Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/12/2019

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Application No:	018111300
Your reference:	21332-19_CS/ase
Trade mark:	NEXT LEVEL BURGER
Mark type:	Word mark
Applicant:	Next Level Burger Company, Inc. 70 SW Century Drive Bend Oregon 97702 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 11/09/2019 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 23/10/2019, which may be summarised as follows:

• The definition of the phrase ‘next level’ provided in the Office notification is not correct. The Urban Dictionary is not an established English-language dictionary. It is a platform operated from and mainly targeting users in the United States of America, which enables anyone to put forward definitions for words or phrases. Thus, entries are often words or phrases that are not readily understood by the average English-speaking consumer, and in particular not by the English-speaking consumer in the European Union.

• ‘NEXT LEVEL’ is not perceived as devoid of any distinctive character by the average English-speaking consumer in the United States. The applicant applied for the trade mark ‘NEXT LEVEL BURGER’ for restaurant services in the US on 01/06/2015 and the trade mark was registered on 16/02/2016.

• EUTMs consisting of or containing the phrase ‘NEXT LEVEL’ have been registered by the Office. These are ‘NEXT LEVEL’ (No 17 268 525), ‘Nature Next Level’ (No 17 994 172), ‘NEXT LEVEL NUTRITION’ (No 14 507 669), ‘NEXT LEVEL SOLUTIONS’ (No 15 613 227), ‘Next Level Publishing’ (No 12 314 613), ‘Next Level Thinking’ (No 10 512 812), ‘Working Next Level’ (No 13 962 626).

• In opposition proceedings (B 3 035 741, B 2 970 773, B 1 831 265, B 1 816 001), the Office found that the phrase ‘NEXT LEVEL’ is weak but not devoid of any distinctiveness. In appeal proceedings regarding an opposition (29/09/2011, R 1992/2010-1) the Boards of Appeal considered that the phrase ‘NEXT LEVEL’ possesses a sufficient distinctive character to perform the essential function of a trade mark.

• A trade mark may have both a laudatory and distinctive character.

• The phrase ‘NEXT LEVEL’ means ‘the immediately following position’ (29/09/2011, R 1992/2010-1, paragraph 23), usually one that is ‘higher up’, either in a literal or a figurative sense. To the average English-speaking consumer, this phrase suggests either a physically more elevated position, for example in a building with several storeys, or a new, metaphorically speaking, more ‘elevated’ and simultaneously more ambitious and challenging phase, for example in a computer game.

• The average English-speaking consumer does not perceive ‘NEXT LEVEL BURGER’ as a normal and common way of promoting the quality of veggie burger patties, plant-based burger patties and restaurant services, as opposed to expressions such as ‘GREAT BURGER’, ‘BEST BURGER’ and ‘TASTY BURGER’, for example.

• The Office has accepted the following trade marks containing the word ‘BURGER’: ‘THE BEYOND BURGER’ (No 1 322 180), ‘BADASS BURGER’ (No 10 029 833), ‘HONEST BURGERS’ (No 11 893 617), ‘LITTLE BIG BURGER’ (No 16 916 488), ‘VEGGIEBURGER’ (No 10 864 338), ‘SLOW COOKING BURGER’ (No 14 830 368), and (No 10 040 954).

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 goods and services for which protection is sought are the following:

Class 29 Veggie burger patties; plant-based burger patties.

Class 43 Restaurant services.

These goods and services target the public at large whose degree of attention is deemed at most average.

The mark applied for is the word mark ‘NEXT LEVEL BURGER’.

Article 7(1)(b) EUTMR – Lack of 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).

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).

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). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

In its previous notification, the Office provided the definition of the phrase ‘NEXT LEVEL’ as ‘above average’ (information extracted from Urban Dictionary on 11/09/2019 at https://www.urbandictionary.com/define.php?term=next%20level).

The applicant contends this definition stating that the Urban Dictionary is not a reliable source, it reflects at most the understanding of the phrase in the United States and the English-speaking consumers in the European Union will not have this understanding of the phrase.

In support of its previous argument, the Office makes the following references to dictionaries and other sources of information accessible online regarding the meaning of the phrase ‘NEXT LEVEL’:

• ‘surpassing others: uncommonly good or impressive’ (information extracted from Merriam-Webster on 05/12/2019 at https://www.merriam-webster.com/dictionary/next-level)

• ‘a significantly more advanced or unusual state or situation’ (information extracted from Wiktionary on 05/12/2019 at https://en.wiktionary.org/wiki/next_level).

• ‘impressive; good or great’ (information extracted from The Online Slang Dictionary on 05/12/2019 at http://onlineslangdictionary.com/meaning-definition-of/next-level)

• ‘very good, advanced or successful’ (information extracted from Cambridge Dictionary on 05/12/2019 at https://dictionary.cambridge.org/dictionary/english/next-level).

As can be seen from the numerous sources of information cited above, the phrase ‘NEXT LEVEL’ means generally ‘having better qualities, surpassing others, being more advanced’. The fact that the Urban Dictionary and Merriam-Webster are US dictionaries does not lead to the conclusion that the phrase ‘NEXT LEVEL’ will be understood with the above meaning only in the United States of America. While it is true that American and British English have some differences, in terms of globalisation and cross-border exchange of knowledge and trends, it is likely that the English-speaking consumers in the European Union will also have the same understanding of that phrase. Moreover, the reference to the Cambridge Dictionary shows in a sufficiently precise way that this meaning is known not only to Americans but also to British people and, thus, to at least a significant part of the English-speaking public in the European Union.

As regards the applicant’s argument that ‘NEXT LEVEL’ will be understood as meaning ‘immediately following position’ as established by the Boards of Appeal in the decision of 29/09/2011, R 1992/2010-1, NEXT LEVEL PARTNERS / NEXT et al., § 23, this definition has been provided in conjunction with the noun ‘PARTNERS’. The mark in the present case is ‘NEXT LEVEL BURGER’ and not ‘NEXT LEVEL PARTNERS’.

As regards the US registration of the mark for restaurant services, 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).

As regards the applicant’s argument that a number of registrations consisting of or containing the word ‘NEXT LEVEL’ or ‘BURGER’ 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).

Furthermore, the majority of the registrations referred to by the applicant contain additional words, such as ‘Nature’, ‘NUTRITION’, ‘SOLUTIONS’, ‘HONEST’, ‘SLOW COOKING’, or a figurative element and a stylisation of the sign, for example , which are not present in the current application.

The applicant argued that, in contrast to ‘GREAT BURGER’, ‘BEST BURGER’, ‘TASTY BURGER’, ‘NEXT LEVEL BURGER’ is not non-distinctive for burgers and restaurant services. This argument cannot be accepted because the denominations referred to by the applicant are not subject to the current proceedings. In addition, it is irrelevant for the purpose of the current assessment if there are signs which are hypothetically less-distinctive than the sign at issue. The hypothetical or real existence of signs which are less distinctive than the sign at issue does not render the latter distinctive, not even to a minimum degree.

The applicant’s argument that a trade mark may have both a laudatory and a distinctive character does not lead to the conclusion that the mark at issue possesses a minimum degree of distinctive character.

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 above principle applies by analogy to laudatory terms which may simultaneously have promotional and trade mark functions only when they are perceived immediately as an indication of the commercial origin of the goods or services in question. This also complies with the applicant’s argument supported by case-law according to which if the public perceives the mark as an indication of trade origin, it is irrelevant that the mark will be understood at the same time as a promotional formula. Nevertheless, the mark at issue is non-distinctive because it is a purely promotional formula without any capacity to designate trade origin. In the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services in question, namely that the applicant’s veggie burger patties and plant-based burger patties are outstanding, that is, above average, and also the restaurant services include preparing and offering good, above-average burgers.

As regards the findings of the Opposition Divisions in opposition proceedings where the mark or phrase ‘NEXT LEVEL’ has been involved, the Office is not bound by previous registrations, let alone by findings in proceedings that are not examination proceedings.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 111 300 is hereby rejected for all the goods and 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.

Ivo TSENKOV