Refusal of application for a European Union trade mark

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

Alicante, 16/03/2017

BECK GREENER

Fulwood House

12 Fulwood Place

London WC1V 6HR

United Kingdom

Application No:	015435001
Your reference:	IB/T81366EM
Trade mark:	SKIP THE WAIT
Mark type:	Word mark
Applicant:	QSR Automations, Inc 2301 Stanley Gault Parkway Louisville, KY 40223 United States of America

The Office raised an objection on 30/06/2016 pursuant to Article 7(1)(b) 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 27/10/2016, which may be summarised as follows:

1. ‘When the words ‘SKIP THE WAIT’ are contemplated together as a unit, the syntactically unusual composition of the mark conveys to the consumer that it is not a mere promotional formula, particularly since it is not a phrase commonly used in the English language.’

2. ‘It is doubtful that the same laudatory message could apply to each and every item in the specification.’ Some of the goods in Class 9 do not make reference to the expression ‘omitting a waiting period’.

3. ‘‘SKIP THE WAIT’ is composed of three short, monosyllabic words which give the mark a visually and phonetically striking appeal and renders it memorable to the consumer.

4. Other slogans (such as ‘the wait for your table is over’) or words instead of ‘wait’ (such as ‘line’ or ‘queue’ or ‘waiting list’) would be more appropriate or would have a clearer meaning. The mark is merely allusive and given that it is semantically closer to ‘Vorsprung durch Technik’ than to ‘Mehr für Ihr Geld’ it should be accepted.

5. The fact that the phrase “skip the wait” ends abruptly requires the consumer to employ some mental effort in order to interpret its meaning and to then make an association with a characteristic of the goods or services on offer.

6. ‘SKIP THE WAIT’ has the minimum degree of distinctive character required for being eligible as a trade mark and is therefore capable of distinguishing the goods of the applicant from those of other companies.

7. EUIPO has already accepted the mark ‘SKIP THE TRIP’ which is on all fours with the present case.

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).

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 (3D.), EU:C:2004:258, § 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’ (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).

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).

In the present case, the Office considered that the objectionable goods and services covered by the mark applied for comprise both mass consumption goods and services and specialised goods and services which are mainly aimed at both average consumers and a professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will range from average (that of the average consumer who is reasonably well-informed and reasonably observant and circumspect) to high.

1. As regards the sign applied for, it is agreed with the applicant that since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D.), EU:T:2001:226, § 59).

The sign for which protection is sought consists of the expression ‘SKIP THE WAIT’. As to the applicant’s claim that the meaning of the mark does not directly relate to the goods and services, it is noted that the combination of the words ‘SKIP’, ‘THE’ and ‘WAIT’ is not considered unclear or meaningless, but merely a combination of three common words, each of which maintains its own separate meaning and written form. The expression resulting from the combination of the abovementioned components does not create an impression which is sufficiently far removed from that produced by the elements ‘SKIP’, ‘THE’ and ‘WAIT’. Moreover, this kind of combination of words is in conformity with the rules of syntax and grammar of the English language and is not unusual in the structure of that language.

Bearing in mind the definitions and analysis already provided on 30/06/2016 the relevant consumer will understand the expression as a meaningful expression: ‘omit a waiting period’. In this respect, it is noted that contrary to what is claimed by the applicant, the Office considers that there are no particular reasons for interpreting the combination at hand differently, for example as ‘skip the weight’.

From the above it is evident that the mark applied for merely consists of ordinary words with no addition, subtraction or alteration of the letters that is arbitrary, fanciful or imaginative and that might render the sign, as a whole, capable or distinguishing the holder’s goods from those of others.

The combination of these elements, which are not distinctive per se, will not change the consumer’s perception. 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 intended for omitting/reducing waiting periods or avoiding delays, that the goods on offer operate at high speed or respond quickly (without delay) or that the services are express services or services provided or done faster than usual or are provided without customers having to wait. The message of the slogan applied for is immediately understandable and does not require any further interpretation or analysis on the part of the relevant public, which will immediately associate the sign with a promotional message.

Such a claim (e.g. skipping waiting time, highlighting the high speed, quick access/response of devices, or the fast provision of services) is undoubtedly attractive from a commercial point of view and immediately gives information about a clear advantage. It cannot be denied that such a claim represents a relevant quality desired by the relevant consumer, who for practical reasons would consider it highly beneficial to be able to rely on the provider of the goods and services and on the quality of these goods and services.

In this respect, it should also be recalled that for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods or services relating to their market value which, whilst not specific, 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 goods or services (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

From the above, it is clear that ‘SKIP THE WAIT’ is not to be rejected merely because it is a promotional slogan, but rather because it is a banal slogan, with a clear and unambiguous laudatory meaning. Apart from its promotional meaning, it does not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the goods and services at issue (see also 12/07/2012, C-311/11 P, Wir Machen das Besondere einfach, EU:C:2012:460, § 33-34; 06/06/2013, T-515/11, Innovation for the real world, EU:T:2013:300, § 53, confirmed by order of 12/06/2014, C 448/13 P, Innovation for the real world, EU:C:2014:1746 § 36-37).

As regards the applicant’s claim that the mark is syntactically original and uses the words to create an overall impression that has a degree of distinction, it should be reminded that:

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

As regards the applicant’s argument that contrary to the judgment of the General Court in the case ‘MEHR FÜR IHR GELD’ the combination at hand is not used in everyday speech to designate the goods and services on offer, it is reminded that:

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.

(15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 88).

2. Notwithstanding that the applicant’s specification covers a wide range of goods and services it cannot be denied that the claim that the goods and services on offer allow omitting, reducing or contribute to reduce waiting periods or avoiding delays immediately gives information about a clear advantage applicable to all these goods and services. As already explained, the relevant consumer can clearly understand that the goods on offer operate or respond quickly (e.g. at high speed, without delay or in real time) (e.g. as regards all sort of apparatus and instruments, software or electronic devices) or that the services in Classes 42 and 43 are provided or done faster than usual or that customers do not need to wait as long as usual. It cannot be denied, as already indicated above, that such a claim represents a relevant quality desired by the relevant consumer.

This is also applicable to the goods specifically indicated by the applicant. Even if the downloadable software for the restaurant industry for managing, automating and tracking wait lists, seating, table status, reservations, marketing, customer relationship management, data management and analytics in real time and across various chronological periods and for notifying, tracking and interacting with users and customers regarding wait lists, seating, table status, reservations, marketing and customer experience and customer relationship management applied for does not make reference to the omission of waiting periods, the relevant consumer will clearly understand that by using these goods they will avoid/save waiting or will have to wait less (e.g. by viewing progress in waitlists, by getting warnings, etc.). From the above, it cannot be reasonably maintained that ‘SKIP THE WAIT’ is meaningless with regard to the goods and services applied for.

3. As regards the applicant’s claim that the use of three short, monosyllabic words in the mark give it a visually and phonetically striking appeal and renders it memorable to the consumer, it is to be noted that the fact that the sign at issue may have some unusual linguistic features does not automatically mean that it is distinctive.

In the present case, the Office finds that the mere fact that the mark is composed of three common (even if short and monosyllabic) words does not enable the relevant public to perceive the mark as an indication of commercial origin and distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin. Therefore, the Office concludes that the mark is devoid of any distinctive character.

In this respect the Office also refers to the decision of the Second Board of Appeal of 22/06/2004 (R 118/2003-2, § 14) concerning the trade mark application for ‘WHITENING MULTI-ACTION’ where it was stated that:

often, promotional messages printed on products or their packaging are not written in ordinary, grammatically correct prose. Space is limited, so messages are necessarily elliptical. Short, punchy messages are in any case more likely to attract the attention of the consumer, who may not have the time or the inclination to read long texts. Hyperbole is prevalent; the consumer expects nothing less. Loose syntax is everywhere. Phonetic misspellings are commonplace, at least in the English-speaking world.

4. From the above, it is irrelevant that the average consumers do not normally use ‘SKIP THE WAIT’ to request the goods and services applied for, since the expression may still be perceived by the relevant consumer as a meaningful expression (providing relevant information about the goods).

Even if the alternative ways of designating the goods and services were more appropriate or more directly descriptive of the goods and services, that circumstance would not render Article 7(1)(b) CTMR inapplicable, as competitors might still be interested in using a still appropriate term for designating the goods and services in question (see decision of 30/09/1998, R 57/1998-1, ‘Foodsaver’, § 17-18).

5. For the reasons set out above, it cannot be reasonably maintained that the semantic content of the sign ‘SKIP THE WAIT’ indicates in no way the market value of the goods and services or their characteristics and that it will enable the relevant consumers to identify the commercial origin of such goods. In this respect it is noted that:

a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way (See Decision of the Second Board of Appeal of 22 September 1998, in Case R 36/98-2, The Oilgear Company, ‘OILGEAR’, paragraph 10), or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation.

(See also decision of 27/11/1998, R 26/1998 - 3 – ‘NETMEETING’, § 24.)

The Office disagrees that the slogan at issue is vague and indirect for the goods and services claimed, since its message is clear and direct, as already described in this decision. As already indicated above, the mark 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 (judgment of 12/07/2012, C-311/11 P, ‘WIR MACHEN DAS BESONDERE EINFACH’, paragraphs 32-35). It will not be perceived by the relevant public as an indication of the commercial origin of the goods and services concerned and therefore a similar treatment to that given to the slogan ‘Vorsprung durch Technik’ is considered not justified.

6. As regards the applicant’s claim that the sign applied for is endowed with the minimum distinctive character, it must be reminded that:

in order to have the minimum degree of distinctiveness required under Article 7(1)(b) EUTMR, the mark concerned must simply appear prima facie capable of enabling the relevant public to identify the origin of the goods or services covered by the European Union trade mark application and to distinguish them, without any possibility of confusion, from those of a different origin.

(13/06/2007, T‑441/05, I, EU:T:2007:178, § 55.)

Owing to the message transmitted by the sign, which merely incites consumers to buy the goods and services on offer, the sign certainly fails to create the impression that it is an indication of origin in the mind of the relevant consumer, who will first see ‘SKIP THE WAIT’ as no more than advertising blurb for the goods and services for which protection is sought (see decision of 25/02/2000, R 676/2000-2, APPLIED CHEMISTRY, CREATIVE SOLUTIONS, § 12 13).

Consequently, the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it merely as an advertising blurb and a promotional incitement. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and services and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) EUTMR.

As stated by the General Court,

the fact remains that if an applicant claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for the applicant to provide specific and substantiated information to show that the trade mark applied for has either intrinsic distinctive character or distinctive character acquired through usage.

(03/07/2013, T 236/12, Neo, EU:T:2013:343, § 62).

7. Finally, as regards the applicant’s claim that EUIPO has accepted EUTM Nº 14 326 417 ‘SKIP THE TRIP’ for goods and services in Classes 9, 16, 35, 38, 39, 41 and 42, the Office points out that the validity of a decision that is inherently well-reasoned and has been made in accordance with the EUTMR cannot be called into question on the basis of the fact that less restrictive criteria were applied in other cases. According to settled case‑law,

decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice.

(15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of 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).

This has been confirmed in recent case law:

It must be recalled that EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. Having regard to those two principles, EUIPO must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

(Judgment of 21/05/2015, T-203/14, ‘Splendid’, paragraphs 47-60, emphasis added).

Indeed, the Office must take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. The way in which those principles are applied must, however, be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. Such an examination must therefore be undertaken in each individual case (judgment of 03/12/2015 T-628/14, ‘FORTIFY’ paragraphs 33-37 and judgment of 25/09/2015 T-591/14, ‘PerfectRoast’ paragraphs 65 and 57).

The Office considers that the case cited by the applicant does not appear to be relevant to the registrability of the present case, since the sign is not identical to ‘SKIP THE WAIT’. Moreover, in the cited case, the message that the mark conveys is not as straightforward and unequivocal with regard to the goods and services it covers as in the case under analysis and, therefore, in that case, a special effort or mental process is required. As a consequence, the referenced case cannot be considered to be similar to the present application and a different treatment is justified.

In this respect it is also worth noting that EUTM nº 11 578 499 ‘WHY WAIT?’ (for goods and services in Classes 9, 38, 41, 42) and EUTM nº 13 783 717 ‘WAITLESS’ (figurative mark) (for goods and services in Classes 9, 35, 38, 42) amongst others, have also been refused.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 15 435 001 is hereby rejected for all the goods and services claimed.

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.

Isabel DE ALFONSETI HARTMANN