Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 10/10/2017

Margaret Nunes da Silva

via S. Giacomo in Monte, 18/3° piano – int. 11

I-34137 Trieste

ITALIA

Application No:	016254005
Your reference:	MNS-095
Trade mark:	The Bridge to Better Brands
Mark type:	Word mark
Applicant:	Sustainable Life Media, Inc. 608 Burlingame Ave. Burlingame California 94010 ESTADOS UNIDOS (DE AMÉRICA)

This letter cancels and replaces the Office’s letter of 26/09/2017. We apologise for any inconvenience caused.

The Office raised an objection on 30/01/2017 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 29/07/2017, which may be summarised as follows:

1. The mark ‘The Bridge to Better Brands’ as a whole does not have an obvious and direct meaning in the context of the services in Classes 35 and 41. The mark is not descriptive but suggestive. It requires imagination, thought and perception to make a connection between the mark and the nature of the services in question.

2. There are no entries in dictionaries for the expression ‘The Bridge to Better Brands’ and the expression is not used in a descriptive manner on websites. The fact that the words contained in the mark may indirectly refer to the characteristics of certain services does not render the mark as a whole descriptive for the services to which the objection has been raised.

3. Registration is sought for several services in two different classes, Classes 35 and 41. The expression ‘The Bridge to Better Brands services’ cannot be descriptive of all these services.

4. The mark, when considered as a whole, is capable of distinguishing the services for which registration is sought from those of other undertakings, since the Office has considered the mark only in part, focusing on the words ‘Better Brands’, which are allegedly descriptive. The element ‘The Bridge to’ in the mark makes it an indication of the commercial origin of the services concerned.

5. The fact that the mark has been used shows that the mark is distinctive and has the minimum level of distinctiveness required for registration.

6. An internet search shows that the mark is used only by the applicant. No other company uses an identical mark in relation to any of the services in question.

7. There are previous EU trade mark registrations covering services in Classes 35 and 41 that closely resemble the mark at issue.

8. The applicant has been using the mark ‘The Bridge to Better Brands’ throughout the EU since November 2012 and the mark has acquired distinctiveness through the extensive use made of it.

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.

The applicant has requested the opportunity to make further submissions if the objection is maintained. This request is not granted, since another round of submissions would unnecessarily lengthen the examination proceedings and would constitute discrimination against other applicants, who are usually granted one round of submissions. In practice, the only reason to lengthen examination proceedings is when time extensions are granted when this is appropriate under the circumstances pursuant to Rule 71 EUTMIR after the sending of the Office’s first objection letter.

The Office considers that in the present case an extension of time is not appropriate under the circumstances. The Office’s refusal to grant further time does not contravene Article 75 EUTMR, as 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).

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 the present case, the services to which the objection has been raised are services for mass consumption and specialised, and they mainly target both average consumers and a professional public. In view of the nature of the services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect for some and high for others.

Moreover, since the mark applied for is composed of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

Despite the applicant’s arguments, the Office remains of the opinion that the expression ‘The Bridge to Better Brands’ conveys a clear laudatory and promotional message about the services to which the objection has been raised, namely that the services, such as business consulting, education and organising related events in Classes 35 and 41, provide the consumers with a way to build, manage and/or promote their brands to achieve better brands. That message will not be perceived as an indication of commercial origin in relation to the services in question (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 19; 13/01/2011, C-92/10 P, Best Buy, EU:C:2011:15).

The applicant argues that the mark ‘The Bridge to Better Brands’ as a whole does not have an obvious and direct meaning in the context of the services in question and that there are no entries in dictionaries for the expression.

However, the Office reaffirms that the mark applied for consists of ordinary English words presented in a sequence that is intellectually meaningful and, therefore, the relevant consumers, in particular the professional public, would easily understand the meaning of the expression in the context of the services in Class 35 and 41, as explained above and in the Office’s objection letter. Furthermore, dictionaries cannot contain all possible word combinations, and the fact that the expression is not found in the dictionary does not mean that it is distinctive for the goods or services for which registration is sought.

As regards the applicant’s argument that the mark is not descriptive but suggestive, the Office did not state in its objection letter that the mark was descriptive of the services in question, so this argument is irrelevant to the case. It should be recalled that the Office raised an objection pursuant to Article 7(1)(b) EUTMR because it found that the trade mark applied for is devoid of any distinctive character.

The applicant argues that the fact that the mark has been used shows that the mark is distinctive and has the minimum level of distinctiveness required for registration.

However, the mere fact that the mark in question has been used in the relevant market does not automatically mean that the mark is sufficiently distinctive to be registered as an EU trade mark.

As regards the applicant’s argument that no competitors make use of the same combination, ‘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).

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; 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).

Consequently, despite the applicant’s arguments, the Office remains of the view that the mark, considered as a whole, does not qualify as a distinctive trade mark.

However, the Office notes that the applicant claims that the mark ‘The Bridge to Better Brands’ has acquired distinctiveness through the use made of it since 2012.

In support of the application, the applicant submits the following evidence to demonstrate that the mark has acquired distinctiveness through its use:

• An extract from the applicant’s website http://www.sustainablebrands.com/ showing its events and related services.

• The results of Google search for the words ‘The Bridge to Better Brands’.

• Affidavits by the following customers of the applicant: Virginie Helias, Vice President of Global Sustainability of P&G; Inge Huijbrechts, Vice President of Rezidor Hotel Group BVBA/SPRL; Rasmus Nikolai Due Skov, Head of Group Sustainability of Dong Energy; Dirk Voeste, Vice President of BASF SE; and Claus Stig Pedersen, Head of Corporate Sustainability and EMEA Public Affairs of Novozymes A/S. They declare that the witnesses are familiar with the mark ‘The Bridge to Better Brands’ and recognise the mark as a brand belonging to the applicant.

• A declaration by KoAnn Skrzyniarz, CEO of Sustainable Life Media Inc. This states that the mark at issue has been used in the European Union since November 2012, that the applicant uses the mark to market, advertise and promote its services in the EU through the applicant’s website, that it spent USD 189 388 on the promotion and provision of its events between 2012 and 2017, and that annual EU page views of the applicant’s website, on which the mark appears, increased from 77 768 in 2012 to 318 598 in 2016.

The applicant claims that the trade mark ‘The Bridge to Better Brands’ has acquired distinctiveness through its use for the services for which registration is sought.

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1) (b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) EUTMR, which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (10/11/2004, T-396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C-25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C-299/99, Remington, EU:C:2002:377, § 63).

Since the Office maintains that the mark ‘The Bridge to Better Brands’ is devoid of distinctive character for the English-speaking public, the applicant therefore has to prove that acquired distinctiveness existed for this public, that is, the public in the UK,

Ireland and Malta (but also Denmark, Finland, the Netherlands, Germany, Sweden and Cyprus, since basic English can be understood in these countries; 22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, § 50; 09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26), at the moment of filing the application on 16/01/2017, for all the contested services.

The applicant claims that it is clear from the evidence listed that through extensive, high-profile and successful use of the mark, ‘The Bridge to Better Brands’ has come to be recognised by consumers as denoting the applicant’s services.

It should be recalled that Article 7(3) EUTMR not only requires intensive use of the sign by the applicant, but goes further than that. The result of the use made of the sign must be such that the sign, originally incapable of performing the function of indicating origin, which is the central function of a trade mark, now fulfils this function as a result of that use. The identification by the relevant public of the services as originating from a given undertaking must be the result of the use of the mark as a trade mark, which makes it capable of distinguishing all the services concerned from those of other undertakings. This must be assessed in relation to the contested services in respect of which registration is applied for and by assessing the evidence of, inter alia, the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (18/06/2002, C-299/99, Remington, EU:C:2002:377, § 59, 60, 64).

While the Office appreciates that the applicant has submitted evidence demonstrating use of the mark ‘The Bridge to Better Brands’ in support of its claim of acquired distinctiveness, the Office is of the view that this evidence alone fails to demonstrate adequately that the mark in question has in fact acquired distinctiveness through its use for all the contested services in Classes 35 and 41.

The Office finds that the evidence submitted does not fully permit the assessment of the proportion of the public that, because of the mark, would identify the services at issue as originating from a particular undertaking. In summary, the limited evidence submitted, as listed above, does not in itself permit the assessment of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the applicant in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the services as originating from the applicant, etc.

In conclusion, the Office finds that the applicant has not submitted sufficient evidence to demonstrate a clear picture of the intensity of the use and degree of recognition of the mark among the relevant public in the relevant territories of the European Union. In particular, it has not been established that these consumers identify the contested services as originating from a particular undertaking as a result of the intensive use in the relevant market of the sign to distinguish the commercial origin of the services at issue.

In this regard, in view of the minimal evidence submitted by the applicant and in the absence of more information or further solid evidence, the documentation produced cannot be considered sufficient to establish acquired distinctiveness through use.

Accordingly, the claim that the mark applied for has acquired distinctive character as a consequence of the use made of it in accordance with Article 7(3) EUTMR has not been substantiated and must therefore be dismissed.

Consequently, 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 16 254 005 is hereby rejected for the following services:

Class 35 Organizing business expositions for the purpose of bringing awareness to the need for a global transformation to a sustainable economy, showcasing sustainable businesses and sustainable business solutions, and providing an opportunity for business leaders to interact with and learn from each other; organizing of business competitions; business management consulting; business networking of peer to peer learning groups of business leaders; Business consulting and information services; Brand image consulting services; Business consulting in the consumer products industry; Business consulting service that provides transformational strategies to companies wishing to move towards sustainability and socially responsible business practices; Business marketing consulting services; Business organization consulting; Corporate image consulting services; Business consulting services, namely, providing assistance in development of business strategies and creative ideation; Consultancy services regarding business strategies; Promoting the goods and services of others by providing hypertext links to the web sites of others; Membership club services, namely, providing on-line information to members in the fields of branding, business development, business marketing, and marketing; membership club services, namely, providing on-line information in the field of environmental responsibility management, namely, advising businesses and individuals on issues of environmental impact, conservation, preservation and protection, and economic analysis for business purposes, making environmentally conscious purchasing decisions, marketing, advertising, brand awareness, brand management, customer relations, stakeholder engagement, supply-chains, advertising and marketing provided by means of indirect methods of marketing communications such as social media, promoting the interests of people concerned with environmental sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, business innovation, corporate consciousness, corporate governance, corporate social responsibility, and business.

Class 41 Education services, namely, providing workshops, seminars and conferences in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supply-chains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business; providing e-mail newsletters in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supplychains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business; on-line non-downloadable publications in the nature of electronic newsletters in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supplychains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business. conducting on-line classes in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supplychains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business; on-line journals, namely, microblogs featuring information in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supply-chains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business; Peer to peer coaching services in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supply-chains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business. Membership club services, namely, providing training to members in the field of environmental responsibility, regulation and compliance, making environmentally conscious purchasing decisions, marketing, advertising, packaging, brand awareness, brand management, brand protection, product design, communications, customer relations, stakeholder engagement, supply-chains, social media, sustainability and sustainability trends, consumer insights, consumer trends, public relations, best practices, socially responsible investing, innovation, corporate consciousness, corporate governance, corporate social responsibility, social justice, healthy and sustainable living, engineering, finance, manufacturing, ecology, and business.

The application is accepted for the remaining services:

Class 38 Streaming of video material on the internet; electronic transmission of messages; providing multiple-user access to a global computer information network; video on demand transmissions; webcasting services.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) 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.

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