Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 12/08/2020

Fieldfisher Ireland

The Capel Building Mary's Abbey

Dublin 7 D07 N4C6

IRLANDA

Application No:	018212018
Your reference:	UK01-021493.02639
Trade mark:	ADVISORS TO THE AMBITIOUS
Mark type:	Word mark
Applicant:	EYGN Limited One Montague Place East Bay Street Nassau LAS BAHAMAS

The Office raised an objection on 28/05/2020 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 28/07/2020, which may be summarised as follows:

1. The Office has not analysed the services applied for and the sign in question as a whole.

2. The Office based its assessment on the literal meanings of the words provided by dictionaries and did not take into account the imaginative nature of the word “AMBITIOUS”.

3. The mark at issue is vague and thus there is a mental step needed to understand it in relation to the objected services.

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 Article 7(1)(b) EUTMR

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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).

Response to the applicant’s arguments

1. The Office agrees with the applicant’s claim that there is no direct, specific and unequivocal descriptive meaning of the mark at issue for the services applied for. It should be however stressed that the objection has been raised under Article 7(1)(b), not Article 7(1)(c), thus the rules related to descriptive character do not apply in the present case. Moreover, the Office points out that even though a given term might not be clearly descriptive of the goods and services concerned, to the point that an objection under Article 7(1)(c) EUTMR would not apply, the term might still be objectionable under Article 7(1)(b) EUTMR on the ground that it would be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin. For example, the term ‘medi’ has been considered to merely provide information to the relevant public about the medical or therapeutic purpose of the goods or their general reference to the medical field (12/07/2012, T- 470/09, Medi, EU:T:2012:369, §23). The Office also ensures that the sign in question has been assessed as a whole, which can be seen for example in the following part of the objection letter: “[t]he relevant consumer would perceive the mark as indicating that the advisors providing the services applied for will work towards ambitious objectives because they are accustomed to providing advice for ambitious clients”. That message conveyed by the sign in question is perceived when assessing the mark as a whole.

As regards the analysis of the applicant’s services, when making its assessment, the Office may globally address goods and services where the message is sufficiently generic to apply to categories of goods and services (31/05/2016, T- 301/15, Du bist, was du erlebst, EU:T:2016:324, §47). In the present case, the message of the sign in question is wide enough to apply to all the services for which an objection has been raised, as they can be provided by people who specialize in advising clients with an ambitious outlook.

2. The applicant claims that the Office based the objection on the common meanings of the words without identifying the role of “AMBITIOUS” in the mark at issue. The Office did note the impact of “AMBITIOUS” but it significantly differs from the applicant’s perspective because, according to the observations, the inclusion of “AMBITIOUS” within the sign in question is imaginative, unusual and triggers in the minds of the relevant public a cognitive process or requires an interpretative effort, whereas the Office holds that this word evokes positive connotations such as being goal-oriented or willing to take risks and these are desirable qualities in the business, financial and technological fields within which the applicant provides assistance and guidance. None of the characteristics mentioned by the applicant can be associated with the word “AMBITIOUS” in the mark at issue. Therefore, the word “AMBITIOUS” does not go beyond its promotional nature.

3. The applicant’s argument 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, is not sufficient to make it distinctive. Those various elements make a sign distinctive only insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin (15/09/2005, T- 320/03, Live richly, EU:T:2005:325, §84). Such a situation does not pertain in the present case because there is nothing that would be perceived as a badge of origin. If one is ambitious, one has a strong desire for success or achievement. Advisors to the ambitious is a meaningful expression which also communicates that, as indicated in the objection letter, the advisors will work towards ambitious objectives because they are accustomed to providing advice for ambitious clients. Accordingly, the mark at issue is merely a promotional laudatory slogan.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 212 018 is declared to be non-distinctive pursuant to Article 7(1)(b) in the United Kingdom, Ireland, Malta and the countries where English is well understood, namely Cyprus, Denmark, Finland, the Netherlands and Sweden for all the services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Richard THEWLIS