Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/06/2018

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	017310418
Your reference:	T310173JBP
Trade mark:	TakeCare
Mark type:	Word mark
Applicant:	Marriott International, Inc. 10400 Fernwood Road Bethesda Maryland 20817 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/10/2017 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 23/02/2018, which may be summarised as follows:

1. There is no direct relation between the services and the mark.

2. The word is not commonly used

3. The word has not been assessed as a whole

4. The consumers have a higher degree of attention

5. The Office has accepted similar marks in the past

6. The applicant’s existing use of the mark

Pursuant to Article 94 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, 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).

There is no direct relation between the services and the mark.

The applicant holds that there is no direct relation between the services and the mark applied for. The applicant argues that consumers will need additional context to understand the real meaning of the mark. The Office however is not convinced, by this line of argumentation. The meaning of the word ‘Take Care’ is clear to all English speaking consumers in the EU. The mark does not posses any distinctiveness in relation to the services applied for. The word is a common English phrase usually used as an advice to pay attention and to be heedful. These are characteristics which are rather important when one contracts a service such as insurance or financial affairs.

The word is not commonly used

The applicant argues that the word is not commonly used in relation to the services applied for, to refer to the positive attributes or characteristics of the services. The Office believes that this argument is secondary. The actual use of the word combination is irrelevant when assessing the distinctiveness of the mark. The word ‘Take Care’ is a purely promotional statement, it simply states that the purpose of the services is to guarantee the interest of the consumers contracting the services. Therefore the actual use on the market is not required to find that a mark lacks distinctiveness. 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).

The word has not been assessed as a whole

The applicant argues that the word has not been assessed as a whole. The applicant holds that if the mark would have been assessed as a whole, the Office would find that the mark has the requisite level of distinctiveness. In this regard the Office notes that the mark is made of two word elements, and the combination of which has a very specific meaning, which is also contained in the dictionary. There is no other way how to construe and understand the mark, because the meaning of ‘Take Care’ is clear and unequivocal. Therefore the mark has been obviously assessed as a whole, and the Office believes that the mark in question does not have the minimum level of distinctiveness required for it to function as a trade mark.

The consumers have a higher degree of attention

The applicant argues that the due to the nature of the services, the consumers will have a higher level of attention. If the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, 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 Office has accepted similar marks in the past

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).

In addition, the Office refers the applicant to a very similar EUTMA which has been rejected by the Office on the basis of lack of distinctiveness and descriptiveness, EUTMA 16 254 898 - . The Board of Appeal have upheld the decision of the Office on 4 January 2018 in Case R 845/2017-5, holding that the mark, despite the figurative element it contains, lacks distinctiveness and is descriptive.

The applicant’s existing use of the mark

The applicant holds that the mark has been used in the US market. Furthermore it intends to use the mark also in the EU market. The applicant has submitted some examples, of how the mark is being used in the market. In this regard the Office notes that the use of the mark on the market does not necessarily mean that the mark is distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 310 418 is hereby rejected for all the services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Alistair BUGEJA