Refusal of application for a European Union trade mark

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

Alicante, 31/08/2017

MARKS & CLERK LLP

90 Long Acre

London

WC2E 9RA

REINO UNIDO

Application No:	016619901
Your reference:	JAC/TN825889EMA
Trade mark:	Our Way to Serve
Mark type:	Word mark
Applicant:	Bridgestone Corporation 1-1, Kyobashi 3-chome, Chuo-ku Tokyo 104-8340 JAPÓN

The Office raised an objection on 08/05/2017 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 10/07/2017, which may be summarised as follows:

1. The same criteria to assess distinctiveness should be applied to slogans and to other signs;

2. The sign does not possess any meaning when related to goods in Class 12;

3. Regarding the goods in cause, the sign is too vague and ambiguous to be considered as a mere promotional expression and will not be perceived as an expression to embellish the goods;

4. By looking at the sign, the relevant consumer, for being a specialist one, will associate the products as originating from the applicant.

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).

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’, ECLI:EU:C:2001:510). ‘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; 21/10/2004, C-64/02, „Das Prinzip der Bequemlichkeit“, EU:C:2004:645 ).

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).

The applicant starts by referring to case-law which states that the same criteria for assessing distinctive character of other types of signs should apply to slogans and that for a sign to fall within the ambit of Article 7(1)(b), must possess no distinctive character whatsoever. After that, the applicant says that in relation to goods in Class 12, the sign will not be understood as a promotional laudatory message by the relevant consumers and that, when the consumers look at the sign they will associate the products as originating from the applicant as opposed to another undertaking and so it should be considered distinctive.

The applicant does not dispute the definitions of the words forming the slogan, cited in the contested notice, or the conclusion that the slogan is formed in full accordance with the grammatical rules of the English language. Bearing this in mind, the assessment of the mark is not limited to those Member States in which English is the official language (Article 7(2) EUTMR). The Office is of the opinion that the sign ‘Our Way to Serve’ is not capable of serving as an indication of commercial origin of the goods at stake. Furthermore, the applicant does not provide any argument as to why the mark would require a measure of interpretation on the part of the public and would exhibit certain originality and resonance which makes it easy to remember (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29). Rather, the raised question is whether the word sequence is a comprehensible statement in relation to the contested goods.

The applicant argues that the sign is too vague and ambiguous to be considered as a promotional laudatory message. The relevant public does not expect promotional slogans to be precise or convey all of the information which is required to make an informed choice when selecting the goods or services. Rather, it is a common characteristic of promotional slogans to convey only abstract information which allows every consumer to appreciate that its individual needs are addressed. Accordingly, the case-law has consistently refused registration to slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (for example, see judgments of 03/07/2003, T-122/01, ‘Best Buy’; ‘Real People, Real Solutions’; of 17/11/2009, T-473/08, ‘Thinking ahead’).

The applicant cannot rely on the argument that the sign does not possess any meaning in relation to the goods the protection is sought. In the attached letter it is mentioned that the relevant consumer will understand the sign as ‘distinctive manner of serving someone’. There is not only one way to serve customers, it cannot be considered that the sign ‘Our Way to Serve’ is only meaningful when in relation to services and not to goods: it will be also understood by the relevant consumer that there is a distinctive manner of serving them, through the quality of the products (material used, way of manufacturing them, if they are produced in somewhat a sustainable manner…). In line with the above, and as also previously referred in the attached letter, the relevant consumer will understand the sign as a laudatory message referring to one or several characteristics of the way the goods are produced.

The mark, in effect, is saying to the consumer to take advantage of the goods. It will be perceived as a mere promotional hook to attract audience. The overall effect is, of course, to generate a positive business benefit. In consequence, based on its inherent meaning, the sign in question mainly fulfils the function of a promotional announcement intended to exhibit positive characteristics of the goods for whose presentation it is to be used. Such a slogan does not constitute an indication of a given business or commercial origin. These findings do not contradict the case law on which the applicant relies.

The Court has held that if it were established, when assessing the distinctiveness of the trade mark in question, that it served a promotional function (consisting, for example, of commending the quality of the product in question), and that the importance of that function was not manifestly secondary to its purported function as a trade mark, namely that of guaranteeing the origin of the product, the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogan (11/12/2001, T-138/00, „DAS PRINZIP DER BEQUEMLICHKEIT“, EU:T:2001:286; 21/10/2004, C-64/02, „Das Prinzip der Bequemlichkeit“, EU:C:2004:645). The reason behind this is that all general laudatory terms inform customers that they have found a particularly favourable offer in order to ensure that it is only in a second step, after getting the customers’ attention, that they are given an opportunity to examine the details of the offer, including its commercial origin.

In the present case, the expression applied for ‘Our Way to Serve’ is an ordinary advertising message that possesses no particular resonance. The targeted public will perceive in the word sequence applied for only a general promotion, without seeing, at least as an additional feature, any reference to a specific undertaking lying behind it as the commercial origin. Even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the goods, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The applicant submits that the reasoning in the referred to case-law is applicable and to be compared with (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29 and 11/12/2001, T-138/00, „DAS PRINZIP DER BEQUEMLICHKEIT“, EU:T:2001:286; 21/10/2004, C-64/02, „Das Prinzip der Bequemlichkeit“, EU:C:2004:645), it should be noted that there is no conflict between the Office’s analysis of the mark at issue and this case-law. The possibility that the relevant public would immediately identify ‘Our Way to Serve’ as a trade mark is highly unlikely. The interpretation of the mark by the applicant does not affect its recognisable meaning. The components in themselves have no distinctive character with regard to the goods in respect of which the application is made. Whether the trade mark can be regarded as having an evocative or suggestive meaning depends on the specific circumstances, i.e. the perception of the consumer and the goods claimed.

As the applicant rightly points out, registration of a mark cannot be denied merely because a mark is laudatory or has a promotional message (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29). The Court, in ‘Vorsprung’ judgement, draws the logical conclusion that the fact that the trade mark ‘is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character’ (04/10/2001, C-517/99, ‘Bravo’, ECLI:EU:C:2001:510). This is of course true, if the public perceives a trade mark as an indication of commercial origin, it is distinctive, irrespective of whether the trade mark also has other functions.

The cited judgment however does not imply that suddenly all slogans have become registrable (12/02/2014, T-570/11, ‘La qualité est la meilleure des recettes’, EU:T:2014:72). Although it 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 now be registered as a trade mark, merely because it is presented in the form of an advertising slogan. In contrast, trade marks which are merely an ordinary advertising message, which require no effort, which follow obviously from the slogan or do not set off a ‘cognitive process in the minds of that public’ are not distinctive.

The ‘resonance’ of ‘Vorsprung durch Technik’ identified by the Court was rather due to the fact that the sign was ‘a widely known slogan which has been used by Audi for many years’. It was held in effect that the slogan was distinctive in relation to a wide range of goods and services as a result of the distinctiveness acquired through longstanding use as a slogan for promoting the sale of cars. The individual case is therefore always relevant.

It derives from all the foregoing that the applied-for mark does not supersede the threshold of the necessary inherent distinctiveness. The sign ‘Our Way to Serve’ is therefore devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR. Consumers will only perceive such a sign as a trade mark if they are exposed to it intensely and for a very long time and therefore learn to associate it with a particular trader. That finding cannot be called into question by the other arguments put forward by the applicant. (11/12/2001, T-138/00, „DAS PRINZIP DER BEQUEMLICHKEIT“, EU:T:2001:286; 21/10/2004, C-64/02, „Das Prinzip der Bequemlichkeit“, EU:C:2004:645).

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.

Peter SCHYDLOWSKI