Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 18/03/2019

KILBURN & STRODE LLP

Lacon London

84 Theobalds Road

London WC1X 8NL

REINO UNIDO

Application No:	017963320
Your reference:	CL/CM/T120366EM
Trade mark:	SUPER INFLUENCER
Mark type:	Word mark
Applicant:	HB ENTERTAINMENT DMCC Unit No: 2873, DMCC Business Centre Level No 1, Jewellery & Gemplex 3 Dubai EMIRATOS ÁRABES UNIDOS

The Office raised an objection on 04/12/2018 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 30/01/2019, which may be summarised as follows.

1. The first element of the mark, ‘SUPER’, does not immediately inform the consumer of one of the qualities or specific characteristics of the goods and services in question. The second element of the mark, ‘INFLUENCER’, is a marketing term, generally only used by certain marketing professionals and not by the relevant consumer public, it is descriptive of individual marketers and it is not descriptive of the products or services they market. The word ‘INFLUENCER’ does not, therefore, suggest to the average consumer a concrete link with the goods and services in the application, and it is, therefore, not descriptive for these goods and services. Moreover, the term used to describe individual marketers that have a large number of followers is ‘MACRO INFLUENCER’ or even ‘MEGA INFLUENCER’.

2. The mark that is being applied for is the combination of these two words i.e. ‘SUPER INFLUENCER’. There is no dictionary definition for ‘Super Influencer’. The link between this mark and these goods and services is not sufficiently direct and the sign does not describe the goods and services or one of their characteristics.

3. For the reasons outlined above the mark SUPER INFLUENCER is not descriptive and is therefore not automatically devoid of distinctive character.

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.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (23/05/1978, C-102/77, Hoffmann-La Roche, EU:C:1978:108; 18/06/2002, C-299/99, Philips/Remington, EU:C:2002:377).

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).

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

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T-222/02, Robotunits, EU:T:2003:315, § 34).

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 EUTMR states that trade marks that consist exclusively of ‘descriptive’ signs and indications shall not be registered. This does not mean that the mark must consist of only elements that designate a characteristic of the goods/services. Rather, this means that the mark as a whole must be regarded as descriptive. This can still be the case when the mark includes other matter, the influence of which is lost when the

mark is considered as a whole.

The Office’s comments are mentioned below respectively about the applicant’s arguments summarised above:

1. The examination of a sign must take account of the sign perceived as a whole by the relevant public. In the current case, the sign is ‘SUPER INFLUENCER’ which has to be assessed in relation to the various goods and services at issue. In that context, the Office maintains its position as stated in its’ notice of ground for refusal of 04/12/2018 with the definition of the verbal element ‘SUPER’ as ‘very good or pleasant; excellent’, and of the verbal element ‘influencer’ as ‘person with the ability to influence potential buyers of a product or service by promoting or recommending the items on social media’. Moreover, influencers are active not only on social media but also in traditional forms of media. They appear in shows and entertainment events in various contexts as a marketing strategy, as shown by the following examples:

https://www.voiceamerica.com/show/2670/in-the-limelight-with-clarissa-burt

Information from the Internet extracted on 29/11/2018:

https://influenceonline.co.uk/2018/07/25/does-love-island-show-us-the-next-phaseofinfluencer-marketing/

Information from the Internet extracted on 29/11/2018:

https://www.purposemedia.co.uk/2018/09/super-influencers-digital-marketing/

Information from the Internet extracted on 29/11/2018:

Furthermore, also the term ‘SUPER INFLUENCER’, contrary to the applicant’s argument, is used in the market to define an influencer who is expert and has a lot of followers, likewise the other terms used to refer to such an expert are ‘MACRO INFLUENCER’ and ‘MEGA INFLUENCER’ mentioned by the applicant. Therefore these are three alternative ways of referring to the same thing. The Office considers that the relevant public will perceive the sign ‘SUPER INFLUENCER’ in relation to the goods and services at issue as information that their content is about excellent influencers or information that the goods or services are offered by an excellent influencer. Therefore, the sign, ‘SUPER INFLUENCER’, seen as a whole, conveys clear and straightforward information about the intended purpose and/or the quality of the goods and services at issue.

2. As to the applicant´s remarks that there is no dictionary definition for ‘Super Influencer’, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32). Additionally, the term ‘SUPER INFLUENCER’ is used in the market as mentioned before. As a conclusion, the sign conveys clear and straightforward information about the intended purpose and/or the quality of the goods and services at issue.

3. Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods of one undertaking from those of its competitors.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 963 320 is hereby rejected for all the goods/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.

Ali KÜÇÜKŞAHİN