Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2018

BIRD & BIRD LLP

12 New Fetter Lane

London, EC4A 1JP

REINO UNIDO

Application No:	017883603
Your reference:	GEMME.0055/MAKH/SHAO
Trade mark:	WE SEE GENIUS IN EVERY CHILD
Mark type:	Word mark
Applicant:	GEMS MENASA IPCO (Cayman) Limited M&C Corporate Services Limited, PO Box 309GT, Ugland House, South Church Street, George Town Grand Cayman LAS ISLAS CAIMÁN

The Office raised an objection on 26/04/2018 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 on 25/06/2018, which may be summarised as follows:

• The mark constitutes a play on words, introduces elements of conceptual intrigue or surprise and has some particular originality, as it is not feasible to believe that every child is a genius. Consequently, the mark is distinctive, as it will be perceived as an indication of commercial origin and not merely as a promotional message.

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.

The applicant asked for an opportunity to submit further observations if the EUIPO decided to maintain the objection. In its notification of 26/04/2018, the Office raised all of its arguments supporting the refusal of the present application. The applicant had an opportunity to submit observations and did so on 25/06/2018. Therefore, the Office will not grant another chance to submit further observations.

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.

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).

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).

As regards the applicant’s argument that the sign is unusual, it must be noted that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The applicant states that the sign has some particular originality because the idea that every child could be a genius is unrealistic. The Office submits that consumers are used to exaggerated statements in slogans. This is a common advertising technique that merely serves to reinforce the promotional effect of the expression. In the present case, the relevant consumer, despite understanding the word ‘genius’, will not expect all children to be geniuses in the literal sense of the word. The sign will, rather, convey the message that there is potential ability or talent in every child. The promotional laudatory effect of the mark, in relation to the goods and services for which registration is sought, is that the education or entertainment services provided in the form of training, conferences, seminars, workshops, competitions, sporting camps, etc. (and the related goods and services), have the capacity to reveal the potential ability or talent in every child participating in these activities. The Office therefore maintains that the sign will be perceived by the relevant public as a promotional laudatory slogan, the function of which is to communicate a message regarding the positive aspects of the goods and services. There are no other elements in the sign that could endow it with distinctive character. Consequently, the sign will not be perceived as an indication of commercial origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 17 883 603 is hereby rejected for the following goods and services:

Class 16 Printed matter; instructional and teaching material (except apparatus); books; handbooks [manuals]; magazines [periodicals]; manuals [handbooks]; newsletters; newspapers; periodicals; printed publications.

Class 41 Education; providing of training; entertainment; sporting and cultural activities; academies [education]; arranging and conducting of colloquiums; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; boarding schools; bookmobile services; coaching [training]; education information; educational examination; educational services; electronic desktop publishing; games equipment rental; gymnastic instruction; holiday camp services [entertainment]; instruction services; lending libraries; mobile library services; nursery schools; organization of competitions [education or entertainment]; organization of exhibitions for cultural or educational purposes; organization of sports competitions; physical education; practical training [demonstration]; providing on-line electronic publications, not downloadable; providing sports facilities; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; recreation facilities (providing-); recreation information; religious education; rental of sports equipment, except vehicles; rental of sports grounds; rental of stadium facilities; rental of tennis courts; sport camp services; teaching; tuition; vocational guidance [education or training advice]; vocational retraining; writing of texts, other than publicity texts.

The application may proceed for the remaining goods.

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.

Stanislava MIKULOVA