Refusal of application for a European Union trade mark

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

Alicante, 10/10/2016

BRIDLE INTELLECTUAL PROPERTY LIMITED

6F Thomas Way

Lakesview International Business Park

Canterbury CT3 4JZ

REINO UNIDO

Application No:	015340714
Your reference:	T238.002EU
Trade mark:	DEVILISHLY DIFFERENT
Mark type:	Word mark
Applicant:	Fudge Kitchen Limited Hemsted House, Woodland Road Lyminge Kent CT188DL REINO UNIDO

The Office raised an objection on 02/05/2016 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 31/05/2016, which may be summarised as follows:

• As part of the reasoning for the objection the Office has provided dictionary meanings for the individual words DEVILISHLY and DIFFERENT. However, the provided meaning ‘very’ only applies to the adverb DEVILISH and no specific meaning is given for the adverb DEVILISHLY. The term DIFFERENT is an adjective, and it is grammatically incorrect in the English language to combine an adverb with an adjective. Furthermore, the goods listed in Classes 30 and 32 are all nouns, and it is grammatically incorrect in the English language to use an adverb to describe a noun. It is therefore submitted that, as a whole, the composite word mark ‘DEVILISHLY DIFFERENT’ has no natural meaning in the English language, and that the combination of an adverb with an adjective to form a composite expression used in connection with nouns is a lexical invention which will be considered fanciful in the minds of the relevant consumer of the goods at issue.

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 its submissions the applicant has argued that as part of the reasoning for the objection the Office has provided dictionary meanings for the individual words DEVILISHLY and DIFFERENT. However, the provided meaning ‘very’ only applies to the adverb DEVILISH and no specific meaning is given for the adverb DEVILISHLY. The term DIFFERENT is an adjective, and it is grammatically incorrect in the English language to combine an adverb with an adjective. Furthermore, the goods listed in Classes 30 and 32 are all nouns, and it is grammatically incorrect in the English language to use an adverb to describe a noun. It is therefore submitted that, as a whole, the composite word mark ‘DEVILISHLY DIFFERENT’ has no natural meaning in the English language, and that the combination of an adverb with an adjective to form a composite expression used in connection with nouns is a lexical invention which will be considered fanciful in the minds of the relevant consumer of the goods at issue.

The Office has noted the applicant’s submissions. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

Furthermore, the Office would bring to the applicant’s attention the following extract taken from the Oxford English Dictionary which provides a clear definition of the DEVILISHLY as an adverb denoting excessively, exceedingly

Information extracted from the Internet on 10/10/2016 at http://www.oed.com/

The Office remains of the opinion that when taken as a whole, the expression ‘DEVILISHLY DIFFERENT’ consist exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but as promotional or advertising information indicating to the consumer the positive aspects of the goods concerned, and as such, a characteristic of the goods related to their market value.

The expression ‘DEVILISHLY DIFFERENT’ is a promotional laudatory message, the function of which is to indicate a characteristic of the goods. The term transmits the message that the goods applied for differ exceedingly from those offered by competitors in the market, and it is considered highly improbable that the relevant public would fail to grasp the signs promotional laudatory message.

Taken as a whole, the meaning of the expression ‘DEVILISHLY DIFFERENT’ is clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the goods in respect of which registration is sought. It is, therefore, the Office’s view that the expression ‘DEVILISHLY DIFFERENT’ is readily intelligible when taken in conjunction with the goods applied for and viewed by the relevant consumer.

Furthermore, there is nothing in the expression ‘DEVILISHLY DIFFERENT’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is just an ordinary advertising message that possesses no particular resonance. It does not even have certain originality and resonance which makes it easy to remember (see decision of 23/06/2011, in R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 26).

The above findings do not contradict the relevant case law on which the applicant relies. The Office stresses that the sign applied for is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan with a clear and unambiguous laudatory meaning. The case law on which the applicant relies cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can now be registered as a trade mark, merely because it is presented in the form of an advertising slogan (see decision of 23/06/2011, R 1967/2010-2 – ‘INNOVATION FOR THE REAL WORLD’, paragraph 27).

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 15 340 714 is hereby rejected.

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.

Andrew CARTER