the applicant reserved the right to submit further evidence. However, the Office is of the opinion that the applicant has had many opportunities to present all his comments and submissions, including during the two extensions of time limit granted by the Office at the applicant’s request on 01/07/2016 and 03/01/2017. Another round of submissions would unnecessarily lengthen the examination proceedings and no specific reason has been given.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2)
EUTMR, the application for Community trade mark No 15 325 822 is hereby rejected in part, namely for:

Class 9 Downloadable software; Downloadable computer software in the fields of nutrition, weight loss, body training and fitness training; Downloadable electronic publications; Downloadable electronic publications in the fields of nutrition, weight loss, body training and fitness training; Pre-recorded fitness DVDs.

Class 16 Printed matter; Books; Cookery books; Printed recipe cards; Instructional and teaching material [except apparatus].

Class 28 Gymnastic and sporting articles; Body-training apparatus; Sports training apparatus; Indoor fitness apparatus; Fitness exercise machines; Manually-operated exercise equipment for physical fitness purposes.

Class 41 Education services; Education services relating to nutrition; Education services relating to weight loss; Provision of instruction relating to nutrition; Dietary education services; Provision of educational courses relating to diet; Provision of educational health and fitness information; Providing of training; Providing of training in the fields of health care and nutrition; Providing non-downloadable electronic publications relating to nutrition, weight loss, body training and fitness training; Conducting training seminars; Arranging of demonstrations for training purposes; Production of training films and videos; Personal fitness training services and consultancy; Personal training provided in connection with weight loss and exercise programs; Instruction in weight training; Gymnasium services relating to weight training; Physical fitness instruction; Physical fitness training services; Physical fitness education services; Providing a website featuring information on exercise and fitness; Coaching services for sporting activities; Personal coaching services in the fields of nutrition, weight loss, body training and fitness training.

Class 43 Providing personalised meal planning services via a website; Advice concerning cooking recipes; Providing information in the nature of recipes for drinks.

Class 44 Providing weight loss program services; Advisory services relating to weight loss; Weight reduction diet planning and supervision; Counselling relating to nutrition; Providing information relating to dietary and nutritional guidance; Nutritional advisory and consultation services; Nutrition and dietetic consultancy.

According to Article 59 EUTMR, you have a right to appeal this decision. According
to Article 60 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.

Marianna KONDAS