Refusal of application for a European Union trade mark

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

Alicante, 24/05/2017

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	016423907
Your reference:	T309088HJC
Trade mark:	4U
Mark type:	Word mark
Applicant:	ARKRAY, Inc. 57, Nishi Aketa-cho, Higashi-kujo, Minami-ku, Kyoto-shi Kyoto 601-8045 JAPÓN

The Office raised an objection on 10/03/2017 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 02/05/2017, which may be summarised as follows:

1. The mark has been incorrectly assessed in that it is not composed of English words but a single digit in combination with a single character of the Roman alphabet. The assessment that the mark consists of word elements is therefore incorrect and therefore is inappropriate to be examined as a slogan.

2. The Office’s assertion that the sign 4U is a commonly used abbreviation for the phrase “for you” is unfounded. Attention is drawn to the fact that the combination 4U has previously been used as a flight code for the airline Germanwings i.e. indicative of travel services emanating from a particular provider. The combination therefore is inherently distinctive in connection with the services covered by the application.

3. The number and letter combination could equally be interpreted by the English-speaking average consumer as an abbreviation for the phonetically identical English language words ‘FOUR YOU’, ‘FOR EWE’/’FOUR EWE’. The applicant contends that none of the alternative interpretations would jeopardise the inherent registrability of the mark in connection with the claimed services.

4. The assessment of the mark relies on the phonetic impression of the mark and does not take into account the mark’s visual impression. The relevant consumer, being predominantly a professional public, would not attribute any meaning to the combination 4U, especially in connection with services provided. The term has insufficient content to be able to indicate to the consumer a characteristic of the services or service provider.

5. The combination 4U is sufficiently vague regarding the potential suitability of the services being provided. The mark is imaginative and playful and exhibits a certain originality and resonance which makes it easy to remember. The combination 4U provides no direct or indirect information about the services offered under the mark.

6. A number of Board of Appeal decisions on the subject of assessment of distinctive character are listed. Additionally a list of third party acceptances of identical or similar marks is set out.

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.

General remarks

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).

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).

Specific remarks concerning the observations of the applicant

1. The mark has been incorrectly assessed in that it is not composed of English words but a single digit in combination with a single character of the Roman alphabet. The assessment that the mark consists of word elements is therefore incorrect and therefore is inappropriate to be examined as a slogan.

The Office asserts that the mark was correctly assessed and states that while the mark visually appears as ‘4U’ it cannot preclude the fact that phonetically it would be pronounced as the equivalent words ‘for you’. This is particularly relevant given the modern trend for abbreviating words or to use shorthand to convey a particular message:

(Sourced from http://www.smart-words.org/abbreviations/text.html on 24/05/2017).

Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient (judgment of 13/06/2014, T-352/12, Flexi, EU:T:2014:519).

Therefore, given the nature of the phrase associated with the numeral and letter combination ‘4U’ it is asserted that the application was correctly examined as a slogan.

2. The Office’s assertion that the sign 4U is a commonly used abbreviation for the phrase “for you” is unfounded. Attention is drawn to the fact that the combination 4U has previously been used as a flight code for the airline Germanwings i.e. indicative of travel services emanating from a particular provider. The combination therefore is inherently distinctive in connection with the services covered by the application.

As stated in the letter of refusal, the Office asserts that the sign 4U is commonly used and by a number of different undertakings to indicate that the goods or services are personally tailored to the consumer:

(Sourced from Google.co.uk at https://www.google.co.uk/search?sclient=psy-ab&site&source=hp&q=4u&oq=4u&gs_l=hp.3..0l4.2676.3349.0.3605.2.2.0.0.0.0.86.168.2.2.0....0...1.1.64.psy-ab..0.2.157...0i131k1.3qgsJyckXqg&pbx=1&bav=on.2,or.&biw=1920&bih=1009&dpr=1#q=4u&tbs=ctr:countryUK|countryGB&cr=countryUK|countryGB on 24/05/2017).

It cannot be claimed therefore that the mark is inherently distinctive for the services claimed when it merely serves to indicate to the consumer that these services are tailored to their individual needs.

With regard to the Germanwings example, the Office notes that the designation 4U is a flight code indicator, not a badge of trade origin. Therefore it cannot be considered relevant in this case as it is not a trade mark.

3. The number and letter combination could equally be interpreted by the English-speaking average consumer as an abbreviation for the phonetically identical English language words ‘FOUR YOU’, ‘FOR EWE’/’FOUR EWE’. The applicant contends that none of the alternative interpretations would jeopardise the inherent registrability of the mark in connection with the claimed services.

The Office states that out of the possible interpretations offered by the number and letter combination 4U, it is unlikely that a phrase that doesn’t make grammatical or lexical sense such as FOUR YOU, FOR EWE or FOUR EWE will spring to mind. Given the nature of abbreviation it is feasible to conclude that the meaning communicated by the combination is most likely to be the one that is most readily understood as a meaningful phrase; in the present case 4U would immediately indicate ‘for you’ and not the other phonetically identical example which would not make immediate sense.

4. The assessment of the mark relies on the phonetic impression of the mark and does not take into account the mark’s visual impression. The relevant consumer, being predominantly a professional public, would not attribute any meaning to the combination 4U, especially in connection with services provided. The term has insufficient content to be able to indicate to the consumer a characteristic of the services or service provider.

The fact that the relevant public is a specialist one and its degree of attention is higher than average cannot decisively influence the legal criteria used to assess the distinctive character of a sign. As stated by the Court of Justice, ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (judgment of 12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

Moreover, according to well-established case-law from the General Court, the level of attention of the relevant public may be relatively low when it comes to promotional indications, whether what is involved are average end consumers or a more attentive public made up of specialists or circumspect consumers. This finding is applicable even for goods and/or services where the level of attention of the relevant public is generally high, such as financial and monetary services (judgments of 29/01/2015, T-609/13, SO WHAT DO I DO WITH MY MONEY, EU:T:2015:688, § 27; T-59/14, INVESTING FOR A NEW WORLD, EU:T:2015:56, § 27 and cited case-law).

As evidenced in point 2 above, the number and letter combination 4U is widely used by a range of different undertakings. Therefore the visual impression will not make sufficient impact on consumers, be they specialist or not, who are accustomed to seeing the combination used in marketing or promotional terms.

As stated in the letter of refusal:

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 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 services (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31) [emphasis added].

In the present case the characteristic indicated is that the services are customer focussed and tailored to the needs of the individual or collective consumer (“for you”). The objection does not need to specify a particular characteristic of the services for the purpose of this objection.

5. The combination 4U is sufficiently vague regarding the potential suitability of the services being provided. The mark is imaginative and playful and exhibits a certain originality and resonance which makes it easy to remember. The combination 4U provides no direct or indirect information about the services offered under the mark.

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 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 Office does not agree that the mark is sufficiently original, imaginative or playful. The number and letter combination 4U, as evidenced above, is commonly used as an abbreviation of “for you” which would be perceived as laudatory marketing speak that could apply to any undertaking that provides goods or services tailored to the consumer’s needs.

6. A number of Board of Appeal decisions on the subject of assessment of distinctive character are listed. Additionally a list of third party acceptances of identical or similar marks is set out.

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).

‘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).

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 016423907 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.

Lance EGGLETON