Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/10/2018

Yeni Greter Conde Dominguez

Via Vincenzo di marco 51

I-90143 Palermo

ITALIA

Application No:	17 866 615
Your reference:
Trade mark:	THE BEST OF THE EARTH
Mark type:	Word mark
Applicant:	Yeni Greter Conde Dominguez Via Vincenzo di marco 51 I-90143 Palermo ITALIA

The Office raised an objection on 22/03/2018 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 and evidence of acquired distinctiveness on 15/05/2018.

On 29/05/2018, the applicant was informed that its claim does not clearly and precisely identify whether it is intended to be a principal or a subsidiary one, and it was invited to submit the corresponding clarification on the nature of the claim within two months.

On 30/08/2018, the applicant submitted the same arguments and evidence that it had already submitted on 15/05/2018. They may be summarised as follows:

1. The trade mark ‘THE BEST OF THE EARTH’ is used specifically for a service that recognises other entities and gives them awards and distinctions, and targets a group of consumers who, thanks to the mark, recognise goods/services as originating from a particular category of businesses of extreme importance and popularity, namely environmental protection. This use is sufficient to distinguish the services marketed under the sign from those of other businesses.

2. The words contained in the trade mark ‘THE BEST OF THE EARTH’ are inherently distinctive, having the same meaning in both attributive and predicative uses. The unprecedented and extraordinary structure and content of the sign also make it distinctive. From the Office’s explanation, it can also be deduced that the trade mark applied for will be perceived by the consumer as distinctive.

3. The sign applied for, ‘THE BEST OF THE EARTH’, would not be perceived by the relevant public as simply a promotional laudatory slogan, because it is distinctive in relation to the services for which registration is sought.

4. The applicant submitted a description of how the mark applied for is used in the market in relation to the services for which protection is sought in Classes 35 and 42. ‘THE BEST OF THE EARTH’ is a unique mark denoting environmental excellence that is awarded to the companies that show the greatest commitment to a more sustainable world (companies that contribute to environmental protection through environmentally responsible conduct and meeting high ethical standards, based on a global sustainable development policy). Through its digital networks and advertising, marketing and promotional services, it generates publicity and gives recognition to exceptional brands in the luxury travel sector that are pioneers in the quest for ethical luxury. It is a mark that encourages the luxury travel sector to undertake continual improvement in terms of sustainability, and build a collective voice through the power of a unifying brand, furthermore motivating the relevant public to adopt a more sustainable lifestyle by identifying and engaging with those companies bearing the trade mark ‘THE BEST OF THE EARTH’. The ‘THE BEST OF THE EARTH’ Ethical Luxury Award Label can be used on products and services, as well as their associated promotional materials (providing a common identity for goods and services carrying the award/trade mark ‘THE BEST OF THE EARTH’, enabling effective advertising of the goods and/or services on which ‘THE BEST OF THE EARTH’ trade mark is used. It denotes that all goods or services bearing ‘THE BEST OF THE EARTH’ trade mark are environmentally responsible and of the highest quality available in the world, and identifies the goods or services of the trade mark and/or of its licensees and helps distinguish them from those of competitors.

5. ‘THE BEST OF THE EARTH’ sets standards that aim to reduce, as far as technologically and economically feasible, the environmental and social impacts of products, services and companies throughout their life cycles. The trade mark ‘THE BEST OF THE EARTH’ is the answer to the need engendered by climate change as well as social Issues; it empowers consumers to be part of something bigger than themselves for ‘THE BEST OF THE EARTH’.

6. With a portfolio in over 70 markets, in all the six continents, ‘THE BEST OF THE EARTH’ carefully selects eligible candidates through market research, to nominate and include in the yearly surveys to qualify them for the title of ‘THE BEST OF THE EARTH’. The title is awarded to the companies receiving the greatest number of points in a public voting process that is based on ‘THE BEST OF THE EARTH’ Ethical Luxury Awards criteria and internationally recognised guidelines.

7. ‘THE BEST OF THE EARTH’ has over 70 websites/domain names and award programmes in different cities all around the globe. They are subprogrammes of ‘THE BEST OF THE EARTH’ main brand, and are part of the upcoming events developed under ‘THE BEST OF THE EARTH’ Sustainable Luxury Travel & Social Network.

8. The mark has acquired distinctiveness through use in accordance with Article 7(3) EUTMR. In this respect, the applicant has submitted materials that, in its opinion, show how the relevant group of consumers perceives the mark applied for as an indicator of origin (the website www.thebestoftheearth.com has received over 150 000 visitors since September 2017; also attached are photos of winners receiving the award title/sign ‘THE BEST OF THE EARTH’), and also evidence confirming the amount of outlay by the business in promoting the mark ‘THE BEST OF THE EARTH’ and evidence confirming the amount of advertising.

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.

From the beginning the Office points out that, although it was not clearly indicated the kind of the claim, the fact that the supporting documents and evidence have been presented twice, it can be concluded that the applicant’s claim under Article 7(3) EUTMR received on 15/05/2018 is intended to be principal one pursuant to Article 2(2) EUTMIR and will be treated accordingly.

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).

The Office notes how the trade mark ‘THE BEST OF THE EARTH’ is used. However, it cannot concur with the applicant’s argument that the use of the mark ‘THE BEST OF THE EARTH’ is sufficient to distinguish its services from those of other businesses. Furthermore, the Office cannot agree with the argument that the words contained in the trade mark ‘THE BEST OF THE EARTH’ are inherently distinctive, having the same meaning in both attributive and predicative uses, and that the unprecedented and extraordinary structure and content of the sign also make it distinctive.

The trade mark applied for is a word mark. The words composing the mark are basic English words, do not have a particularly fanciful arrangement within the slogan, convey a straightforward message and will undoubtedly be perceived at first glance not as intriguing, but rather as a meaningful expression, namely that the services are of the highest quality available in the world. The Office considers that the specific features of the trade mark applied for are unable to confer on it any particular originality or resonance or trigger in the minds of the relevant public a cognitive process, an interpretative effort or even an effort of reflection that could make the trade mark, in the perception of that public, anything other than a merely promotional formula extolling the qualities of the services for which registration is sought (see, by analogy, 11/12/2012, T‑22/12, Qualität hat Zukunft, EU:T:2012:663, § 30).

The sign for which protection is sought, ‘THE BEST OF THE EARTH’, would simply be perceived by the relevant public as a promotional laudatory slogan, the function of which is to communicate a value statement. Moreover, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in question, namely that the applicant’s services are the best services available and are of the highest quality or most desirable in the entire world.

The Office notes the applicant’s submission about how the mark applied for is used in the market. However, the way of using the mark, as explained by the applicant, does not prove that ‘THE BEST OF THE EARTH’ is distinctive and will immediately be perceived by the relevant public as an indication of commercial origin.

The words in the mark ‘THE BEST OF THE EARTH’ convey that the services offered by the applicant are the best services available and are of the highest quality or the most desirable in the entire world. Therefore, it is considered highly improbable that the relevant public would fail to grasp the sign’s promotional laudatory message.

The Office maintains its opinion that the message expressed is plain and that the expression does not contain anything memorable in terms of word play or a subliminal message. The laudatory meaning of the expression is instantly apparent to the relevant consumers. On seeing the mark applied for, in relation to the services for which registration is sought, the relevant consumer will perceive it merely as a promotional laudatory message, the function of which is to communicate a value statement.

The Office does not contest that the applicant has a portfolio in over 70 markets, in all the six continents, from which, through market research, candidates are nominated and included in the yearly surveys to qualify them for the title of ‘THE BEST OF THE EARTH’. The Office does not contest either that the applicant has over 70 websites/domain names and award programmes in different cities all around the globe, which are the subprogrammes of ‘THE BEST OF THE EARTH’ main brand, and are part of the upcoming events developed under ‘THE BEST OF THE EARTH’ Sustainable Luxury Travel & Social Network.

Taken as a whole, the meaning of the expression ‘THE BEST OF THE EARTH’ is clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the services for which registration is sought. It is, therefore, the Office’s view that the expression ‘THE BEST OF THE EARTH’ is readily intelligible when taken in conjunction with the services for which registration is sought and viewed by the relevant consumer.

There is nothing in the expression ‘THE BEST OF THE EARTH’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is an ordinary advertising message that possesses no particular resonance. It lacks the necessary originality and resonance to make it easy to remember (23/06/2011, R 1967/2010-2, INNOVATION FOR THE REAL WORLD, § 26).

The applicant submits that the mark has acquired distinctiveness through use in accordance with Article 7(3) EUTMR.

To prove acquired distinctiveness, the applicant submitted in particular the following evidence:

• Four photos of winners receiving the award/title ‘THE BEST OF THE EARTH’.

• Invoices (not all in the language of the proceedings) issued to the applicant by:

• Google Ireland Limited for Google AdWords, dated 30/09/2017 and 31/10/2017;

• GoDaddy.com, LLC, dated 27/12/2016 — registration of domain thebestoftheearth.com — and 19/10/2017 — visibility on the search engine for one year;

• ARUBA S.p.A., dated 31/03/2017;

• ShenzhenIprogift Technology Co., Ltd, China, dated 06/04/2017 — 2GB Card USB flash drive with logo (100 pics);

• IL CARTONE PRENDE FORMA DI M. ANZALDO, dated 29/04/2017, and DIGITAL GROUND IBIZA S.L., dated 06/09/2017 — office/advertising supplies;

• Wix.com Ltd, issued on 19/04/2017 — eCommerce services for the period 19/04/2017-19/04/2018;

• Adobe Systems Software, dated 16/06/2017;

• Shutterstock Netherlands, B.V., dated 16/08/2017 — 365 days of Images on demand, with five downloads of licensed images;

• FEDERAL EXPRESS EUROPE, INC., dated 21/08/2017 — transport services;

• ROA RUIZ, C.B, dated 26/09/2017 — payment for professional drafting of model contract;

• TROFEOS Y GRABADOS CAS DATILET, dated 26/09/2017 — plates;

• SOCIETYAWARDS, dated 14/11/2017 — cast wings design, shiny precious metals electroplated;

• SurveyMonkey Europe UC, dated 09/12/2017 — subscription to Standard Monthly Plan for the period 09/12/2017-08/01/2018.

• Screenshot from the website Google AdWords (information about campaigns, including clicks overview for the periods 16-22/10/2017, 14/09/2017, 04-10/09/2017).

• Screenshot from the website Google AdWords for the campaign Amazing Destinations on Earth, one advertisement for The Best of the Earth, for the period 10/08/2017-08/09/2017 (16 383 views and 111 clicks), and a screenshot on how the advertisement Best Destinations on Earth — Ibiza Elite Club: Gold Edition was created.

• Screenshot from Google regarding a search conducted on the term ‘the best of the earth’.

• List of websites/domain names and award programmes that are part of the upcoming events developed under ‘THE BEST OF THE EARTH’ Sustainable Luxury Travel & Social Network.

• Receipt from Agenzia Entrate for including the applicant in the list of taxable persons who carry out intra-EU operations (VIES).

• A communication from Camera di Commercio Palermo Enna confirming registration of a new company with economic activity, dated 27/03/2017.

• Copy of EUIPO certificate of registration for figurative EUTM No 16 388 191 ‘THE BEST OF THE EARTH Our Planer, our Treasure’.

• Photo of boxes showing part of figurative EUTM No 16 388 191 ‘THE BEST OF THE EARTH Our Planer, our Treasure’ (only the figurative element and ‘THE BEST OF THE EARTH’, excluding the slogan ‘Our Planer, our Treasure’), under five gold stars positioned in a line and, below them, written on two lines, ‘ELITE AWARDS CLUB’ and ‘Membership’.

The Office, having carefully examined the material submitted by the applicant, is not persuaded that it is sufficient to conclude that the mark applied for has acquired distinctiveness through use under Article 7(3) EUTMR, for the following reasons.

Under Article 7(3) EUTMR, the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The application specifies services in Classes 35 (advertising, marketing and promotional services; business analysis, research and information services) and 42 (hosting services and software as a service and rental of software; science and technology services; design services).

In relation to the services for which registration is sought, the word mark ‘THE BEST OF THE EARTH’ merely serves to communicate a value statement that highlights that the applicant’s services are the best available and are of the highest quality or most desirable in the entire world, and therefore lacks distinctiveness.

Therefore, it is concluded that the use of the mark before the filing date of the application would need to have been relatively long-standing and extensive in order to establish that the mark had acquired distinctiveness.

Furthermore, it must be taken into account that since the mark is composed of ordinary English words, it will be understood in the territories of the European Union where English is an official language (the United Kingdom, Ireland and Malta) as referring to the most excellent quality of the world services.

Therefore, the question to be answered is whether a significant proportion of the relevant public within the English-speaking countries in the European Union had been sufficiently educated through exposure to the mark to associate the mark applied for specifically with the applicant’s services before the filing date of the application, namely 01/03/2018.

The documentation submitted by the applicant as evidence of acquired distinctiveness has been mentioned above and mainly consists of 4 photos of winners receiving the award/title ‘THE BEST OF THE EARTH’, 16 invoices (not all in the language of the proceedings) issued to the applicant by different service providers, a screenshot from the website Google AdWords, a screenshot of Google search results, a list of websites/domain names and award programmes, receipt from Agenzia Entrate and a communication from Camera di Commercio Palermo Enna, and the registration certificate for figurative EUTM No 16 388 191 ‘THE BEST OF THE EARTH Our Planer, our Treasure’.

In the Office’s estimation, the claim that the verbal mark ‘THE BEST OF THE EARTH’ forms a trade mark that has acquired distinctiveness through use under Article 7(3) EUTMR fails for want of supporting evidence. The reasons are as follows:

The documentation submitted is not sufficient to enable an accurate assessment of, inter alia, the market share held by the mark, if there is a clear connection between the sign applied for and the services for which registration is sought, or the proportion of the relevant consumers that, because of the mark, would identify the services as originating from a particular undertaking. Statements from chambers of commerce and industry or other trade and professional associations and opinion polls are required to prove this (see, for example, 12/09/2007, T‑164/06, Basics, EU:T:2007:274).

The four photos of winners receiving the award/title ‘THE BEST OF THE EARTH’ give no information about the relevant territory.

In the invoices, the Office could not identify the relevant territory or the connection between the mark and the services claimed.

From the screenshots from the website Google AdWords that contain information about campaigns, from the screenshot from Google regarding a search conducted on the term ‘the best of the earth’ and from the list of websites/domain names and award programmes that are part of the upcoming events developed under ‘THE BEST OF THE EARTH’ Sustainable Luxury Travel & Social Network, the Office cannot draw any conclusion regarding acquired distinctiveness because the trade mark applied for is not referred to in the evidence, the relevant territories cannot be identified and it was not possible to estimate the proportion of the relevant consumers in the European Union that would recognise the mark. Therefore, these documents have only limited evidential value.

With regard to the registration certificate for figurative EUTM No 16 388 191 ‘THE BEST OF THE EARTH Our Planer, our Treasure’ and the photo of boxes showing part of figurative EUTM No 16 388 191 ‘THE BEST OF THE EARTH Our Planer, our Treasure’, it should be pointed out that the trade mark applied for is a word mark, without any figurative element. In addition, EUTM No 16 388 191 is ‘THE BEST OF THE EARTH Our Planer, our Treasure’ and not only ‘THE BEST OF THE EARTH’.

The applicant failed to submit any information on the market share of the trade mark applied for, the intensity of the use of the mark or the proportion of the target consumers that would identify the services as originating from the applicant on the basis of the trade mark, or any statements from chambers of commerce and industry or other professional associations.

It cannot be found that the mark applied for has acquired distinctiveness based on the material submitted. No clear evidence was submitted of any sales of any of the services in the relevant territories. Since no evidence was submitted for the relevant territory, it was impossible to determine the relevant public’s perception of the sign, whether or not it is perceived, in relation to the services for which registration is sought, as a trade mark belonging to one undertaking, namely the applicant.

There is no evidence, such as market surveys, opinion polls or statements from independent sources (Chambres of Commerce) that might demonstrate that the relevant consumers, or a significant proportion thereof, would, on the basis of the mark, identify the services as originating from the applicant.

It cannot be found that the verbal mark applied for ‘THE BEST OF THE EARTH’, has acquired distinctiveness based on the information submitted. The evidence submitted is unconvincing and inadequate in itself to allow the conclusion, with the necessary degree of certainty and without resorting to speculation (07/06/2007, R 667/2005-G, Cardiology Update), that at least a significant part of the relevant public in the European Union considers the sign applied for a reference to the applicant’s services.

Based on this evidence, it is not possible to assess the proportion of the relevant class of persons who, because of the mark, would identify the services as originating from the applicant. The file does not contain any specific or quantitative information regarding the location and the proportion of the relevant public in the European Union that has encountered the sign used as a trade mark to distinguish the applicant’s services.

Therefore, in an overall assessment, the Office cannot but conclude that the evidence submitted is insufficient to demonstrate that, in the eyes of the relevant public, the verbal mark ‘THE BEST OF THE EARTH’ has become distinctive in relation to the services for which registration is sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) EUTMR has not been proven.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 866 615 ‘THE BEST OF THE EARTH’ 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.

Roxana PISLARU