Refusal of application for a European Union trade mark

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

Alicante, 10/08/2017

WILDBORE & GIBBONS LLP

Sycamore House 5 Sycamore Street

London EC1Y 0SG

UNITED KINGDOM

Application No:	016445314
Your reference:	KW/EU17-0484
Trade mark:	ANY CROP, ANYWHERE, ANYTIME
Mark type:	Word mark
Applicant:	BW Global Structures Inc. 29020 Fraser Highway Abbotsford British Columbia V4X 1G8 CANADA

The Office raised an objection on 16/May/2017 (date on letter) 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 17/July/2017 which may be summarised as follows:

• The applicant argues by referring to case law (Case T-144/05), that “a minimum degree of distinctiveness is sufficient to prevent application of the absolute ground for refusal”. The mark ANY CROP, ANYWHERE, ANYTIME does not describe the goods in question, e.g. greenhouses or prefabricated buildings. Furthermore, the use of the word ‘ANY’ in the mark adds a fanciful element and makes it memorable to consumers, adding to the distinctive character of the mark.

• Relying on the CJEU finding in the Case C-398/08, the applicant submits that the fact that the mark applied for may be used as an advertising slogan does not render the mark devoid of distinctive character. Furthermore, slogan marks are word marks to which the general principles established by case law for assessment of distinctive character should be applied (Case C-64/02 P).

• The applicant states that “the words which comprise the mark are not commonly used together in the same consequence by other traders and by other consumers”. The applicant asserts that the trade mark must be analysed in terms of originality, or usefulness in purchasing decisions and whether the mark is capable of indicating to the consumer the commercial origin of the goods in question. Referring to case law (Case-398/08 P), the applicant argues that the mark ANY CROP, ANYWHERE, ANYTIME does possess a level of originality and therefore does require a measure of interpretation by the relevant public.

In light of all the above, the applicant claims that the sign applied for does have significantly more than the minimum level of distinctiveness required for registration. In addition, such marks are easily recalled by the public denoting origin.

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.

In its submissions the applicant has argued that the mark itself is sufficiently distinctive, and would be perceived by the general public as a badge of trade origin. The example of the registered trade mark VORSPRUNG DURCH TECHNIK was highlighted as a similar type of mark.

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).

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).

The Office has noted the applicant’s submission. However, the Office cannot find anything unusual or distinctive about the mark applied for. Without any proof that the mark has become distinctive through long and extensive use, it is believed that the mark, prima facie, will not function as a badge of trade origin

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).

As previously mentioned, the trade mark ANY CROP, ANYWHERE, ANYTIME will be perceived by the general public immediately as a laudatory statement that merely indicates the possible use and characteristics of the given goods in question, that is: one can grow any crop anywhere (in the greenhouses or prefabricated houses) at any time. The mark lacks any secondary or covert meaning, and its message to the consumer is plain, direct and unambiguous. The relevant English-speaking public will see this as an invitation or encouragement to purchase the goods. Thus, although slogans are not examined more strictly than other marks and even though a minimum degree of distinctiveness is sufficient for registration, in the present the Office sees nothing unusual or striking about the combination of words applied for to support the finding that it could function as an indicator of origin.

Furthermore, it cannot be said that the Court’s considerations in ‘Vorsprung durch Technik’ have radically changed the law in relation to verbal expressions serving as promotional or advertising messages. Although that judgment indeed clarifies certain questions relating to the acceptability of slogans as trade marks, it cannot and should not be read as suggesting that any promotional phrase, however descriptive or banal, can be registered as a trade mark, merely because it is presented in the form of an advertising slogan. The fact that some slogans have been accepted by the Office or the Courts merely shows that there is no per se ban on slogans in EUTM law. What matters is the semantic content of the slogan and its relationship to the goods or services claimed.

It remains the Office’s viewpoint that the expression applied for is made up of ordinary words, immediately understandable to any person. The mark ANY CROP, ANYWHERE, ANYTIME has a clear meaning, resulting from the combining of words that can be found in dictionaries and thus is composed of a sequence of ordinary English words that could easily be said as part of everyday spoken language, and is constructed according to basic rules of English grammar.

A trade mark must 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, for which it must be remembered as a distinctive mark for the services concerned. However, even if the consumer would remember the sign, this does not imply that they assign it to an undertaking. The word sequence in the present case is so ordinary that it is devoid of distinctive character. The statement ANY CROP, ANYWHERE, ANYTIME is so clear that no analytical effort on the part of the relevant consumer is required in order to recognise the meaning of the sign. No ambiguity can be deduced, contrary to the applicant’s arguments.

As regards the applicant’s argument that no other 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 service 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).

The Office considers further argumentation superfluous. It derives from all of the foregoing that the applicant has not succeeded in convincing the Office that the expression ANY CROP, ANYWHERE, ANYTIME will be perceived by consumers as pointing to the commercial origin of the contested good. The Office remains of the view that the relevant public cannot, in the absence of prior knowledge, perceive the subject mark other than in its descriptive sense, and the applicant has not claimed that its mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 016445314 is hereby rejected.

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.

Eamonn KELLY