DECISION

of the Second Board of Appeal

of 13 January 2017

In Case R 1036/2016-2

 

Abbott Laboratories
100 Abbott Park Road Abbott Park, Illinois 60064 United States of America	Applicant / Appellant

represented by BAKER & MCKENZIE LLP, 100 New Bridge Street, London EC4V 6JA, United Kingdom

APPEAL relating to European Union trade mark application No 14 898 936

THE SECOND BOARD OF APPEAL

composed of T. de las Heras (Chairperson), C. Negro (Rapporteur) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

---

Decision

Summary of the facts

1. By an application filed on 10 December 2015, Abbott Laboratories (‘the applicant’) sought to register the word mark

VIVI LA VITA INTENSAMENTE.

for the following list of goods and services:

Class 5 − Pharmaceutical products; medical reagents; infant formula; nutritional supplements; ophthalmic formulations; lubricant eye drops for contact lenses; eye care treatments and preparations, namely eye drops;

Class 9 − Scientific apparatus and instruments and parts and fittings therefor; laboratory apparatus and instruments and parts and fittings therefor; sequencers; spectrometers; sensors; biosensors; thermocyclers; sample preparation instruments; test and collection kits consisting of collection apparatus and laboratory devices; laboratory containers; computer hardware and software for laboratory and scientific apparatus and instruments; computer hardware and software for medical diagnostic apparatus and instruments; bio-identification apparatus that enables identification, genotyping and characterization for analysis of nucleic acid sequences, nucleic acids, genetic materials, infectious agents and/or pathogens for scientific use; bead beaters; DNA preparation bead beating tubes; RNA preparation bead beating tubes; DNA preparation process tubes; RNA preparation process tubes; DNA preparation elution tubes; RNA preparation elution tubes; enzyme mix vials; enzyme mix tubes;

Class 10 − Medical and surgical apparatus and instruments; medical diagnostic instruments; medical devices, namely an ophthalmic measurement system; devices for ophthalmic surgery;

Class 16 − Printed matter, namely pamphlets, brochures, newsletters and publications relating to global citizenship, corporate responsibility programs and healthcare topics, medical conditions, products and treatments, community and environmental issues;

Class 29 − Liquid nutritional products in the form of dairy-based beverages, bouillon, broth, soup and chowder; dairy-based beverages containing fortified nutrients for use as a healthy snack; protein-based, nutrient-dense snack bars; shakes;

Class 35 − Promoting public awareness and advocacy in the field of health, global citizenship and corporate social responsibility programs; Promoting global citizenship and corporate social responsibility programs that promote innovation, science, access to health care, community involvement, safeguarding the environment, wellness and health; providing information regarding global citizenship and corporate social responsibility programs that promote innovation, science, access to health care, community involvement, safeguarding the environment, wellness and health;

Class 42 − Scientific and technological research and development services, medical testing for diagnostic or treatment purposes and biomarker discovery services; providing technical support services regarding diagnostic laboratory instruments and systems;

Class 44 − Providing health information services, namely, providing information to healthcare providers, consumers and patients on topics of nutrition, vascular, diabetes, molecular and diagnostic diagnosis and treatment; providing a website and social media outlets featuring information about health and wellness, global citizenship and corporate social responsibility programs.

2. On 28 December 2015, the examiner sent the applicant a letter of provisional refusal of protection on the grounds that the application did not appear to be eligible for registration under Article 7(1)(b) EUTMR in conjunction with Article 7(2) EUTMR, in respect of some of the goods and services applied for in Classes 5, 16, 29, 35 and 44, for the following reasons:

• The objectionable goods and services covered by the mark applied for are everyday consumption/mass consumption goods and services and are mainly aimed at average consumers. In view of the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark is composed of Italian words, the relevant public with reference to whom the absolute grounds for refusal must be examined is the Italian-speaking consumer in the EU.
• The trade mark consists of the words ‘VIVI LA VITA INTENSAMENTE’ with the following meaning(s): ‘VIVI’ from verb ‘VIVERE’ – to live; ‘LA VITA’ – life and ‘INTENSAMENTE’ intensely, of extreme force, strength, degree, or amount (http://www.collinsdictionary.com).
• The relevant consumer will understand the words as a meaningful expression: ‘Live the life intensively’.
• The relevant public would perceive the expression ‘VIVI LA VITA INTENSAMENTE’ as a laudatory promotional message, the function of which is to describe a characteristic of the goods and services and communicate an inspirational or motivational statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services concerned, namely that the goods are health-related/medical/nutritional/healthy lifestyle etc. goods, or goods that contain information about health-related/healthy lifestyle issues, all which promote and provide for general well-being, better health, a healthier lifestyle, better nutritional etc. condition of the body and that the services are promotional and medical services that assist in obtaining better health, a healthier lifestyle and living a better, more intense life.
• There is nothing about the expression in the mark that might, beyond its obvious laudatory promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question.

3. On 23 February 2016, the applicant responded to the provisional refusal.
4. On 29 April 2016, the examiner took a decision (‘the contested decision’) partially refusing the trade mark applied for pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR with regard to the following goods and services:

Class 5 − Pharmaceutical products; medical reagents; infant formula; nutritional supplements; ophthalmic formulations; lubricant eye drops for contact lenses; eye care treatments and preparations, namely eye drops;

Class 16 − Printed matter, namely pamphlets, brochures, newsletters and publications relating to healthcare topics, medical conditions, products and treatments;

Class 29 − Liquid nutritional products in the form of dairy-based beverages, bouillon, broth, soup and chowder; dairy-based beverages containing fortified nutrients for use as a healthy snack; protein-based, nutrient-dense snack bars; shakes;

Class 35 − Promoting public awareness and advocacy in the field of health; Promoting corporate social responsibility programs that promote access to health care, wellness and health; providing information regarding corporate social responsibility programs that promote access to health care, wellness and health;

Class 44 − Providing health information services, namely, providing information to healthcare providers, consumers and patients on topics of nutrition, vascular, diabetes, molecular and diagnostic diagnosis and treatment; providing a website and social media outlets featuring information about health and wellness, global citizenship and corporate social responsibility programs.

5. The contested decision can be summarised as follows:

• The fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist.
• The fact 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, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin.
• 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.
• A sign must be refused registration under Article 7(1)(c) EUTMR, if at least one of its possible meanings designates a characteristic of the goods and services concerned (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 32).
• As regards the applicant’s argument that a number of similar registrations 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. Furthermore, the marks mentioned are different from the present one.

6. On 8 June 2016, the applicant filed an appeal against the contested decision in its entirety. The statement of grounds of the appeal was received on 15 August 2016.

Grounds of appeal

7. The arguments raised in the statement of grounds may be summarised as follows:

Violation of Article 75 EUTMR

• The contested decision is vitiated by a substantial procedural violation under two different perspectives, both covered by Article 75 EUTMR.

New reference to Article 7(1)(c) EUTMR

• The contested decision contains a new reference to Article 7(1)(c) EUTMR and the case-law in support of the refusal of the contested mark.
• Since the provisional notice of refusal was only based on Article 7(1)(b) EUTMR, the applicant was denied the opportunity to present observations with respect to Article 7(1)(c) EUTMR, which was only introduced in the contested decision.

Duty to state reasons

• The contested decision consists almost entirely of quotes from Court judgments whereas the very few parts containing a concrete analysis of the sign are copy-pasted paragraphs of the provisional notice of refusal.
• The contested decision contains generic statements and does not include the specific and concrete reasons why it decided to maintain the objection. It does not enable the applicant to know and understand the justification for the refusal of the contested mark notwithstanding the new arguments and evidence that were provided in support of a finding of distinctive character. The contested decision should be annulled because of a substantial violation pursuant to Article 75 EUTMR.

The examiner erred in concluding that the contested mark lacks distinctive character pursuant to Article 7(1)(b) EUTMR

• The contested decision merely reiterates what was stated in the provisional notice of refusal. The examiner did not substantiate his findings regarding the lack of distinctiveness of the sign. He merely highlighted the fact that the mark consists of, and is understood as, a promotional formula.
• The sign lacks any link to the goods and services considered objectionable by the examiner.
• It is true that ‘VIVI LA VITA INTENSAMENTE’ (i.e. ‘LIVE LIFE INTENSELY’) conveys a positive, ‘inspirational message’. However, it lacks any link to the contested goods and services. It merely exhorts consumers to live life ‘intensely’, but does not highlight positive aspects of the contested goods and services, as supported by previous Board of Appeal decisions already cited by the applicant (14/04/2015, R 2090/2014-2, LIVE LIFE COMFORTABLY, § 28 as regards EUTM No 8 307 753 ‘LIVE LIFE VIVIDLY’ registered for, inter alia, cosmetics in Class 3: ‘To “LIVE LIFE VIVIDLY” says nothing about cosmetics, since the slogan merely exhorts somebody to live at a more intense level. Several steps have to be taken to arrive at the goods’ 20/02/2012, R 1391/2011-2, SPICE UP YOUR LIFE, § 31).
• Even though the Office is not bound by its prior decisions, it is also true that reference to previous decisions may be relevant for the case at stake.
• The cases referred to are highly relevant and should have been taken into account by the examiner for the following reasons:

‘To live life vividly’, and ‘to live life intensely’ are in fact very close from a conceptual standpoint. They are both inspirational statements, without however, expressing any inherent quality of the goods and services involved (cosmetics and health-related products and services respectively);

‘SPICE UP YOUR LIFE’ is also a motivational statement. Nevertheless, the Boards of Appeal decided that it contained no clear and direct information concerning the relevant goods and services.

• The expression ‘VIVI LA VITA INTENSAMENTE’ requires a certain degree of interpretation on the part of consumers, who will be unable to associate the sign directly with the goods and services at issue.
• Italian consumers could interpret the sign in different ways, for example as ‘live your life with an intense feeling’; ‘live your life to an extreme degree’; ‘live your life with extreme force or strength’. Be that as it may, the expression does not highlight positive aspects of the goods and services concerned. As a matter of fact, it is not clear why an intense life should entail a healthy life, as assumed by the examiner.
• The examiner’s conclusion, that is, that health-related goods and services lead to a better life and therefore to a more intense life shows that the link is not at all direct and that it is the examiner’s personal perception of the mark.
• The relationship between the contested mark and the goods and services concerned is only remotely evocative. The contested mark is, therefore, capable of identifying the commercial origin of the goods and services at issue and of distinguishing those goods and services from those of other undertakings.
• The sign is not commonly used on the market.
• The fact that the contested mark is able to function as a trade mark is also supported by research carried out within the Google Italy search engine. Where a Google search based on the words ‘VIVI LA VITA INTENSAMENTE’, showed that this combination of words is used but never in relation to health, health-related/medical/nutritional/healthy lifestyle, as wrongly assumed by the examiner.
• The outcome of the Google search is another relevant factor for the case at stake because it demonstrates that the expression is not commonly used on the relevant market. On the contrary, the contested mark will be perceived by the Italian public as an abstract message, leading to reflections about the meaning of life and why life should be lived ‘intensely’, at the fullest.
• The sign will be easily memorized by relevant consumers as a distinctive trade mark. The sign ‘VIVI LA VITA INTENSAMENTE.’ will be understood as a motivational statement. Furthermore, it will also be easily and instantly memorized by consumers as a distinctive trade mark since there is no relationship between the expression and the goods and services covered by the objection (17/11/2015, R 203/2015-4, TI AMO).
• A minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) EUTMR.

Reasons

Preliminary remark on the applicable Regulations

8. The EU trade mark application was filed before the entering into force (on 23 March 2016) of the new European Trade Mark Regulation (EUTMR) which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (CTMR) is applicable to this appeal (04/10/2016, T-549/14, Castello / Castellò (fig.) et al., EU:T:2016:594, § 33), at least for non-strictly procedural provisions (13/06/2013, C 346/12 P, Milram, EU:C:2013:397, § 2). However, for easy reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, albeit the material changes in the Regulation will not be applied to the case at hand.
9. Since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will keep on referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).

Admissibility

10. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Violation of Article 75 EUTMR

11. The applicant argues that the ground for refusal under Article 7(1)(c) EUTMR was raised for the first time in the contested decision without allowing the applicant to give its comments.
12. According to the Board, it is clear from the conclusion of the contested decision that the mark applied for was refused under Article 7(1)(b) EUTMR only. However, the applicant rightly points out that Article 7(1)(c) EUTMR was mentioned in one of the paragraphs of the contested decision. The Board considers that this was an error as there is no specific reasoning in the contested decision as to a refusal based on Article 7(1)(c) EUTMR. Therefore, the applicant’s right to be heard was not infringed.
13. In any case, it is sufficient for a mark to be refused if one of the grounds for refusal applies, i.e. Article 7(1)(b) EUTMR.
14. The applicant’s argument that the contested decision was not sufficiently motivated will be addressed hereinafter. In this regard, it must be recalled that the examiner’s provisional refusal forms part of the contested decision. The arguments raised by the applicant before the examiner were basically the same as those submitted in the statement of grounds of appeal.

Article 7(1)(b) EUTMR

15. Article 7(1)(b) EUTMR provides that trade marks which are devoid of any distinctive character must not be registered. Article 7(2) of that Regulation provides that Article 7(1) EUTMR is to apply notwithstanding that the grounds of non-registrability obtain in only part of the EU.
16. According to settled case-law, the distinctiveness of a mark within the meaning of that Article means that the mark serves to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (21/10/2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; 08/05/2008, C304/06 P, Eurohypo, EU:C:2008:261, § 33).
17. The marks referred to in Article 7(1)(b) EUTMR are those which are regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services in question, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T34/00, Eurocool, EU:T:2002:41, § 37; 20/01/2009, T424/07, Optimum, EU:T:2009:9, § 20).
18. According to settled case-law, the 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. A mark which, like an advertising slogan, 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 however 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 proprietor of the mark from those of a different commercial origin (03/07/2003, T122/01, Best Buy, EU:T:2003:183, § 21; 26/11/2008, T184/07, A new alternative, EU:T:2008:532, § 22).
19. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (12/07/2012, C311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 25 and the case-law cited therein).
20. However, it is apparent from the Court’s case-law that, whilst the criteria for assessing distinctiveness are the same for the various categories of trade mark, it may become apparent, when applying those criteria, that the relevant public’s perception is not necessarily the same in relation to each of those categories and that, therefore, it may prove more difficult to establish the distinctiveness of the marks in certain categories than of those in other categories (21/10/2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 34; 21/01/2010, C398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 37).
21. While the Court has not excluded the possibility that that case-law may, in certain circumstances, be relevant to word marks consisting of advertising slogans, it has however stated that difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in the case-law referred to above (21/10/2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 3536; ; 21/01/2010, C398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 38).
22. For there to be a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the product or service in question (30/06/2004, T281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31; 12/03/2008, T128/07, Delivering the essentials of life, EU:T:2008:72, § 20).
23. Again, according to settled case-law, distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (12/07/2012, C311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 24 and the case-law cited therein), constituted by average consumers of those goods or services (12/03/2008, T128/07, Delivering the essentials of life, EU:T:2008:72, § 21).

Relevant public

24. The contested decision identified the relevant public for the goods and services specified as average consumers, who were reasonably well-informed and reasonably observant and circumspect. It also refers to ‘a specialist public’ without any further explanation.
25. According to the Board, the general public’s attention may be considered to be higher than average considering that the goods and services at hand relate to their health. Furthermore, the rejected goods and services also target a professional public (healthcare providers) who normally display a high level of attention. However, their awareness is liable to be relatively low, on the other hand, when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T130/01, Real People, Real Solutions, EU:T:2002:301, § 24).
26. Since the mark applied for is made up of Italian terms, its distinctiveness must be assessed, first of all, with respect to the Italian-speaking public.

Distinctiveness: the relevant public’s perception

27. As regards the perception of the sign ‘VIVI LA VITA INTENSAMENTE.’ by the relevant public, the applicant does not contest that it will be understood as ‘live life intensively’ by the Italian-speaking public.
28. The applicant argues that ‘intensively’ may be interpreted in different ways, for example as ‘with an intense feeling’; ‘to an extreme degree’; ‘with extreme force or strength’. However, all these expressions have very similar meanings so that it cannot be held that the contested sign may have different meanings. In any case, the fact that the sign in question may have a number of meanings is not sufficient for it to be regarded as distinctive.
29. In relation to the goods and services applied for, the expression ‘VIVI LA VITA INTENSAMENTE.’ will be perceived as purely promotional information that is intended merely to highlight, even though in an indirect way, positive aspects of the goods and services in question, as held by the examiner. For a finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark in question indicates to the consumer a characteristic of the product relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 29, 30). In addition, the mere fact that the word mark ‘VIVI LA VITA INTENSAMENTE.’ does not convey any information about the nature of the goods and services concerned is not sufficient to make that sign distinctive (30/04/2003, T707/13 & T709/13, BE HAPPY, EU:T:2015:252, § 25, 32).
30. The examiner held that the refused goods were health-related/medical/nutritional/healthy lifestyle goods, or goods that contain information about health-related/healthy lifestyle issues,  which all promote and provide for general well-being, better health, a healthier lifestyle, better nutritional etc. condition of the body. It is correct that the refused goods in Class 5 (‘pharmaceutical products; medical reagents; infant formula; nutritional supplements; ophthalmic formulations; lubricant eye drops for contact lenses; eye care treatments and preparations, namely eye drops’) are health-related products, that the refused goods in Class 29 (‘liquid nutritional products in the form of dairy-based beverages, bouillon, broth, soup and chowder; dairy-based beverages containing fortified nutrients for use as a healthy snack; protein-based, nutrient-dense snack bars; shakes’) are healthy nutritional products and that the refused goods in Class 16 (‘printed matter, namely pamphlets, brochures, newsletters and publications relating to healthcare topics, medical conditions, products and treatments’) relate to ‘healthcare topics, medical conditions, products and treatments’. In relation to such products, the expression ‘VIVI LA VITA INTENSAMENTE.’ cannot be perceived as an indication of origin as it merely promotes one to live life to the fullest thanks to these health-related products. Good health makes it possible to lead an intense life in terms of length as well as mental and physical strength to the utmost extent. Thus, it is banal to link health-related goods with the idea of an intense life.
31. The examiner also correctly held that the refused services are promotional (‘promoting public awareness and advocacy in the field of health; promoting corporate social responsibility programs that promote access to health care, wellness and health; providing information regarding corporate social responsibility programs that promote access to health care, wellness and health’ in Class 35) and medical services (‘providing health information services, namely, providing information to healthcare providers, consumers and patients on topics of nutrition, vascular, diabetes, molecular and diagnostic diagnosis and treatment; providing a website and social media outlets featuring information about health and wellness, global citizenship and corporate social responsibility programs’ in Class 44) that assist in obtaining better health, a healthier lifestyle and living a better, more intense life therefore.
32. Thus, the examiner duly motivated his decision as to the link made between the meaning of the mark applied for in relation to the rejected goods and services.
33. Considering the above, the applicant’s argument that the relationship between the contested mark and the goods and services concerned is only remotely evocative is rejected.
34. There is nothing in the expression ‘VIVI LA VITA INTENSAMENTE.’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods and services concerned (09/07/2008, T-70/06, Vorsprung durch Technik, EU:T:2008:266, § 46). The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28). The expression applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It does not have a certain originality and resonance which makes it easy to remember, cf. 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 59. Therefore, the relevant public will not perceive it as an indication of the commercial origin of the goods and services in question, as held by the examiner.
35. Since the relevant consumer is not very attentive if a sign does not immediately indicate to him/her the origin and/or intended use of the object of his/her intended purchase, but just gives him/her purely promotional, abstract information, he/she will not take the time either to enquire into the sign’s various possible functions or mentally to register it as a trade mark (05/12/2002, T130/01, Real People, Real Solutions, EU:T:2002:301, § 29; 15/09/2005, T320/03, Live richly, EU:T:2005:325, § 74).
36. As to the applicant’s argument that the expression is not commonly used on the relevant market, it is true that the examiner did not reply to this. However, it is sufficient to observe that the lack of current use of the slogan at issue in business, including for the specific goods and services at issue, is not sufficient to endow it with distinctive character, it being sufficient, on the contrary, that the potential use of that expression in the relevant field determinates its non-registrability on the grounds of Article 7(1)(b) EUTMR. The trade marks concerned by Article 7(1)(b) EUTMR, unlike those concerned by Article 7(1)(d) EUTMR (which is not at issue here), are not only those which are commonly used in trade for the presentation of the goods or services concerned, but also those which are merely capable of such use (see, to that effect, 30/06/2004, T281/02, Mehr für Ihr Geld, EU:T:2004:198, § 33, and the case-law cited therein, and 21/10/2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 3840). Given that the sign applied for consists of a banal promotional expression with regard to the goods and services at issue, it is capable of being in common usage in trade for the presentation of the goods and services concerned (see by analogy, 20/01/2009, T424/07, Optimum, EU:T:2009:9, § 24). Consequently, the fact that the contested decision did not comment on that irrelevant argument cannot lead to the contested decision being annulled.
37. Regarding the Board of Appeal decisions cited by the applicant, the examiner rightly held that the Office was not bound by previous decisions and that the marks mentioned were different from the present one. Thus, the examiner did take into account the marks mentioned, contrary to the applicant’s claim.
38. In this regard, it is recalled that the decisions concerning the registration of a sign as an EU trade mark which EUIPO takes under EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of EUIPO decisions must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (26/04/2007, C412/05 P, Travatan, EU:C:2007:252, § 65; 03/07/2013, T243/12, Aloha 100% natural, EU:T:2013:344, § 43). Furthermore, according to settled case-law, the EUIPO must, when examining an application for registration of an EU trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether or not it should decide in the same way. Nonetheless, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of 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 be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the present case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/02/2015, T106/14, Greenworld, EU:T:2015:123, § 37 and the case-law cited; see also, to that effect, 10/03/2011, C51/10 P, 1000, EU:C:2011:139, § 74-77). This applies to the present case.
39. Further, the marks cited by the applicant are not the same as the one in the present case so that the factual circumstances are different.
40. The decision of 14/04/2015, R 2090/2014-2, LIVE LIFE COMFORTABLY, concerns the registrability of the mark ‘LIVE LIFE COMFORTABLY’ not the mark ‘LIVE LIFE VIVIDLY’. The comments made at paragraph 28 of the above mentioned decision, as regards EUTM No 8 307 753 ‘LIVE LIFE VIVIDLY’ registered for, inter alia, cosmetics in Class 3, are not applicable to the present case as unlike pharmaceuticals and nutritional products, which are the relevant goods in the present case, cosmetics have no impact on a healthy lifestyle which is related to intense living in the sense as previously explained.
41. As to decision of 20/02/2012, R 1391/2011-2, SPICE UP YOUR LIFE, § 31, cited by the applicant, it also concerns different goods (alcoholic beverages) which are not, on the contrary, healthy products.
42. For the reasons given above and in the contested decision, the mark ‘VIVI LA VITA INTENSAMENTE.’ is non-distinctive and the examiner, therefore, rightly refused the application pursuant to Article 7(1)(b) and 7(2) EUTMR.
43. Therefore, the appeal is dismissed and the contested decision is confirmed.

---

Order

On those grounds,

THE BOARD

hereby:

 

Dismisses the appeal.

 

 

 

 

 

 

 

Signed   T. de las Heras

Signed   C. Negro

Signed   H. Salmi

 

 

Registrar:   Signed   H.Dijkema