Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 01/08/2018

ZIVKO MIJATOVIC & PARTNERS

Avenida Fotógrafo Francisco Cano 91A

E-03540 Alicante

ESPAÑA

Application No:	017887820
Your reference:	TM29918EU00
Trade mark:	ARE YOU WITH US?
Mark type:	Word mark
Applicant:	T-Mobile USA, Inc. 12920 SE 38th Street Bellevue, Washington 98006 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/05/2018 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 20/06/2018, which may be summarised as follows:

1. The trade mark ‘ARE YOU WITH US?’ is distinctive.

2. Similar trade marks have previously been registered by the EUIPO.

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.

Distinctiveness

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).

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).

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).

The applicant argues that the trade mark possesses the minimum degree of distinctive character to be accepted for registration under Article 7(1)(b) EUTMR. The trade mark must be considered as a whole and in relation to the services for which registration is sought and the relevant consumers’ perception of the mark. The fact that the mark includes words that are included in the dictionary is not sufficient to declare it devoid of distinctive character.

The Office agrees that a trade mark must be considered as a whole. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59). The Office has conducted its examination by considering the trade mark as a whole, after examining the trade mark’s individual components, and it is the combination of the words ‘ARE YOU WITH US?’ that the Office finds to be devoid of distinctive character.

The Office also concurs with the applicant’s argument that the distinctive character of a trade mark, within the meaning of Article 7(1)(b) EUTMR, must be assessed, first, in relation to the goods and services in respect of which registration is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods and services (27/11/2003, T-348, Quick, EU:T:2003:318, § 29). It is on that basis that the Office has come to the conclusion that the relevant consumers would not perceive the mark as an indication of commercial origin.

The applicant argues that the awareness of the relevant consumers for the services in Class 42, namely providing technical support regarding the usage of cellular telecommunication equipment, is high. The applicant draws an analogy with the following cases on relative grounds: 27/09/2016, T‑450/15, luvoworld / luvo et al.. EU:T:2016:543, § 24; 01/03/2016, T‑661/15, EU:T:2016:59, § 26; and 05/05/2015, T‑184/13, SKYPE /SKY et al., EU:T:2015:258, § 22. The findings in those cases held that telecommunication services also target business professionals and that both average and professional consumers would display a high degree of attention when contracting the services at issue, in consideration of their technical nature and of the fact that they are not purchased on a daily basis. On that basis, the applicant also seems to conclude that the relevant consumers’ awareness in relation to the services in Class 38¹ is also high, even though this is not explicitly mentioned.

While it is true that the services in both Class 38 and Class 42 may target both average and professional consumers, and that the relevant consumers purchase these services not on a daily basis but maybe one or twice a year, the Office does not concur with the applicant’s assessment that the relevant consumers will have a high degree of attention when encountering a promotional indication, such as the trade mark in question.

In view of the nature of the services in question, even if the awareness of part of the relevant public is high (or increased), 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).

In addition, it must be held that the fact that the relevant public may be 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).

Therefore, the Office maintains that the relevant public mainly consists of average well-informed English-speaking consumers, whose degree of attention may be increased when purchasing the services in question, but that it does not influence their level of awareness when exposed to purely promotional indications. In addition, if the relevant consumers also include professionals, their technical knowledge has little influence on their attention to purely promotional indications not including technical words.

The applicant argues that the trade mark ‘ARE YOU WITH US?’ is distinctive because it cannot be compared with the examples of banal, frequently used non-distinctive word elements found in the Office’s guidelines. Furthermore, the applicant argues that the trade mark ‘ARE YOU WITH US?’ is abstract and has no immediately perceptible meaning in relation to telecommunication services in Class 38 and technical support services for telecommunication equipment in Class 42.

First, the expression ‘ARE YOU WITH US?’ is a meaningful, grammatically correct, simple and straightforward English phrase.

Second, the trade mark consists of a slogan, and the practice and examples to be used to determine its distinctive character are mainly in the section on slogans in the Office’s guidelines. Slogans are objectionable under Article 7(1)(b) EUTMR when the relevant public perceives them as mere promotional formulas.

As also noted by the applicant, the Court of Justice has ruled that it is inappropriate to apply to slogans stricter criteria than those applicable to other types of signs when assessing their distinctive character (12/07/12, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, and case-law cited).

Nonetheless, 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).

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 maintains that the trade mark in question would not immediately be perceived as an indication of commercial origin.

The refusal of the application, as regards the services for which registration is sought, was not on the ground that the word combination conveyed some specific descriptive message as regards particular characteristics of the services. It was not based on Article 7(1)(c) EUTMR.

The fact that the slogan applied for does not contain precise indications of the content or nature of the services offered under the trade mark is irrelevant. The Court of First Instance has held on various occasions that, for a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the consumer a characteristic of the product 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 goods; the mere fact that the word combination applied for does not convey any information about the nature of the goods or services concerned is not sufficient to make that sign distinctive (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31).

When encountering the trade mark ‘ARE YOU WITH US?’ in relation to the services for which registration is sought, the relevant consumers would first and foremost perceive it as a promotional incitement, rather than an indication of commercial origin. The relevant consumers would perceive it as a motivation to become part of a (telecommunication) group or community, but the consumer would not be able to deduce from the mark which (telecommunication) group or community.

Contrary to the applicant’s argument, the meaning of the trade mark ‘ARE YOU WITH US?’ is not vague, nor does it require considerable mental effort from the relevant consumers to understand the message of the mark. On the contrary, the message is immediately clear: it asks the consumers if they with the speaker (the company) and part of its group or community. If it was encountered in relation to telecommunication services, it would immediately be clear that ‘US’ refers to the telecommunication provider, but the question that remains unclear is who the telecommunication provider is.

There is a high degree of competition between telecommunication providers, who are constantly fighting to increase their market shares. Many telecommunication providers, in particular providers of mobile telecommunication services, provide advantages to consumers when they contact other consumers using the provider’s network, for example free calls or messages when the sender and receiver are using the same telecommunication network. Therefore, it will not be surprising or unexpected to see the expression ‘ARE YOU WITH US?’ in relation to telecommunication services. ‘ARE YOU WITH US?’ is a simple question asking if the relevant consumer has joined or is taking part in a group or community. The question may be asked by all operators in the telecommunication sector; therefore, there is nothing in the trade mark that enables the relevant consumer to identify the commercial origin of the services in question. Contrary to the applicant’s argument, it cannot be said that the trade mark plays with different connectional alternatives or constitutes an original formula within the sector of telecommunication service providers.

With regard to the applicant’s reference to the Court judgment of 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44-45, while case-law does not exclude promotional formulas from registration, it also does not indicate that all slogans are distinctive and may be registered just because they are promotional formulas. In paragraph 45 of that judgment, the ECJ stated that ‘in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood — perhaps even primarily understood — as a promotional formula has no bearing on its distinctive character’. This means that the relevant public has to perceive a promotional formula as indicating a source for it to be considered distinctive. In parenthesis, the ECJ seems to have accepted the trade mark at least partly because of its longstanding use.

Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to identify the commercial origin of the goods or services covered.

(21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 59).

This means that the relevant public has to perceive a promotional formula as indicating a source for it to be considered distinctive. This is confirmed in a later judgment (12/07/2012, C‑311/11 P, Wir machen das besondere Einfach, EU:C:2012:460, § 35), in which the Court referred to the judgment of 21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 28-34, and concluded that:

It is thus clear from the analysis made by the General Court that it reached the conclusion that the mark was devoid of distinctive character not on the ground that it was a promotional formula but on the ground that it was not perceived by the relevant public as an indication of the commercial origin of the goods and services concerned.

(12/07/2012, C‑311/11 P, Wir machen das besondere Einfach, EU:C:2012:460, § 35).

As regards the argument that the expression is not commonly used in the market for telecommunication services, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods … In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Furthermore, the applicant refers to a list of slogans commonly used by information technology companies and other sectors, in an Annex 2, in which the applicant’s slogan does not appear.

Annex 2 is not attached to the applicant’s response. However, a slogan does not need to be used in the relevant market to be considered devoid of distinctive character.

‘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 applicant argues that the trade mark is not commonly used in the field of telecommunication services; it is neither used in advertising language nor in a commercial context. However, ‘Although use of the sign by others on the Internet can be a valid indication when considering the applicability of Article 7(1)(b) or (c) [EUTMR], it is not a conditio sine qua non’ (28/06/2007, R 371/2007‑2, PUBLIC STORAGE, § 16).

With regard to the applicant’s reference to the decision of 13/07/2016, R 1071/2016-4, BLUE, § 13-14, the initial assessment in that case was based on the trade mark’s descriptiveness and because of its descriptiveness it was also devoid of distinctive character. The test of that case was based on Article 7(1)(c) EUTMR and not Article 7(1)(b) EUTMR; the decision is therefore irrelevant to the present case.

Therefore, the Office maintains that the trade mark is devoid of distinctive character.

Similar trade marks previously registered by EUIPO

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).

The applicant refers to an Annex 1, which is not available in the applicant’s response. Nonetheless, the applicant has highlighted three previous registrations of similar trade marks, namely EUTMs No 795 989 ‘ARE YOU READY?’ and No 5 572 301 ‘ARE YOU READY FOR NOW?’ and IR No 909 016 ‘WHERE THE BLOODY HELL ARE YOU?’, all of which were registered more than 10 years ago. While the Office must be consistent in its examination of trade marks, its practice changes over time; therefore, references only to similar trade marks registered more than 10 years ago cannot act as indications of current practice.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 887 820 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.

Anja Pernille LIGUNA