Refusal of application for a European Union trade mark

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

Alicante, 21/02/2017

DE SIMONE & PARTNERS S.p.A.

Via Vincenzo Bellini, 20

I-00198 Roma

Italy

Application No:	015882822
Your reference:	ACM/frg-130940
Trade mark:	WHAT’S NEW IN COTTON
Mark type:	Word mark
Applicant:	COTTON COUNCIL INTERNATIONAL 1521 New Hampshire Avenue, N.W. Washington, D.C. 20036 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24/10/2016 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 20/12/2016, which may be summarised as follows:

1. ‘COTTON’ is the only word of the mark that might not be distinctive vis-à-vis the services applied for. The applicant is willing to propose a formal disclaimer with regard to this word.

2. The mere fact that the mark can be regarded as an advertising slogan does preclude it from having sufficient distinctive character. Slogans have to be examined just like any other kind of trademark.

3. The USPTO has accepted for registration the mark now applied for and a figurative trade mark ‘WHAT’S NEW’ also for services in Class 35. The applicant refers to the basic rule of Article 6quinquies of the Paris Convention which states that every trade mark duly registered in a country of origin shall be protected in another member country in the way it is.

4. EUIPO has accepted a number of marks including the words ‘WHAT’S NEW’ and protecting services in Class 35.

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).

1. The applicant wishes to disclaim the word ‘COTTON’ in order to overcome the barrier to registration. In this respect it is noted that pursuant to Regulation No 2015/2424 amending Regulation No 207/2009 on the Community trade mark, it is no longer possible to file a disclaimer to indicate that protection is not requested for a specific element of a mark.

Furthermore, it is worth mentioning that former Article 38(2) EUTMR was designed to eliminate doubts over the existence of particular non-distinctive elements inside a trade mark whose inclusion may give rise to uncertainty over the scope of protection of the trade mark as a whole. However, in this case the objection to the mark is not over the existence of a word or words within the mark, but to the mark as a whole, to the concrete word combination itself. Therefore, the disclaimer proposed by the applicant could not justify the registrability of the composite sign ‘WHAT’S NEW IN COTTON’ even if disclaimers were still accepted.

2. As regards the second argument, it is agreed with the applicant that 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, as rightly stated by the applicant, 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).

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).

Furthermore, 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).

The distinctive character of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T‑348/02, ‘Quick’, paragraph 29).

In the present case, the Office considered that the objectionable services covered by the mark applied for are specialised services and are mainly aimed at a professional public.

The sign for which protection is sought consists of the words ‘WHAT’S NEW IN COTTON’. Bearing in mind the definitions and analysis already provided on 24/10/2016 the relevant consumer will understand the expression as a meaningful one: which things have been recently created in the area of cotton (cloth made from the white fibres of a plant called a cotton plant) and cotton textiles.

As to the applicant’s claim that the meaning of the mark does not directly relate to the services, it is noted that the combination of the words ‘WHAT’S’, ‘NEW’, ‘IN’ and ‘COTTON’ is not considered unclear or meaningless, but merely a combination of four common words, each of which maintains its own separate meaning and written form, as confirmed by the definitions and explanations provided in the provisional refusal.

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 applicant’s services from those of others.

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 words ‘WHAT’S’, ‘NEW’, ‘IN’ and ‘COTTON’. 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.

The combination of these elements, which are not distinctive per se, will not change the consumer’s perception. The relevant public will immediately grasp the banal message of the slogan applied for and will understand that the services applied for (promoting the sale of cotton and products of others made in whole or in part of cotton) relate to the latest creations in the field of cotton and cotton products. The message of the slogan ‘WHAT’S NEW IN COTTON’ 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 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 services and on the quality of the services on offer.

In this respect, it should be further emphasized that ‘WHAT’S NEW IN COTTON’ 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 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).

Owing to the message transmitted by the sign, which merely incites consumers to hire the services, 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 ‘WHAT’S NEW IN COTTON’ as no more than advertising blurb for the 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 a 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.

3. As regards the acceptance of the same mark by the USPTO referred to by the applicant, it is recalled that 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).

As regards Article 6quinquies, it is noted that the wording of this article, as rightly stated by the applicant, reads as follows:

‘Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. […].’(Emphasis added)

The referred reservations (or exceptions) are explicitly indicated in Article 6quinquies B.2 which reads as follows:

‘Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed.’ (Emphasis added)

According to the reservations stated in Article 6quinquies B.2., therefore, registration of a trade mark must be refused if the trade mark lacks distinctive character. This is the situation in the present case.

4. Finally, as regards the applicant’s claim that EUIPO has accepted a number of similar marks including the words ‘WHAT’S NEW’ for services in Class 35, 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 none of the cases cited by the applicant appears to be relevant to the registrability of the present case, since the signs are not identical to ‘WHAT’S NEW IN COTTON’. Moreover, both EUTM 575 517 ‘whatsnew.com’ and EUTM nº 8 741 001 ‘WHAT’S NEW’ protect figurative marks respectively consisting of the following representations and . The cited cases, therefore include additional figurative elements, have a different composition and structure and/or the message that the marks convey is not as straightforward and unequivocal with regard to the goods and services they cover, as in the case under analysis and, therefore, in those cases, a special effort or mental process is required. As a consequence, the referenced cases 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 14 541 866 ‘WHAT'S NEXT’, EUTM nº 14 541 874 ‘WHAT IS NEXT’, EUTM nº 13 780 937 ‘WHAT WILL YOU CREATE?’, EUTM nº 13 096 177‘WHAT ARE YOU WAITING FOR’ and EUTM nº 12 613 964 ‘WHAT SCIENCE CAN DO’ amongst others, have also been refused and other cases such as EUTM nº 12 896941 ‘WHAT’S NEWS’ and EUTM nº 14 590 855 ‘WHAT’S BEEF’ were objected to before being withdrawn.

Furthermore, like the previous EUTMs, the sign applied for was subject to the rigorous examination required under the EUTMR according to its own merits. Those merits might have been different at the time of filing. Following the judgment of 06/03/2003, T-128/01, ‘Grille’, paragraph 46, the previously registered trade marks could have enjoyed, at the time of filing, an unusual character that the mark applied for, due to the evolution of the market and/or perception of the relevant public will not enjoy (emphasis added).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 15 882 822 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.

Isabel DE ALFONSETI HARTMANN