Refusal of application for a European Union trade mark

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

Alicante, 16/12/2016

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

REINO UNIDO

Application No:	015520208
Your reference:	T105267EM/IAS/ks
Trade mark:	CONNECTING MORE HEARTS
Mark type:	Word mark
Applicant:	St. Jude Medical, Inc. One St. Jude Medical Drive St. Paul Minnesota 55117 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 29/06/2016 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 29/08/2016, which may be summarised as follows:

1. There is an inherent problem with examination whereby EUIPO examiners rely heavily on dictionary definitions of the words which comprise a mark, with little or no consideration to the mark as a whole. The meaningful expression cited by the examiner in the notification letter is nonsensical and highlights the blind reliance on dictionary definitions.

2. The case Mehr für ihr Geld is cited, which does not at all seem pertinent to the present case given that the examiner comments that the market value statement was not specific. The mark does not convey a market value message. The examiner goes on to state that mark would be seen as a promotional laudatory message. We fail to see what would be deemed laudatory about the mark. The applicant considers the mark opaque and consumers would not be able to gain any real and meaningful information regarding the services by virtue of the mark or its constituent elements.

3. No evidence has been produced by the Office to indicate that consumers would understand the combination to be a meaningful expression. The mark is impenetrable, and would not provide consumers with any information about the services, their characteristics, or the target audience. The mark is a play on words. The word “heart” could be seen as a reference to the physical organ of the body, which is subject of the cardiac condition, or it could be seen as a symbolic reference to someone’s emotional state and wellbeing. The combination would require an interpretative effort by the relevant public to try and understand what meaning the mark might have.

4. In relation to the specific services covered by the application the combination would be perceived by consumers as having trade origin significance. It is simply too many steps far removed from the unusual interpretation made by the Office. The mark would allow consumers to identify the services of the applicant from those of other traders.

5. The mark applied for is distinctive in relation to the goods for which registration is sought. We do not consider the objections under Article 7(1)(b) EUTMR to apply in any part of the Community. As a result, the application should not be subject to an objection under Article 7(2) EUTMR.

6. A non-exhaustive search of the European Union Trade Mark Register revealed various other registration containing the prefix element “CONNECTING”.

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).

The applicant argues that the meaning given to the mark by the Office is nonsensical and that there is a reliance on dictionary definitions that do not take into consideration the mark as a whole. The Office provides for dictionary definitions in the notification of objections to trade marks in order to show applicants that the interpretation of the meaning of the mark is not subjective, but rather objective citing as well the dictionary whence the meaning has been taken.

In the present case, ‘CONNECTING MORE HEARTS’ clearly means that the applicant is connecting (either in person or through the internet) more hearts, i.e. patients of VAD, with other patients or caregivers. The laudatory use of the word ‘MORE’ in the mark promotes the fact that even ‘more’ people/hearts will be connected, or that the applicant connects ‘more’ people/hearts than other networks. The mark is a customer service statement which merely highlights that the applicant is capable of connecting more patients/hearts to the network which, of course, is important information for the relevant public looking for such services, but which does not indicate trade origin.

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 the present case, the sign does not fulfil the function of acting as an indication of the commercial origin of the services applied for as any medical company could claim to be ‘connecting more hearts’.

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).

Although the applicant argues that the mark is a play on words, 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 services, 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).

The applicant also states that no evidence has been produced by the Office to indicate that consumers would understand the combination to be a meaningful expression. Apart from the objective and common sense meaning of the slogan, it is on the basis of acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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).

Moreover, ‘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).

In general, there is nothing about the expression ‘CONNECTING MORE HEARTS’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28). Consequently, taken as a whole, the mark applied for – ‘CONNECTING MORE HEARTS’ – is devoid of any distinctive character and is not capable of distinguishing the services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

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 015520208 is hereby rejected for all the 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.

Herbert JOHNSTON