Refusal of application for a European Union trade mark

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

Alicante, 21/09/2017

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

REINO UNIDO

Application No:	016737918
Your reference:	T111577EM/IAS/ks
Trade mark:	MOVING FORWARD
Mark type:	Word mark
Applicant:	THE STANDARD BANK OF SOUTH AFRICA LIMITED 5 Simmonds Street Johannesburg, Gauteng ÁFRICA DEL SUR

The Office raised an objection on 25/05/2017 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 mark applied for consists of the words MOVING FORWARD and was considered objectionable for the services applied for, namely:

Class 38 Telecommunications and communications services; providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing, all in class 38.

The applicant submitted its observations on 17/07/2017, which may be summarised as follows:

Specification amendment

The applicant requests a limitation to the original list of services claimed. The new Class 38 classification of services should now read as follows:

Class 38 Providing user access to computer networks or the Internet for purposes of facilitating commercial, banking or financial transactions and electronic payments; providing telecommunications connections to the Internet or data bases for purposes of facilitating commercial, banking or financial transactions and electronic payments services ancillary and related to all of the aforegoing, all in class 38.

1. The relevant public will be both general public and professional public but the level of attention will be high, especially with regard to those services directed to commercial banking.

2. The provision in the article 7(1)(b) is intended to preclude registration of the marks which are entirely devoid of distinctive character.

3. EUIPO has already accepted the trade mark MOVING FORWARD as inherently distinctive in respect of the applicant’s IR designating the EU. EUIPO also accepted two other marks MOVING FORWARD.

4. The applicant’s MOVING FORWARD mark was also accepted as inherently distinctive by the UKIPO.

5. The relevant consumer would not ordinarily associate the phrase MOVING FORWARD with the services, it is not a natural way of describing the characteristics or even the improvement of such a services.

6. It is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character. The mark MOVING FORWARD introduces to the relevant public an element of intrigue, since it is unusual to see such a term applied to those services.

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 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 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).

1. The sign for which registration is sought, is incapable of performing the essential function of a trade mark and does not enable the consumer who purchased the services in question to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20). The target public will perceive the sign applied for as a general promotional message without regarding it as containing an indication of commercial origin referring to a specific undertaking.

It must be held that the fact that the part of the relevant public is specialist or has a higher degree of attention cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Even if the degree of attention of the relevant public (general and professional) is higher than average, it does not necessarily follow that a weaker distinctive character of a sign is sufficient to render a sign registrable (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In view of the nature of some of the services in question, even if the awareness of part of the relevant public is high, given the fact that they are related to commercial banking 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).

2. As pointed out by the applicant, the article 7(1)(b) is intended to preclude registration of the marks which are entirely devoid of distinctive character. The Office agrees that only a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply. However, in the present case, the required minimum degree of distinctive character could not be established. It is clear from the case-law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the service as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade mark.

In the present case, the meaning of the expression MOVING FORWARD is readily intelligible when taken in conjunction with the services applied for in class 38 and viewed by the relevant consumer. The Office considers, therefore, that it is highly unlikely that, without substantial use, the consumer would perceive the mark as a badge of origin distinguishing the services for which registration is sought.

3. As regards the applicant’s argument that an identical application of the applicant’s IR (designating the EU) No.1 021 604 has previously been accepted for registration by the EUIPO for goods and services in Classes 9,16, 35, 36 and 41 and that EUIPO has accepted two other marks MOVING FORWARD, namely EUTM registration No. 10 747 616 in Class 10 and EUTM registration No. 11 685 526 in Classes 4, 37, 39, 40 and 42 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).

Moreover, such an examination must be undertaken in each individual case depending on the factual circumstances, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T-248/11, Pure Power, EU:T:2013:333, § 50; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 73 to 77).

Furthermore, with regards to the applicant’s reference to the previously registered marks, it must be stated that the EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law. Even though the principle of equal treatment must be applied, it must be applied in a way consistent with 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 reasons of legal certainty and precisely 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.

With regard to the previous registrations to which the applicant has referred the Office acknowledges that it must strive for consistency and apply the same criteria to the examination of trade marks. However, as explained above and as it follows from T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65) the Office cannot be bound by previous decisions.

Moreover, market practices, languages and registration practices evolve over time and the mark cited may have been accepted on the basis that it was considered to be registrable at the time of application which may not be the case nowadays. Consequently, the question as to whether a sign is suitable for registration as an EUTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of the Office’s previous decision-making practice.

Additionally, it is noted that the previous registrations cited by the applicant were registered several years ago: MOVING FORWARD in respect of the applicant’s IR it was registered in 2009, EUTM No. 10 747 616 was registered in 2012 in Class 10 for the goods such as different types of bandages and orthoses and EUTM No. 11 685 526 was registered in 2013 for the specific goods such as for instance oils, fuels, fuel gas and electrical energy and for services related to these goods.

The Office is obliged to undertake its examination of trade marks applied for based on the date of application, and it is accordingly possible that, in the intervening period between the earlier registrations and the date of application for the present application, the market has developed in such a way that the mark, although previously capable of registration, no longer is.

It is also important to recall that the examination of absolute grounds for refusal must be full and stringent (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59) and may not just consist of the mere repetition of comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign in respect of which registration is sought as an EUTM is composed in a manner identical/highly similar to that of a mark in respect of which the Office has already approved its registration as an EUTM and which relates to goods identical or similar to those in respect of which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

4. The applicant submitted that the UK Intellectual Property Office has registered the identical trade mark MOVING FORWARD under registration No. 2 255 103B. However, as regards the national decision referred to by the applicant, 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).

Additionally, it is noted that the UK Intellectual Property Office has registered the trade mark MOVING FORWARD in 2001, therefore this mark was accepted 16 years ago.

5. The applicant claims that the relevant consumer would not ordinarily associate the phrase MOVING FORWARD with the services as that it is not a natural way of describing the characteristics or even the improvement of these services. First of all, the refusal was not based on a breach of Article 7(1)(c) EUTMR. As already explained in the notification of 25/05/2017, the expression MOVING FORWARD is a common expression in advertising language. It’s a plain, short and direct message which merely highlights the positive aspects of the services concerned, namely that they advance the telecommunications and communications processes.

Furthermore, for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark applied for indicates to the consumer characteristics of the services relating to its 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; a word mark of this kind does not become distinctive simply as a result of the fact that it contains no information on the kind of services designated (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198 § 31; and by analogy 07/07/2011, R 238/2011-4, Designed To Do More, § 26). In this respect, it is also irrelevant in the context of distinctive character that the consumer can infer nothing specifically from the sign about whether the relevant services are simply better as regards, for example, quality, performance or value (15/12/2009,T-476/08,Best Buy II, EU:T:2009:508§19; and31/05//2007,R 1628/2006-1, Simply better, § 22).

In the present case, MOVING FORWARD is a clichéd expression, which merely conveys promotional information about the services, therefore, it is unlikely that it will be perceived as an individual mark of one trader. Such a mark leaves no imprint on the consumer’s consciousness after the purchase has taken place and the expression soon sinks back into the anonymity of ordinary promotional language. The mark which simply means keeping pace with innovation in the field will not stand out as an indicator of origin among other equally facile promotional statements, unless through exposure and use, the public has been educated to perceive it as indicator of origin.

6. The applicant refers to the judgement of 12/07/2017 in case C-311/11 P - Smart Technologies v OHIM, ECLI:EU:C:2012:460, paragraph 25 where the Court held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign. The Office agrees with this statement. However, it should be also noted that 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 services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the 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 maintains that this is not the case of the sign at hand. A slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is also likely to be distinctive since consumers would not be able to establish a clear and direct link with the services for which the trade mark is protected.

Contrary to the applicant’s opinion the sign applied for does not introduce any element of conceptual intrigue that requires an interpretative effort from the part of the public. The expression MOVING FORWARD is a promotional laudatory message, the function of which is to merely communicate a positive statement about the services concerned. The term transmits the message that the services in class 38 are facilitating, improving communication processes and making them better in the field of commercial banking or financial transactions and electronic payments. This combination of words does not contain, in relation to its separate components, any additional element capable of giving it distinctive character.

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 016737918 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.

Martin EBERL