BENCHMARKING YOUR WORLD | Decision 419/2016-1

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DECISION

of the First Board of Appeal

of 10 January 2017

In Case R 1419/2016-1

STR, Inc.

735 E. Main St., Hendersonville

Tennessee Tennessee 37075

United States of America

Applicant / Appellant

represented by FORRESTERS, Rutland House, 148 Edmund Street, Birmingham B3 2JA, United Kingdom

APPEAL relating to European Union trade mark application No 15 175 921

THE FIRST BOARD OF APPEAL

composed of Th. Margellos as a single Member having regard to Article 135(2) and (5) EUTMR, Article 1(c)(2) BoA-RP and Article 10 of the Decision of the Presidium on the organisation of the Boards of Appeal as currently in force, and to the First Board’s Resolution No 3 of 9 March 2012 on decisions by a single Member

Registrar: H. Dijkema

gives the following


Decision

Summary of the facts

  1. By an application filed on 3 March 2016, STR, Inc. (‘the applicant’) sought to register the word mark

BENCHMARKING YOUR WORLD

for the following services:

Class 35 – Commercial information services, namely, providing business information in the form of studies, surveys and business performance information for the lodging industry.

  1. On 15 March 2016, the examiner provisionally refused the application on the grounds that it did not appear to be eligible for registration under Article 7(1)(b) and c) in conjunction with Article 7(2) EUTMR, in respect of all of the services.
  2. The examiner, citing dictionary definitions, pointed out that the relevant public, namely the professional English-speaking public, would understand the mark applied for as meaningful, namely that the intended purpose of the applicant’s services is to provide information/evaluations regarding the performance of the consumer’s business in comparison with that of competitors. Therefore, the examiner considered that the mark applied for conveyed obvious and direct information regarding the intended purpose of the services. The examiner considered that the contested mark contained the promotional laudatory message highlighting the positive aspects of the services, namely that they provide consumers with useful information/evaluations concerning the performance of the competition in the consumer’s sector. Accordingly, the examiner found the contested mark devoid of distinctive character.
  3. On 16 May 2016, the applicant responded by arguing that the mark applied for was suggestive, did not have a direct and clear meaning in relation to the services and did not allow the consumer to ascertain that the services are for the lodging industry. Though the term ‘BENCHMARKING’ might refer to the measurement of the quality of an organization’s policies, products, programs and strategies, the applicant argued that it was unclear what ‘YOUR WORLD’ referred to. Therefore, the applicant argued that the mark applied for was a promotional slogan that was not descriptive and was distinctive.
  4. On 2 June 2016, the examiner maintained his objections to the application pursuant to Article 7(1)(b), (c) and 7(2) EUTMR, adding the following:
  • ‘BENCHMARKING’ refers to a practice/action of comparing something (for example business performance) against established standards. This term is perfectly comprehensible for the specialised public. ‘YOUR WORLD’ is a basic English expression for the normal or habitual sphere of interest, action or thought of the person to which the message is addressed;
  • ‘BENCHMARKING YOUR WORLD’ merely describes the intended purpose of the applicant’s services and highlights certain positive aspects pertaining to them, namely that they provide information/evaluations regarding the performance of the consumer’s business by comparison with that of competitors in the consumer’s sector (world).
  • Consequently, the meaning conveyed is not vague or far-fetched but explicit, and the mark will not be perceived as suggestive or allusive by the relevant consumers.
  • There is nothing about the expression ‘BENCHMARKING YOUR WORLD’ that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question.
  1. On 2 August 2016, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 28 September 2016.

Grounds of appeal

  1. The applicant argues as follows:

Article 7(1)(c) EUTMR

  • The element ‘YOUR WORLD’ has two meanings which are not descriptive: English speakers will interpret it as referring to planet earth or to one’s personal life.
  • The purpose of the services is to provide business information of the consumer’s business in the hotel industry.
  • A direct and specific relationship does not exist between the above meanings of the words ‘YOUR WORLD’ and the services in the application. It is impossible to benchmark or compare the planet Earth or one’s personal life against a standard. The combination of ‘BENCHMARKING’ and ‘YOUR WORLD’ is unusual and fanciful. Article 7(1)(c) EUTMR does not apply.

Article 7(1)(b) EUTMR

  • The words ‘YOUR WORLD’ are not commonly used in connection with the services in question. This is because ‘YOUR WORLD’ has no connection with these services.
  • The word ‘BENCHMARKING’ may be considered to lack distinctive character for the services in the application. However, it is impossible to benchmark or compare the planet Earth or one’s personal life against a standard. The composite mark is distinctive and has the ability to identify the origin of the services for English- speaking consumers.
  • The USPTO has accepted the mark applied for.

Reasons

  1. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
  2. Article 7 EUTMR, bearing the title ‘absolute grounds for refusal’, provides in material part:

‘1.                The following shall not be registered:

(b)        trade marks which are devoid of any distinctive character;

(c)        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.’

  1. It is sufficient that one of the absolute grounds for refusal applies in order for the sign at issue not to be registrable as a European Union trade mark (16/03/2006, T322/03, Weisse Seiten, EU:T:2006:87, § 110).
  2. When the Office examines a trade mark application on absolute grounds, it must have regard to all the relevant facts and circumstances and it cannot carry out the examination in the abstract. It must have regard to the characteristics peculiar to the mark and, in the case of the word component of the mark, its meaning, in order to ascertain whether or not any of the grounds for refusal set out in Article 7 EUTMR apply. Since registration of a mark is always sought in respect of the goods or services covered in the application for registration, the question as to whether or not any of the grounds for refusal set out in Article 7 EUTMR apply to the mark must be assessed specifically by reference to those goods or services (see, to that effect, inter alia, 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 31 to 35). Regard must be had to the relevant public’s perception of the mark.

Relevant public and relevant territory

  1. Article 7(2) EUTMR states that a trade mark shall not be registered, even if the grounds of non-registrability are met only in part of the EU. An obstacle pertaining to the English-speaking population of the European Union is consequently sufficient to reject the trade mark application.
  2. The public by reference to whom the absolute ground of refusal must be assessed consists of the English-speaking public, which includes the public in the Member States in which English is the official language, i.e. Ireland, Malta and the United Kingdom since the mark applied for is made up of English words. However, the Board points out that the contested mark, in this case, may have a meaning not only for a public made up of native English speakers, but also for a public which has sufficient knowledge of English. In this respect, a basic understanding of English by the general public, in any event, in the Scandinavian countries and the Netherlands is a well-known fact. This also applies to Cyprus (09/12/2010, T307/09, Naturally active, EU:T:2010:509, § 26 and 27) and Germany (13/05/2015, T-608/13, easyAir-tours (fig.) / international airtours (fig.) et al., EU:T:2015:282, § 38).
  3. The services in the application are commercial services for undertakings in the lodging industry. The relevant public of the services is the attentive professional in that industry. Notwithstanding, the fact that the relevant public is   attentive does not necessarily mean that the ‘descriptiveness threshold’ of the sign must be higher or the distinctiveness threshold lower to a certain extent in order for that sign to fall under the ground for refusal set out in Article 7(1)(c) EUTMR (see by analogy, 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48). The fact that the relevant public may be the professional does not constitute a determining factor since, as professionals, their understanding of the words will be more direct and immediate. In this case as undertakings operating in the lodging industry, they will have a greater understanding of the implications to their business of the services in the application.

Article 7(1)(c) EUTMR

  1. Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that descriptive signs or indications relating to the characteristics of the goods or services in respect of which registration is sought may be freely used by all. This provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (see judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 25; 27/02/2002, T-219/00, Ellos, EU:T:2002:44, § 27; 08/04/2003, C-53/01, C-54/01 and C-55/01, Linde, EU:C:2003:206, § 73; 06/05/2003, C-104/01, Libertel, EU:C:2003:244 § 52; 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 35 and 36).
  2. The signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark 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 (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T219/00, Ellos, EU:T:2002:44, § 28).
  3. For the purposes of Article 7(1)(c) EUTMR it is necessary to consider, on the basis of a given meaning of the sign in question, whether the relevant public will immediately and without reflection perceive a direct and specific link between the word combination as a whole and the claimed goods and services (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 44).
  4. The descriptive character must be assessed with regard to the ordinary meaning the applied-for word or words have in common parlance for the public to whom the goods and/or services are directed (see 08/07/2004, T-289/02, Telepharmacy Solutions, EU:T:2004:227,§ 45). It is not necessary for the application of Article 7(1)(c) EUTMR that the word combination as a whole appears in dictionaries (see 12/01/2000, T-19/99, Companyline, EU:T:2000:4, § 26).
  5. It is not necessary that the elements composing the trade mark actually be in use. It is sufficient, as the wording ‘which may serve’ indicates that such signs and indications could be used for such purposes. A sign must, therefore, be refused registration under Article 7(1)(c) EUTMR if at least one of its possible meanings may designate a characteristic of the goods or services concerned (see 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 32). It is, therefore, irrelevant that the mark applied for is not commonly used in the relevant market.
  6. The mark applied for is the combination of the term ‘BENCHMARKING’ with the possessive ‘YOUR’ and the term ‘WORLD’, since the planet Earth or one’s personal life cannot be benchmarked.
  7. As to the term ‘BENCHMARKING’, the applicant concedes that it is inherently not distinctive of the services, but argues that the mark applied for as a whole is unusual.
  8.  ‘BENCHMARKING’ is ‘The action or practice of comparing something to a benchmark; evaluation against an established standard’. The services in the application entail providing businesses in the lodging industry with business information in the form of studies, surveys and business performance information to improve their performance. The evaluation of their own operations is often made by detailed comparison with other businesses and the quality of an undertaking’s strategies, services and programs, is often measured with standards, and the performance of competitors. The term ‘BENCHMARKING’ is directly and immediately descriptive of the nature and intended purpose of the services in the application.
  9. As to the word ‘WORLD’, since according to settled case-law, the mark must be assessed specifically by reference to the services in the application, it is far- fetched to consider that this word will mean the planet Earth or one’s personal life.
  10. The word ‘WORLD’ means inter alia ‘A person's normal or habitual sphere of interest, action, or thought; fig. a characteristic atmosphere or environment’ (see http://www.oed.com). The ‘WORLD’ of the relevant public of the services in the application, can only mean the usual business environment or sphere of operation.
  11. ‘YOUR’ is the possessive adjective in either the third person singular or the third person plural. In modern use, the word ‘WORLD’ in the above sense is frequently used with the possessive adjectives my, your, etc. (see http://www.oed.com). The meaning of the word ‘WORLD’ above does not change with the possessive adjective ‘YOUR’, which merely serves to form a connection with the public that the applicant wishes to reach by the benchmarking services, which is not altogether unusual in marketing terminology.
  12. What is essential is whether or not a word conveys and contains an unequivocal message serving to identify a characteristic of the services in question, that the sign can be used for descriptive purposes (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 97) and at least one of its possible meanings designates a characteristic of the services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32). This is clearly the case here.
  13. The applicant’s argument that the expression ‘BENCHMARKING YOUR WORLD’ has no definite and unequivocal descriptive meaning and that it is, at most, suggestive cannot be followed since it is based on the assumption that the relevant public will understand ‘WORLD’ to mean the planet Earth or one’s personal life, which the Board cannot accept. The benchmarking services in the application are stated to be for the lodging industry. The relevant public operating in the lodging industry, for example, hoteliers, will therefore understand the combination of the words ‘BENCHMARKING YOUR WORLD’ to mean that the applicant renders to them services regarding the evaluation of their strategies, goals or performance with the standards or the performance of the industry as a whole. Protection of the mark applied for is sought for ‘commercial information services, namely, providing business information in the form of studies, surveys and business performance information for the lodging industry’. Therefore, having regard to the services in question, when the relevant public is confronted with the mark ‘BENCHMARKING YOUR WORLD’ in connection with such services, he or she will deduce, without going through any complex mental processes, that the mark refers to the offer to them of benchmarking in their sphere of operation, namely, in the lodging industry.
  14. In the light of the above, the relationship between the services in the application and meaning of the mark applied for is direct and close. The mark applied for consists of elements, each of which alone and in combination is descriptive of the services in respect of which registration is sought. The relevant public will have no difficulty in comprehending that the mark applied for designates the kind and intended purpose of the services, that the applicant provides business information services in the form of studies, surveys and business performance information to businesses in the lodging business environment by which those businesses can benchmark their strategies, goals, performance against those of others, with a view to improvement.
  15. The mark applied for explains precisely the nature and intended purpose of the services as stated in the specification of the application. The combination does not create an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed.
  16. Even when being confronted for the first time with the sign in question in the context of the services at hand, the relevant public will not require any analytical effort to grasp its descriptiveness, which is based on the common meanings of its single words.
  17. The Board fails to see how the contested sign, as a whole, could create in the relevant consumer’s mind an overall impression that is sufficiently far removed from that produced by the mere combination of ‘BENCHMARKING’ with ‘YOUR WORLD’. The combination will make perfect sense to the relevant public in the lodging industry whom the applicant wishes to reach with the benchmarking services and does not possess any additional characteristic to render it not exclusively descriptive for the characteristics of the services claimed (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 22-24; ex plurimis, 28/07/2015, R 2838/2014-5, Sleepscan (fig.), § 19).
  18. The examiner was therefore right to reject the mark applied for as descriptive pursuant to Article 7(1)(c) EUTMR for the services.

Article 7(1)(b) EUTMR

  1. 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 in respect of which registration is applied for as originating from a particular undertaking, and 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 and 07/10/2004, C-136/02 P, Torches, EU:C:2004:592, § 29).
  2. Distinctiveness has to be assessed by reference to the relevant public to whom the claimed services are directed (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 43), which, as has been stated above, is the public whose level of attentiveness is higher than average.
  3. The notion of general interest underlying Article 7(1)(b) EUTMR is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the product or service from others which have another origin (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 56 and 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 60).
  4. The marks referred to in Article 7(1)(b) EUTMR are, in particular, those which 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, T79/00, Lite, EU:T:2002:42, § 26).
  5. The applicant argues that the mark applied for is a slogan that functions as a trade mark.
  6. In that context, the General Court has established that the public’s level of attention when it comes to promotional indications is relatively low, also in the case of a professional public (09/072008, T-58/07, Substance for success, EU:T:2008:269, § 23; and 06/06/2013, T-126/12, Inspired by efficiency, EU:T:2013:303, § 27).
  7. 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 (06/06/2013, T-126/12, Inspired by efficiency, EU:T:2013:303, § 20; and 12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 25). Difficulties in establishing distinctiveness for certain categories of trade marks, such as those consisting of advertising slogans, do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 36; and 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 37). Even though it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign, the possibility cannot be excluded that the case-law according to which it could prove more difficult to establish distinctiveness in relation to marks of certain categories might also be relevant to word marks consisting of advertising slogans (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 9).
  8. In the case of advertising slogans, it must always be examined whether there are elements which, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services designated. Since the relevant public is not very attentive if a sign does not immediately indicate the origin or intended use of the object of their intended purchase, but just gives purely promotional, abstract information, they will not take the time to enquire into the sign’s various possible functions or register it mentally as a trade mark (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28, 29; and 09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 22).
  9. There is nothing vague or unusual about the mark applied for in relation to the services. The services are benchmarking services, the objectives of which are to determine what and where improvements are called for, to analyze how other organizations achieve their high performance levels, and to use this information to improve performance. Those services will, therefore, necessarily entail an evaluation of the environment, in other words, the sphere or world in which the entity being evaluated operates. The term ‘BENCHMARKING YOUR WORLD’ is therefore, banal in relation to the services of the application, namely ‘commercial information services, namely, providing business information in the form of studies, surveys and business performance information for the lodging industry’.
  10. The semantic content of the mark applied for thus indicates to the relevant public a positive characteristic of those services, relating to their market value, inasmuch as the benchmarking of the performance, goals and strategies of the business in the lodging industry will depend on industry wide averages of undertakings with a similar profile to that of the company being evaluated. The mark applied for communicates the basic message that the applicant is able to provide hotel owners and other operators in the lodging industry with benchmarking services based on lodging industry wide data.
  11.  There is absolutely nothing that can be found distinctive in the expression ‘BENCHMAKING YOUR WORLD’ for the services covered by the contested mark, over and above its obvious promotional meaning, to enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for does not constitute a play on words and is not surprising or unexpected. It is just an ordinary advertising message extoling the fact the applicant is able to provide effective benchmarking services to operators in the lodging industry (see, to that effect, 09/07/2008, T-70/06, Vorsprung durch Technik, EU:T:2008:266, § 44 to 45 and 56 to 59).
  12. In the overall assessment, the combination of the elements of the sign applied for is not capable of performing a trade mark function. The word combination has a plain meaning and is not an arbitrary or fanciful expression in relation to the contested services. The word combination ‘BENCHMARKING YOUR WORLD’ lacks any original sequence or structure. The mark applied for conveys no more than the banal message that the applicant offers benchmarking services to undertakings in the sphere of lodging.
  13. There is nothing in the expression ‘BENCHMARKING YOUR WORLD’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The applicant did not indicate how the expression in its entirety may be understood otherwise and in a manner indicating a particular source of origin.
  14. The expression merely delivers abstract information which, however, is sufficiently closely connected to the services at hand. The relevant public does not expect promotional slogans to be precise or convey all of the information which is required to make an informed choice when selecting the services. Rather, it is a common characteristic of promotional slogans to convey only abstract information which allows every consumer to appreciate that its individual needs are addressed. Accordingly, the case-law has consistently refused registration to slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (for example, 03/07/2003, T122/01, Best Buy, EU:T:2003:183; 05/12/2002, T130/01, Real People, Real Solutions, EU:T:2002:301; 17/11/2009, T473/08, Thinking ahead, EU:T:2009:442; 07/09/2011, T524/09, Better homes and gardens, EU:T:2011:434).
  15. The refusal to register a trade mark does not depend on its prior use in the course of trade. It is irrelevant that the words ‘YOUR WORLD’ are not commonly used in connection with the services in question, as the applicant argues. Even when the relevant public encounters the expression ‘BENCHMARKING YOUR WORLD’ for the very first time, they will have no difficulty in grasping its meaning immediately The concept of the general interest underlying Article 7(1)(b) EUTMR, which seeks to enable the consumer, without any possibility of confusion, to distinguish the goods or services from others which have another origin (08/05/2008, C304/06 P, Eurohypo, EU:C:2008:261, §56), does not depend on prior (non-) use.
  16. The mark applied for would not trigger, in the minds of the relevant public, a cognitive process or require an interpretative effort on their part to constitute anything more than a mere indication of the kind and intended purpose of the services in question. The relevant public will not tend to perceive in the sign any particular indication of commercial origin. The mark applied for clearly lacks distinctive character within the meaning of Article 7(1)(b) EUTMR.

Registration in the USA

  1. As regards the purported registration of a sign corresponding to the Community trade mark applied for in the United States of America, it suffices to note that it was effected based on different legislation. The European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (see, as regards registration in the United States of America, 24/01/2008, T88/06, Safety 1st, EU:T:2008:15, § 45).
  2. In the light of the above considerations, the appeal is dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

Th. M. Margellos

Registrar:

Signed

H.Dijkema

10/01/2017, R 1419/2016-1, BENCHMARKING YOUR WORLD

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