Refusal of application for a European Union trade mark

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

Alicante, 29/03/2017

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

UNITED KINGDOM

Application No:	15 686 215
Your reference:	T106120EM/IAS/ks
Trade mark:
Mark type:	Figurative mark
Applicant:	Mattress Firm, Inc. 10201 South Main Street Houston Texas 77025 UNITED STATES OF AMERICA

1. Summary of the facts

The Office raised an objection on 27/09/2016, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for was devoid of any distinctive character in relation to some of the goods and services for which registration was sought, for the reasons set out in the attached letter.

2. Observations of the applicant

The applicant submitted its observations within the extended time limit, on 25/01/2017, which may be summarised as follows:

• The mark applied for, ─ , ─ cannot be considered descriptive of any goods or services listed in the notice of provisional refusal, since it consists of an unusual juxtaposition of words. Referring to a ‘mattress firm’ is not customary in the language of trade or in common parlance. In support of this argument, the applicants refers to 20/09/2001, C-383/99 P, BABY-DRY, EU:C:2001:461 and to 05/04/2001, T-87/00 Easybank, EU:T:2001:119).

• The objection was raised for the goods mattress pads, mattress toppers, and related bedding products, mattress covers ‘in relation to which the adjective “firm” would not be an accurate or desirable descriptive’. The same is applicable to retail services applied for in Class 35.

• There is no ‘need’ or ‘general interest’ to leave the expression ‘MATTRESS FIRM’ free for use by other traders.

• The words constituting the mark are represented as one single word, in a stylised form together with a figurative element. The combination of all these elements makes the mark, taken as a whole, sufficiently distinctive.

• With regard to the Office’s finding that the mark would be perceived as a promotional laudatory message, it is submitted that ‘“firm” mattresses are arguably no longer the gold standard in the industry in the question, as it is recognised that they are not appropriate for everyone. There is a wide selection of different types of mattresses available on the market, including coil sprung mattresses, latex mattresses, memory foam mattresses, orthopaedic mattresses, etc...’.

• The UK Intellectual Property Office accepted for registration an identical mark (series of 2) for identical goods and services; the UK IPO reviewed the application and decided to waive the non-distinctiveness/descriptiveness objection after a hearing with a senior IPO official who agreed that ‘lexical invention and juxtaposition in the term “MATRESS FIRM” ensured that the consumer would find something unusual about the marks when faced with them on a mattress. When considering the overall get-up as well, … the marks do fulfil the necessary function and are capable of distinguishing the goods of the Applicant.’

3. Decision

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.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T-322/03, Weisse Seiten, EU:T:2006:87, § 110).

Under Article 7(1)(b) EUTMR, the registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product/service in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product/service from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

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, Merz & Krell, 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).

However, a sign which fulfils functions other than that of a trade mark 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 Solution, EU:T:2002:301, § 20; T-523/09, WIR MACHEN DAS BESONDERE EINFACH, EU:T:2011:175, § 31 confirmed by 12/07/2012, C-311/11 P, EU:C:2012:460).

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

The Office has re-considered the mark applied for in accordance with the abovementioned case-law, and, after giving due consideration to all of the applicant’s arguments, maintains that it is not capable of functioning as a badge of the commercial origin of the goods and services listed in the notice of provisional refusal.

Regrading the applicant’s first argument, the Office confirms that the expression ‘MATTRESS FIRM’ is not grammatically correct. However, the Office does not consider that the ungrammatical arrangements of the words ‘MATTRESS' and ‘FIRM’ renders this mark non-descriptive, and, on that account, distinctive. In this regard, the Office emphasises that the expression ‘MATTRESS FIRM’ does not require any mental effort on the part of the relevant consumers to understand the message conveyed, notwithstanding the fact that the individual words are composed in a way which diverges from the rules of English grammar and syntax, since its semantic meaning, taken as a whole, has remained unchanged (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 29-32; 23/01/2001, Vacation direct, R 0033/2003-3). As already submitted in the notice of provisional refusal, an adjective ‘firm’ is commonly used to designate a special type of mattress, which is, inter alia, defined, as follows:

(image/information extracted on 27/03/2017 from http://www.mattressplacestore.com/differences.html )

As a result, average consumers are more than familiar with firm mattresses featuring the above described characteristics.

In light of all the above, the Office reiterates that the mark applied for consists essentially of the expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding the type and characteristic of the goods for which registration is sought, namely mattresses, as well as regarding the intended purpose of the goods that are designed to be used for, or with, a mattress, such as mattress pads, mattress toppers, etc., (so-called auxiliary goods), to which the applicant specifically referred. As regards the retail services concerned, the mark immediately informs consumers that they relate to firm mattresses and related auxiliary goods.

Furthermore, the Office does not find the expression ‘MATTRESS FIRM’ to be comparable with the mark ‘BABY-DRY’. In the Office’s view, it would be the case, if registration was sought for a word combination such as ‘NAPPY REUSABLE’ designating a type of babies’ nappies for which the registration of the mark ‘BABY-DRY’ was sought. The same is applicable to the mark ‘easybank’, since it does not consist of the expression such as ‘easy bank service’ or ‘online bank service‘, describing a particular type and/or characteristic of a banking service.

The applicant points out that there is no ‘need’ or ‘general interest’ for the expression ‘MATTRESS FIRM’ to be used by other traders to describe their goods or services. On this point, it suffices to state that ‘… the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, §  39).

According to the applicant, the mark is sufficiently distinctive due to the fact that the words are represented as one single word in a stylised form with a figurative element. The Office, contrary to the applicant, does not consider that the lack of a space between the words in question would preclude the relevant public from perceiving the expression ‘MATTRESS FIRM’ as consisting of two words. As regards the stylisation and the figurative element to which the applicant refers, namely the ‘swoosh’ underlining the word ‘FIRM’, the Office does not find these elements to be capable of creating in the consumer’s mind an immediate and lasting memory of the mark by diverting their attention from the descriptive and promotional message conveyed by the expression ‘MATTRESS FIRM’. Stylised word elements in a mark are commonly and widely used in advertising goods and services and are normal in the eyes of the consumers. In addition, the ‘swoosh’ is so minimal in nature that it is hardly noticeable and memorable. Accordingly, the Office reiterates that the figurative elements, taken as a whole, do not possess any feature that allows the mark to fulfil its essential function in relation to the goods and services in question.

The applicant disputes the promotional laudatory character of the mark highlighting, inter alia, that ‘“firm” mattresses are arguably no longer the gold standard in the industry in the question…’ The Office admits that mattresses come in a variety of types, sizes and trims and offer an extensive list of comfort and support options. However, the fact remains that lot of people still prefer firm mattresses to any other type thereof, for a number of reasons, including health ones. In support of this argument, the Office points out that even the simple “Google” search reveals that deciding factor for many people when purchasing mattresses is whether a mattress is firm or not, as depicted below:

(information extracted on 27/03/2017 from https://www.sitnsleep.com/blog/index.php/what-are-the-benefits-of-a-firm-mattress/ )

(information extracted on 27/03/2017 from http://www.dailychump.org/how-can-a-firm-mattress-benefit-your-health/ )

(information extracted on 27/03/2017 from http://sleepopolis.com/best-mattress/best-firm-mattress/ )

Accordingly, the Office reiterates that the relevant public when encountering the mark in relation to the goods in question and related retail services would perceive it merely as conveying a descriptive, promotional laudatory message. It would only inform all potential consumers including those suffering from back pain or join pain, that the applicant’s goods are firm mattresses or related auxiliary goods, designed for healthy sleeping, as well as that retail services applied for relate to such mattresses and related auxiliary goods, unlike competitors’ goods and services of the same kind that are offered elsewhere.

The applicant refers specifically to their UK national registration of the figurative mark ‘MATRESS FIRM’ (UK 00003176346). The Office does not find the cited registration persuasive, for the reasons briefly indicated below:

According to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

In addition, it should be emphasised the UK national registration No UK00003176346 of 25/07/2016 relates to the figurative mark that is protected, inter alia, in a combination of red and yellow, as depicted below:

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for a European Union trade mark No 15 686 215 is hereby refused for the following goods and services:

Class 20 Beds, mattresses, mattress frames, mattress foundations, box springs, mattress pads, mattress toppers, and related bedding products.

Class 24 Mattress covers.

Class 35 Retail store services in relation to beds, mattresses, mattress frames, mattress foundations, box springs, mattress covers, mattress pads, mattress toppers.

The application may proceed for the remaining goods and services for which registration is sought.

4. Right to appeal

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 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.

Mirjana PUSKARIC