Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/11/2019

ASHFORDS LLP

Ashford House Grenadier Road

Exeter EX1 3LH

REINO UNIDO

Application No:	018095917
Your reference:	DPC/CSQ/335644-00009
Trade mark:	SB SIMPLY BUSINESS
Mark type:	Word mark
Applicant:	XBRIDGE Limited Sixth Floor 99 Gresham Street London EC2V 7NG REINO UNIDO

The Office raised an objection on 23/07/2019 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 23/09/2019, and these may be summarised as follows:

1. The applied for mark is not a promotional utterance devoid of distinctive character, nor is it being used by anyone as such.

2. The mark has been rejected for non-distinctiveness under Article 7.1.b EUTMR while cases C-90/11 and C-91/11, to which the Office refers, concern descriptiveness under Article 7.1.c EUTMR.

3. The letters SB at the beginning of the mark SB SIMPLY BUSINESS imbue the mark with inherent distinctive character.

4. The mark has been accepted by the UKIPO.

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 its objection.

General remarks

Pursuant to Article 7(1)(b) EUTMR, EU trade marks which are devoid of any distinctive character, i.e. trade marks that are not capable of distinguishing the goods or services specifically applied for by one undertaking from those of other undertakings, shall not be registered (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60), thus enabling the consumer who purchased the product identified with the trade mark to make his decision on the occasion of a subsequent acquisition on the basis of whether he had a positive or negative experience (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 18).

The distinctive character of a sign must be assessed, first, by reference to the goods or services in respect of which registration is applied for and, second, by reference to the relevant public’s perception of the sign (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34 and 09/09/2010, C-265/09 P, α, EU:C:2010:508, § 32).

The Court of Justice has established that the level of attention of the consumers, regardless of whether they are part of the general public or the professional public, is relatively low when it comes to promotional indications (17/11/2009, T-473/08, Thinking ahead, EU:T:2009:442, § 33). This applies also in the case of a professional public (09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 23).

The EUTM applied for consists of an expression in the English language. The relevant public for the assessment of the distinctive character is the English-speaking public.

A trade mark consisting of an advertising slogan must be regarded as being devoid of distinctive character if it is liable to be perceived by the relevant public as a mere promotional formula. By contrast, such a mark must be recognised as having distinctive character if, apart from its promotional function, it may be perceived immediately by the relevant public as an indication of the commercial origin of the goods and services concerned (21/01/2015, T-11/14, Pianissimo, EU:T:2015:35, § 20 and the case-law cited).

Slogans are often of a laudatory nature. Their very purpose is to persuade potential customers to buy the goods or services of the enterprise in question. Even though an advertising slogan cannot be required to display ‘imaginativeness’ or even ‘conceptual tension which would create surprise and so make a striking impression’ in order to have the minimal level of distinctiveness, a slogan that is banal, commonplace or directly descriptive of a characteristic of the relevant goods or services is unlikely to possess any distinctive character because it will probably not be perceived immediately as an indication of the commercial origin of the goods or services in question. No undertaking should be given a monopoly right to use banal, commonplace or everyday terms to promote its commercial activities. On the other hand, a slogan that is for example original, imaginative and fanciful is far more likely to be able to perform the essential function of a trade mark. (BOA, Case R 219/2019-2, SB Simply Business).

Specific remarks on the applicant’s observations

1. The applied for mark is not a promotional utterance devoid of distinctive character, nor is it being used by anyone as such.

Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis, 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).

As regards the applicant’s argument that no other competitors make use of the same combination, ‘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).

2. The mark has been rejected for non-distinctiveness under Article 7.1.b EUTMR while cases C-90/11 and C-91/11, to which the Office refers, concern descriptiveness under Article 7.1.c EUTMR.

The Office draws your attention to paragraph 18 of Court Case 265/00 BIOMILD:

“In that regard, although it is clear from Article 3(1) of the Directive that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination (see inter alia Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 67), there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 3(1) (see, to that effect, Case C-517/99 Merz & Krell [2001] ECR I-6959, paragraphs 35 and 36).”

(Court Case 265/00 BIOMILD, par. 18)

3. The letters SB at the beginning of the mark SB SIMPLY BUSINESS imbue the mark with inherent distinctive character.

The letters ‘SB’ are an acronym of the words `SIMPLY BUSINESS´. As such, they draw attention to the words ‘SIMPLY BUSINESS’ and the message communicated by them. Therefore, it will be perceived by the relevant public as an abbreviation of the words ‘SIMPLY BUSINESS’. It follows that the abbreviation ‘SB’ is non-distinctive because both the abbreviation ‘SB’ and the words ‘SIMPLY BUSINESS’ are intended to clarify each other and draw attention to the fact that they are linked and therefore reinforce the promotional message conveyed by the sign at issue.

4. The mark has been accepted by the UKIPO. As regards the national decisions referred to by the applicant, 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).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 018095917 is hereby rejected.

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.

Jean Marc SCHULLER

Jean Marc SCHULLER