Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/08/2019

REDDIE & GROSE LLP

The White Chapel Building

10 Whitechapel High Street

London E1 8QS

REINO UNIDO

Application No:	018009923
Your reference:	T/25559.EM01/PADL/IAT
Trade mark:	TRUE COMPRESSION
Mark type:	Word mark
Applicant:	Better Walk, Inc. 3348 Peachtree Road NE, STE 150 Atlanta Georgia 30326-1440 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 13/02/2019 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 12/06/2019, within the time limit of the first extension, which may be summarised as follows.

1. The examiner has failed to explain what ‘a real compression’ means, other than stating that ‘the relevant consumers would perceive the sign as providing information that the garments and braces etc. provide for real compression’. ‘Real compression’ has no meaning for the English-speaking public, in the context of the goods for which protection is sought, as there is no ‘unreal or non-genuine act of compressing or the condition of being compressed’.

2. The examiner noted the established functions of compression garments. While these are not denied, this analysis fails to explain why the mark, assessed as a whole and not just with reference to the ‘COMPRESSION’ element, is descriptive of the goods in question.

3. Contrary to the examiner’s assessment, the juxtaposition of the words ‘TRUE COMPRESSION’ makes no obvious sense in the English language. It would be unusual for the English-speaking public to place the two words ‘TRUE’ and ‘COMPRESSION’ together because the resultant phrase does not make sense in the English language.

4. ‘TRUE’ is not commonly a descriptor of desirable characteristics of goods. ‘TRUE’ is much more commonly used to describe characteristics of feelings (true love), statements (true statements) or people (true artist, true winner).

5. It is commonly accepted that that only a minimum level of distinctive character is sufficient to render the ground for refusal inapplicable under Article 7(1)(b) EUTMR (06/10/2011, T‑508/08, Loudspeaker, EU:T:2011:575; 27/02/2002, T‑34/00, Eurocool, EU:T:2002:41). A mark is not subject to any threshold of linguistic creativity in order to determine whether it has met a minimum level of distinctive character.

6. The applicant refers to a large number of ‘TRUE’ marks previously accepted for registration by the EUIPO (attached as Annex 1), as well as marks with ‘TRUE’ plus a descriptive word that have previously been accepted for registration by the EUIPO without any additional distinctive feature (attached as Annex 2).

7. The mark ‘TRUE COMPRESSION’ has been accepted for registration by the USPTO.

8. The applicant underscores the principle of equal treatment, referring to two decisions of the second Board of Appeals (07/12/2005, R 1029/2004‑2, VIRTUAL HISTOLOGY, § 16; 06/10/2005, R 149/2005‑2, IPHONE, § 20), and submits that the application should be accepted on the principle of equal treatment.

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.

General remarks on Article 7(1) (b) and (c) EUTMR and Article 7(2)

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. It follows from the wording of the provision, that Article 7(1)(c) EUTMR is not limited to indications designating the type or kind of the goods or services. Article 7(1)(c) EUTMR also covers the intended purpose of the goods and services in the sense of how the goods are meant to be used.

Article 7(1)(c) EUTMR does not require that these characteristics be commercially essential for the product. In light of the public interest underlying the provision, any undertaking must be able to freely use such signs and indications to describe any characteristic of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Descriptiveness must be assessed on the basis of the perception of the mark, as a whole, by the relevant public. It suffices that the relevant public perceives the semantic content of the mark as an informational message, which does not need scientific proof (04/12/2014, T‑494/13, Watt, EU:T:2014:1022, § 33). Article 7(1)(c) EUTMR includes indications that may constitute subjective statements or perceptions for consumers, as long as the semantic message still informs about a feature of the goods, including a positive and desirable feature.

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).

Pursuant to Article 7(1)(b) EUTMR, marks shall not be registered when they are devoid of any distinctive character. Distinctive character within the meaning of Article 7(1)(b) EUTMR means that the mark applied for must serve to identify the goods or services as originating from a particular undertaking, thus distinguishing the goods or services from those of other undertakings (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33; 07/10/2004, C‑136/02 P, Torches, EU:C:2004:592, § 29).

Although each of the grounds for refusal laid down in Article 7(1) EUTMR calls for a separate examination (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 59), there is a substantial overlap between subparagraphs (b) and (c) of Article 7(1) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 18; 10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 47). Descriptive indications are generally devoid of distinctive character (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 33; 14/06/2007, T‑207/06, Europig, EU:T:2007:179, § 47; 26/05/16, T‑331/15, THE SNACK COMPANY, EU:T:2016:323, § 46). A sign may also lack any distinctive character for reasons other than those related to a purely informational meaning (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19).

Article 7(1)(b) EUTMR must be examined with regard to the goods and services for which protection is sought, and also with regard to the perception of the relevant public, who is deemed to be reasonably observant and circumspect (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 34; 27/07/2018, T‑362/17, FEEL FREE, EU:T:2018:390, § 34; 19/06/2014, C‑217/13 & C‑218/13, Oberbank e.a., EU:C:2014:2012, § 39). However, as regards the link with the goods and services for which protection is sought, a sign will lack distinctiveness when its semantic content refers to characteristics or features of the goods or services for which protection is sought without necessarily giving precise information, but when the content refers customers to commercial aspects of the goods or services and incites them to buy or order the goods or services (30/06/2004, T‑281/02, Mehr für ihr Geld, EU:T:2004:198, § 31; 15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 19).

Article 7(2) EUTMR states that paragraph 7(1) applies notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As to the applicant’s arguments

The applicant argues that the examiner has failed to explain what ‘a real compression’ means, other than stating that ‘the relevant consumers would perceive the sign as providing information that the garments and braces etc. provide for real compression’, and that ‘real compression’ has no meaning for the English-speaking public, in the context of the goods for which protection is sought, as there is not an ‘unreal or non-genuine act of compressing or the condition of being compressed’. However, the Office cannot agree with the applicant for the reasons set out below:

The trade mark applied for consists of the English words ‘TRUE’ and ‘COMPRESSION’. They are juxtaposed in accordance with the rules of English grammar and form a single expression. As regards the sign’s first verbal element ‘TRUE’, the Office provided definitions of the word as ‘being of real or natural origin; genuine; real; genuine; authentic; conforming to the ideal character or having all the basic characteristics of such; conforming to a required standard’ (information extracted from the Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/true).

The applicant, however, claims that the word ‘TRUE’ is not commonly a descriptor of desirable characteristics of goods and that ‘TRUE’ is much more commonly used to describe characteristics of feelings (true love), statements (true statements) or people (true artist, true winner). The Office acknowledges that the word ‘TRUE’ has several general meanings and these meanings are well known. Some of the meanings, as provided in the notice of grounds for refusal, are ‘being of real or natural origin; genuine; real; authentic’ (07/07/2011, T‑208/10, Truewhite, EU:T:2011:340). In this sense, the sign would describe that the product for which protection is sought is not just a tight fabric, but one with real abilities to increase blood circulation, reduce muscular vibrations and/or decrease muscle microtrauma in line with the different levels of compression.

However, some other meanings of the word ‘TRUE’ are ‘conforming to a required standard, conforming to the ideal character or having all the basic characteristics of such’. The word ‘TRUE’, which comes before the word ‘COMPRESSION’, can be then understood as ‘conforming to a required standard’. In the field of compression clothing or its accessories (braces), it would mean that the goods conform to a required standard for compression garments(¹). For instance, compression stockings are designed for different compression grades. Compression grades of 20 mmHg or less (at the minimum 8 mmHg) are considered non-medical (²).

Therefore, the word ‘TRUE’ will have merely laudatory and descriptive meaning of the goods for which protection is sought as described in the notice of grounds for refusal.

The Office extracted the definition of the sign’s second verbal element ‘COMPRESSION’ from the Collins Dictionary. The definition constitutes clear evidence of the meaning that the applicant does not dispute.

Considering the combined meaning of the words, the Office maintains that the relevant consumer will understand the combination of ‘TRUE’ and ‘COMPRESSION’ as a meaningful expression. A trade mark consisting of an expression composed of several elements, each of which is descriptive of the characteristics of the goods for which registration is sought, is itself descriptive of those characteristics, unless there is a perceptible difference between the expression and the mere sum of its parts. This assumes that as a result of the unusual nature of the combination of elements in relation to the goods concerned, the expression creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, resulting in the expression being more than the sum of its parts.

The sign in the present proceeding clearly does not meet the abovementioned requirements. Coupling together the elements ‘TRUE’ and ‘COMPRESSION’, without any significant graphic or semantic modification, does not imbue them with any additional characteristic so as to render the sign, taken as a whole, capable of distinguishing the services of the applicant from those of other undertakings (26/10/2000, T‑345/99, Trustedlink, EU:T:2000:246, § 37).

Therefore, the association between the semantic content of the contested mark ‘TRUE COMPRESSION’ and the goods in question is sufficiently concrete and direct to prove that the sign enables the relevant public to identify certain characteristics of those goods immediately. Accordingly, the sign applied for is necessarily devoid of any distinctive character with regard to the goods, within the meaning of Article 7(1)(b) EUTMR (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220).

The descriptiveness of a sign must be assessed on the basis of the perception of a mark as a whole by the relevant public. Therefore, even if the combination of the two words ‘TRUE’ and ‘COMPRESSION’ might not be the usual way to refer to the goods for which protection is sought, it is not relevant to the intrinsic character of the sign. Absolute grounds for refusal of a trade mark are examined based on a perception of the relevant consumers of the goods for which protection is sought, who are reasonably well informed, reasonably observant and circumspect and will understand the sign as indicating that the garments and braces etc. provide for real compression.

The sign applied for has nothing fanciful or arbitrary in relation to the specified goods. There is no originality or word play that could set off a cognitive process in the minds of the relevant public, or that would require some interpretation by the relevant public. In addition, the sign does not possess any particular resonance that could make it surprising or easy to remember. The sign will be perceived as a mere juxtaposition of two descriptive words without any fanciful or arbitrary character when taken as a whole in relation to the compression garments; compression garments, namely, garments for providing partial compression during athletic activities; compression garments for preventing injury during athletic activities; compression garments, namely, socks, knee sleeves, elbow sleeves, shorts, shirts, and gloves; athletic braces for limbs and joints for medical use; medical braces for ankles, knees, elbows, hips, shoulders, feet, hands, hamstrings, quadriceps, calves, biceps, triceps, forearms, wrists, shins, torsos, and backs in Class 9 and athletic braces for non-medical use, namely, muscle training braces to be worn on ankles, knees, elbows, hips, shoulders, feet, hands, hamstrings, quadriceps, calves, biceps, triceps, forearms, wrists, shins, torsos, and backs for support when playing sports in Class 28.

The applicant further argues that registration of a sign as a trade mark is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of the proprietor of the trade mark. The Office can only agree with this argument. However, a mark that, as in the present case, does not possess any originality or resonance requiring at least some interpretation by the relevant public, and that would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the goods at issue to the consumers or end users by enabling them, without any possibility of confusion, to distinguish these goods from others that have a different origin. The simple combination of two easily recognisable elements is not capable of creating an overall impression that is sufficiently far removed from that produced by the combination of meanings lent by the elements of which it is composed, with the result that the meaning of the overall term created is more than the sum of its parts (15/05/2014, T‑366/12, YoghurT‑Gums (fig.), EU:T:2014:256, § 16; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 96, 104; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 37, 43). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no attributes indicating commercial origin in relation to the goods (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

Furthermore, the applicant relies heavily on the equal treatment principle, referring, inter alia, to the decision of 07/12/2005, R 1029/2004‑2, VIRTUAL HISTOLOGY, §16. This decision states that ‘genuinely comparable marks that fall within the grey zone should receive the same treatment, at least if the goods or services covered by the respective applications are in competition.’ However, the Office is of the opinion that none of the registrations referred to by the applicant in Annexes 1 and 2 is genuinely comparable to the present sign, nor are the goods covered by the respective applications in competition. The mere fact that a trade mark referred to by the applicant contains the word ‘TRUE’ or ‘COMPRESSION’ does not make it similar to the sign applied for, nor does it lead to the conclusion that the sign applied for would be distinctive. Every trade mark is assessed on its own merits and the final assessment is based on specific grounds in every particular case. The circumstances that led to the acceptance of other marks cannot be a subject of the objections in the present proceedings, nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at issue.

Moreover, in Annex 1, the applicant cites a number of registered EUTMs consisting of the word ‘TRUE’. However, the sign applied for is a two-word mark, while the registrations in Annex 1 concern a single verbal element ‘TRUE’. It is true that the word ‘TRUE’, when used alone, might not be descriptive and might be allusive of some positive characteristics for some good. This is to be determined on case-by-case basis, taking into consideration the sign in connection with the claimed goods and services.

Although the Office must, in accordance with the principles of equal treatment and sound administration, take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which these principles are applied must be consistent with respect for legality. This is because there can be no equality in injustice and a person who files an application for registration of a sign as a European Union trade mark cannot rely, in order to secure an identical decision, on a possibly unlawful act committed to his or her benefit or to the benefit of someone else.

Moreover, for reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must therefore be undertaken in each individual case, as the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 73-77).

In particular, insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his or her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 75-77).

Even if a mark has achieved registration when it ought not to have, the Office should not compound that error by allowing a second trade mark to remain in the register.

As regards acceptance of the sign in the US, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Therefore, even though it may be taken into consideration, the registration of a trade mark in the US is subject to different legal provisions, jurisprudence and interpretations from that of European Union trade marks (24/01/2008, T‑88/06, Safety 1st, EU:T:2008:15). It follows that it is the trade mark law of the US that determines whether the sign was validly acquired and what scope of protection it has.

Since even registrations made in Member States are not a decisive factor, it follows, a fortiori, that registrations made in non-member countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(b) in combination with Article 7(2) EUTMR were met in those countries.

It follows that the applicant has not succeeded in convincing the Office that the sign ‘TRUE COMPRESSION’ will be perceived by consumers as indicating the commercial origin of the goods in question. The Office maintains that the relevant public cannot perceive the mark other than as a description, in a laudatory/promotional way, of the intended purpose and quality of the goods in question as described in the notification of provisional total refusal of protection on 13/02/2019.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 009 923 is hereby rejected for all the goods claimed.

Under Article 67 EUTMR, you have a right to appeal against this decision. In accordance with 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 for 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.

Michaela POLJOVKOVA