Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/01/2019

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	017961316
Your reference:	T311766JBP
Trade mark:	NATURE’S GOODNESS + REAL SCIENCE
Mark type:	Word mark
Applicant:	Johnson & Johnson One Johnson & Johnson Plaza New Brunswick, New Jersey 08933 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/10/2018 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 5/12/2018, which may be summarised as follows:

1. The Examiner is of the view that the mark would be understood by the relevant public as meaning “the skin preparations, gels, soaps, etc, offered by the applicant contain all nature’s goodness and have been made applying real science”, and would simply be perceived as a promotional laudatory slogan highlighting positive aspects of the goods covered.

2. The Applicant refutes the Examiner’s assertion and notes that the Examiner has provided no substantive explanation as to how exactly these abstract concepts would be understood, and why they would be perceived as positive. As such, it cannot be said that the trade mark NATURE’S GOODNESS + REAL SCIENCE would be immediately perceived by the relevant consumer as conveying any particular information.

3. The trade mark NATURE’S GOODNESS + REAL SCIENCE contains ordinary words, the mark possesses sufficient distinctive character to take it over the threshold to avoid an objection under Article 7(1)(b).

4. The applied mark is distinctive because it constitutes a play on words, and/or introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or triggers in the minds of the relevant public a cognitive process or requires an interpretative effort; has unusual syntactic structures, and/or uses linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.

5. The term NATURE’S GOODNESS is undefined, and consumers will consider what particular part of nature could be contained within the goods, how and why they are incorporated, and how this will benefit the product.

6. The concepts of nature and science in the beauty industry are often viewed as

7. contradictory, as evidenced by a recent article published by the online edition of The Guardian titled “Beauty battle: nature v science” (see Annex 2 of submissions). It is uncommon for a beauty brand to apply both nature and science to products, and the trade mark NATURE’S GOODNESS + REAL SCIENCE is therefore unexpected, making consumers consider the juxtaposition proposed by the mark. Hence, such a combination will make the consumers stop and think.

8. As accepted by the Court of Justice in the case of STREAMSERVE (Case C-150/02) and in TRUSTEDLINK (Case T-345/9), for a trade mark to be refused registration there must be a direct and concrete link between the mark and the goods applied for, without the need for further reflection. For the reasons outlined above, the trade mark NATURE’S GOODNESS + REAL SCIENCE does not advise consumers that the goods are related to skin and hair care products.

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.

1. Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

2. 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).

3. 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).

4. The mark binds two concepts, that the goods are ‘natural’ but also that the goods are based on ‘real science’. Hence, it binds together the non-artificial quality of the goods, which contain the goods of ‘natural’ goods, i.e. non artificial, and the effectiveness of ‘real’ science, not of products which are produced in laboratories, with lots of chemicals that are supposedly backed up by scientific studies, but harm or do not improve the condition of the user, but rather the opposite.

5. The message is purely laudatory. It immediately conveys the user that the products are made of natural ingredients that have been tested and researched with scientific and ‘serious’ methods.

6. Such a message cannot strike or recall the consumer’s imagination. It merely transmits a laudatory message in connection with the industry trends, namely, that cosmetics are based on non-artificial products that are not aggressive to human skin, but on the other hand, products that are effective because they have been tested by scientific methods and research.

7. Such a message cannot overcome the minimum threshold of distinctiveness needed to identify the applicant’s goods with a particular commercial origin, with a particular undertaking, but rather it transmits a vague and laudatory message that can be used for promotional campaigns, advertising, but cannot function as a badge of origin, i.e. function as a trade mark.

8. Furthermore, 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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17961316 is hereby rejected for all the goods 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.

Claudio MARTINEZ MÖCKEL