SUSTAINABILITY IN EVERY FIBRE | Decision 270/2016-5

014000000 - 014999999, 014808158, 16, 2017, APPEAL, Date, Decision Type, Involved Parties, January-2017, S-company, S-trademark, Smurfit Kappa Services Limited, SUSTAINABILITY IN EVERY FIBRE, Trademark, Trademark number

DECISION

of the Fifth Board of Appeal

of 16 January 2017

In Case R 1270/2016-5

Smurfit Kappa Services Limited

Beech Hill, Clonskeagh

Dublin 4

Ireland

Applicant / Appellant

represented by FRKELLY, 27 Clyde Road Ballsbridge, Dublin 4, Ireland

APPEAL relating to European Union trade mark application No 14 808 158

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys as a single Member having regard to Article 135(2) and Article (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 Fifth Board’s Resolution No 1 of 2 February 2015 on decisions by a single Member

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

  1. By an application filed on 19 November 2015, Smurfit Kappa Services Limited (‘the applicant’), sought to register the word mark

SUSTAINABILITY IN EVERY FIBRE

for goods and services in Classes 16, 19, 40 and 42.

  1. On 5 January 2016, 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) in conjunction with Article 7(2) EUTMR, in respect of all of the goods and services. The arguments can be summarised as follows:
  • The trade mark consists of the words ‘SUSTAINABILITY IN EVERY FIBRE’ with the following meanings: ‘SUSTAINABILITY’ ‘(ecology) (of economic development, energy sources, etc.) the ability to be maintained at a steady level without exhausting natural resources or causing severe ecological damage’; ‘EVERY’ ‘each one (of the class specified), without exception’; ‘FIBRE’ ‘the structure of any material or substance made of or as if of fibres; texture’. The relevant consumer will understand the words as a meaningful expression: the ability to be sustainable encapsulated in each one of the structures of a material or substance.
  • The objectionable goods and services covered by the trade mark applied for are general consumption, as well as specialised, goods and services and are aimed at both average consumers and a professional public whose level of attention will be high. Since the trade mark ‘SUSTAINABILITY IN EVERY FIBRE’ is composed of English words, the absolute ground for refusal must be examined considering the English-speaking consumer in the European Union.
  • The relevant public would perceive the expression ‘SUSTAINABILITY IN EVERY FIBRE’ as a promotional laudatory message, the function of which is to communicate a value or inspirational statement. 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 and services are made entirely in line with good sustainability measures and that they will not be harmful to the natural ecology of the environments from which they are derived.
  • There is nothing about the expression ‘SUSTAINABILITY IN EVERY FIBRE’ 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 goods and services in question.
  1. On 11 January 2016, the Office notified the applicant that the classification of the goods and services did not comply with Rule 2(2) CTMIR. The examiner proposed the following amendments:
  • As regards Class 16, the terms ‘paper articles; cardboard articles’ must be further specified, the term ‘containers’ is proper to Class 21 and must be transferred;
  • As regards Class 19, the term ‘timber’ must be changed to ‘building timber’;
  • As regards Class 40, the term ‘material treatment, including reclamation of waste materials’ must be changed to ‘material treatment, namely reclamation of waste materials’.
  1. On 5 May 2016, the applicant responded to the provisional refusal stating that:
  • The examiner has dissected the trade mark and therefore not assessed the sign as a whole.
  • Each component of the trade mark has different meanings and could mean a number of things to consumers. For example ‘SUSTAINABILITY’ could be perceived as indicating the ‘capacity to endure’ and ‘FIBRE’ could relate to ‘dietary material’ or ‘strength of character’. Therefore, it is not possible to attribute any obvious meaning to each of the words individually in the context of the goods and services for which the applicant seeks registration of the trade mark. The mere fact that the term ‘SUSTAINABILITY’ can be applied to in any context, does not mean that in combination with specific terminology, the term is not registrable as a trade mark.
  • Therefore, the above-mentioned meanings applied to the trade mark considered in its entirety could result in ‘the capacity to endure all dietary material’. This could result in the consumer viewing the use of the trade mark as being fanciful or allusive, but not descriptive.
  • The examiner has not targeted the objection accurately, since any objection should not be raised against a range of goods and services within the same class on the basis of a blanket statement but it must be explained how the objection applies to the separate goods or a homogenous grouping of the goods and services.
  1. On 11 May 2016, the applicant agreed to change the trade mark application, amended as follows:

Class 16 – Paper; packaging; cardboard; corrugated packaging materials; cardboard packaging; corrugated board; boxes; cartons; printed matter; paper based packaging;

Class 19 – Timber (manufactured); timber (building), partly processed timber; treated timber; shaped timber;

Class 40 – Material treatment, namely reclamation of waste materials; laminating and operation of saw mills; paper finishing; recycling services in the field of paper and paper articles, glass, plastic and metal; timber processing; timber preservation; timber logging; timber treatment;

Class 42 – Design services pertaining to packaging and paper products.

  1. On 18 May 2016, the examiner took a decision (‘the contested decision’) entirely refusing the trade mark applied for. In addition to the arguments put forward in the provisional objection, the examiner stated, in essence, the following:
  • The trade mark definition has been provided in respect of each of the individual terms. Immediately afterwards, a contextual phrase has been provided for confirmation as to what the term mean as a whole. This indicates the likely meaning taken on board by the relevant consumer when seeing the term used in connection with the goods and services contained in the application.
  • As regards other potential meanings argued by the applicant (i.e. ‘the capacity to endure all dietary material’), the examiner considers that this would be a highly unlikely notion to be conceived by an individual when acquiring the goods or services for which the sign has been applied for. The meaning quoted in the examination report (‘sustainability runs through everything that the company does or makes’) seems a more logical explanation of the interpretation in relation to the goods and services listed.
  • The expression ‘SUSTAINABILITY IN EVERY FIBRE’ has been objected to on the grounds of Article 7(1)(b) EUTMR due to its lack of distinctive character to identify the goods and services applied for, and not for being descriptive of these under Article 7(1)(c) EUTMR. The Office confirms that the trade mark does not directly describe the goods and services applied for, nevertheless, it considers that the trade mark does not constitute a distinctive sign.
  • The objection may be detailed as follows: with regard to goods in Class 16, every fibre has been created utilising effective sustainability measures; with regard to goods in Class 19, the sourcing and production methods used to create the wood have been performed with sustainability in mind; with regard to services in Class 40, the treatment or process is conducted on all of the materials’ fibre in a sustainable way; in Class 42, that design is realised with sustainability in mind to ensure that all products are sustainably made.
  • The fact that the sign at issue can have several meanings, that it can be a play on words, does not suffice to make it distinctive as those various elements only make a 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. Even where the play on words is induced, the term remains non-distinctive and sufficiently comprehensible to be considered a promotional statement that could be utilised by any undertaking to denote their commitment to making everything they do sustainable.
  1. On 13 July 2016, the applicant filed an appeal against the contested decision, requesting that the decision be entirely set aside. The corresponding statement of grounds of the appeal was received on 19 September 2016.

Grounds of appeal

  1. In addition to its arguments presented at first instance, those raised in the statement of grounds may be summarised as follows:
  • Whilst it is accepted that the individual words appearing within the trade mark do have individual and separate meanings, an objection cannot be founded on the basis of applying those individual meanings to the combination of the elements. It is necessary to consider whether the combined elements are more than the sum of their parts. The combined elements would immediately be perceived as a badge of origin and not as describing any characteristic of the goods or services for which registration is sought.
  • The Audi case (judgement of 21/01/2010, C-398/08, Vorsprung durch Technik, EU:C:2010:29, § 45, 47 and 58) provides an authoritative analysis of how slogan should be examined and considered. In particular, the applicant states that it is highly probable that a consumer would perceive the slogan ‘SUSTAINABILITY IN EVERY FIBRE’ as being an unusual and fanciful notion that would not be perceived as describing any characteristic of the goods and services for which registration is sought.
  • The Office who is stuck to the concept of ‘SUSTAINABILITY’ alone has ignored this perspective. Simply because the term ‘SUSTAINABILITY’ can be applied to in any context does not mean that the sign is not registrable as a trade mark. Even if the meanings provided by the Office were accepted, the meaning of the sign as a whole would result in a trade mark that would be fanciful and would certainly meet the criteria for distinctiveness.
  • Any objection should not be raised against a range of goods and services within the same class on the basis of a blanket statement, but it is necessary to consider the trade mark having due regard to all of the individual goods and services in the application.
  • The trade mark is syntactically unusual and would not convey any immediate or obvious meaning or descriptive connotation when considered in the context of the goods for which registration has been sought. Even if it is considered that the trade mark does convey a promotional or laudatory message to the consumer, such trade mark should not be disqualified from acting as a badge of origin.

Reasons

  1. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
  2. However, the appeal is not well founded for the reasons outlined thereunder.

Article 7(1)(b) EUTMR in conjunction with Article 7(2) EUTMR

  1. According to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. It follows from Article 7(2) EUTMR that Article 7(1) EUTMR shall apply notwithstanding that the grounds of non-registrability concern only part of the European Union.
  2. According to settled case-law, for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the goods and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (see judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33, and the case-law cited).
  3. As regards signs made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. As regards the assessment of the distinctive character of such marks, the Court has already held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (see, for example, judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 35-36).
  4. However, it is apparent from case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (see judgment of 2/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 34).
  5. While the Court has not excluded the possibility 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 case-law (judgment of 21/10/2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 36).
  6. Moreover, the mere fact that a sign is perceived by the relevant public as a promotional formula, and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that sign is devoid of distinctive character (see, for example, judgments of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44 and of 12/02/2014, T-570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 26).
  7. On that point, it should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, insofar as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character (see, for example, judgments of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45, and of 12/02/2014, T-570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 27).
  8. On the other hand, a word mark is devoid of distinctive character when its semantic content 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 goods or services in question (judgments of 30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31; 12/03/2008, T-128/07, Delivering the essentials of life, EU:T:2008:72, § 20; 06/06/2013, T-126/12, Inspired by efficiency, EU:T:2013:303, § 25).
  9. Finally, distinctive character, within the meaning of Article 7(1)(b) EUTMR must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the sign (judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, cited above, EU:C:2010:29, § 34 and the case-law cited).

The relevant public

  1. In the present case, the examiner stated that the goods and services are aimed at both average consumers and professionals. The Board endorses the examiner’s view, which is not contested by the applicant.
  2. The examiner also found that the awareness of the relevant public will be high for the professional public and average for general consumers who are reasonably well-informed and reasonably observant and circumspect.
  3. Nevertheless, it must be taken into account that the settled case-law has established that the level of attention of the public is relatively low when it comes to promotional indications: (see 17/11/2009, T-473/08, Thinking ahead, EU:T:2009:442, § 33) and that this applies also in the case of a professional public (09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 23). Therefore, contrary to the examiner’s finding, the level of attention paid by the relevant public will be rather low in relation to the goods and services at stake.
  4. Furthermore, the trade mark applied for is an expression made up of English words. Account must be taken of the public in the English-speaking territory of the European Union, namely at least in the United Kingdom, Ireland and Malta, for the assessment of its eligibility for protection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The Board will limit its assessment to these Member States and will refrain, at this stage, from considering the language knowledge of the relevant public and/or the common use of these English components in the various other Member States.

The sign’s distinctiveness

  1. For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the relevant public a characteristic of the goods and services which, whilst not specific, represents 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 and 30; and 12/03/2008, T-128/07, Delivering the essentials of life, EU:T:2008:72, § 20).
  2. In the case of compound word signs, in order to assess whether or not a mark is devoid of any distinctive character, the overall impression given by it should be taken into consideration (06/11/2007, T-28/06, Vom Ursprung her vollkommen, EU:T:2007:330, § 32; 17/11/2009, T-473/08, Thinking ahead, EU:T:2009:442, § 31; 02/12/2015, T-528/14, Growth Delivered, EU:T:2015:920, § 37).
  3. The applicant contests the examiner’s assessment for splitting up the sign into its constitutive elements. However, the examiner’s approach in the present case is, in a principle, correct.
  4. Indeed, while it must be acknowledged  that the average consumer normally perceives a trade mark as a whole, nevertheless, it may be useful, in the overall assessment, to examine each individual component of the trade mark concerned (25/03/2014, T-539/11, Leistung aus Leidenschaft, EU:T:2014:154, § 36).
  5. The sign consists of words which, according to the online version of the Collins English Dictionary,  can be defined as follows:
  1. SUSTAINABILITY ‘(ecology) (of economic development, energy sources, etc.) the ability to be maintained at a steady level without exhausting natural resources or causing severe ecological damage’;
  2. EVERY ‘each one (of the class specified), without exception’;
  3. FIBRE ‘the structure of any material or substance made of or as if of fibres; texture’.
  1. Given the above definitions, which coincide with those provided in the provisional refusal, the Board concurs with the finding that the whole expression contained in the applicant’s sign will be understood by the relevant public as ‘the ability to be sustainable encapsulated in each one of the structures of a material or substance’.
  2. The Board further observes that goods in Class 16 directly refer to paper, packaging and cardboard, Class 19 goods refer to timber, whereas Class 40 services consist of recycling services of waste materials and timber processing and Class 42 design services pertain to packaging and paper products. It is clear that all the goods and services relate to various stages of design and manufacture of timber, packaging and paper products. Indeed, all these goods and services have as main subject certain products made of paper and its recycling which over the years had negative implications for the environment.
  3. Hence, the relevant consumer, when confronted with the sign ‘SUSTAINABILITY IN EVERY FIBRE’ for the goods and services at stake in Classes 16, 19, 40 and 42, will immediately perceive that the applicant is providing goods and services which are made in accordance with good sustainability methods or norms and which are not harmful to the eco-system or the environment.
  4. Particularly, with respect to goods in Class 16, namely ‘paper; packaging; cardboard; corrugated packaging materials; cardboard packaging; corrugated board; boxes; cartons; printed matter; paper based packaging’, the consumer will understand the sign ‘SUSTAINABILITY IN EVERY FIBRE’, as information that every fibre of the applicant’s paper, cardboard and packaging materials is created by using effective sustainable measures. As a consequence, the sign will not be able to indicate the commercial origin of the goods at stake.
  5. Similarly, with respect to Class 19 goods, namely ‘timber (manufactured); timber (building), partly processed timber; treated timber; shaped timber’, the consumer will immediately perceive the sign as a merely laudatory message which informs that the applicant provides goods that have been wholly produced according to sustainable norms.
  6. Moreover, in connection with the services in Class 40, namely ‘material treatment, namely reclamation of waste materials; laminating and operation of saw mills; paper finishing; recycling services in the field of paper and paper articles, glass, plastic and metal; timber processing; timber preservation; timber logging; timber treatment’, the sign directly conveys the message to the public that the applicant’s treatment is conducted on all of the materials’ fibres in a sustainable way.
  7. Finally, as to the services applied for in Class 42, namely ‘design services pertaining to packaging and paper products’, the consumer will understand that all the whole products objects of the applicant’s services in question are sustainably manufactured.
  8. In all the above mentioned cases, the consumer will not perceive the sign as an indication of origin, but as a mere informative message promoting the sustainability of the applicant’s goods and their related services applied for in Classes 40 and 42.
  9. There is, therefore, an immediate and intelligible link between the message conveyed by the promotional expression of the applicant’s sign and the goods and services for which registration is sought. There is nothing in the expression ‘SUSTAINABILITY IN EVERY FIBRE’ 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 (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. 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 (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.
  10. The applicant argues that the words composing the sign have several meanings and thus, that the whole sign would be subject to interpretations, being consequently distinctive. The applicant points forward that the relevant consumer would perceive this sign as being fanciful or allusive.
  11. It argues that, for example, the word ‘SUSTAINABILITY’ could refer to socio-ecological processes or could indicate ‘capacity to endure’. As well as the word ‘FIBRE’ could also relate to ‘dietary material’ or ‘strength of character’. As a consequence, in the applicant’s view, the expression as a whole will be understood by any English speaker as ‘the capacity to endure all dietary material’, and not only as ‘sustainability runs through everything that the company does or makes’, as found by the examiner.
  12. The applicant also insists on the argument that the sign considered as a whole, would be a fanciful manner of promoting the goods and services for which it has been applied. It further claims that the expression is perceived as a play on words, which can be expected to set off a cognitive process in the minds of the public, i.e. that ‘the goods and services provided have the capacity to endure or indeed have strength of character’.
  13. The Board cannot agree with the line of reasoning proposed by the applicant, since the sign, as a whole, will be perceived as being merely promotional of the characteristics of the goods and services in question and not as an allusive expression. In  particular, according to the examiner, the expression ‘SUSTAINABILITY IN EVERY FIBRE’ reflects in the relevant consumer’s perception the aspirational attitude of the applicant to provide sustainable goods and services and, at the same time, informs the relevant public that ‘sustainability runs through everything that the company does or makes’.
  14. Particularly, in contrast to the applicant’s assertion that the expressions contained in the mark has more than one meaning and thus, that it conveys a message which must be interpreted, the Board recalls that, according to the case-law, it is sufficient if at least one of the possible meanings of a sign can denote the goods or services claimed (17/01/2012, T-513/10, ATRIUM, EU:T:2012:8, § 22; 20/09/2001, C-191/01 P, DOUBLEMINT, EU:C:2003:579, § 32). Moreover, it must be added that the interpretations offered by the applicant make no sense in relation to the goods and services concerned.  In effect, one should recall that the assessment of the distinctive character of a trade mark must be conducted in the context of the goods and services applied for, and not in abstract as the applicant seems to erroneously pretend.
  15. In any event, it should be recalled that the relevant public does not expect promotional slogans to be precise or to fully describe the characteristics of the goods and services at issue. 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, case-law has consistently refused registration of slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (for example, see judgments of 03/07/2003, T-122/01, Best Buy, EU:T:2003:183; of 11/12/2012, T-22/12, Qualitat hat Zukunft, EU:T:2012:663; of 12/07/2012, C-311/11 P, Wir Machen das Besondere einfach, EU:C:2012:460; of 23/09/2011, T-251/08, Passion for better food, EU:T:2011:526; of 07/09/2011, T-524/09, Better homes and gardens, EU:T:2011:434; of 08/02/2011, T-157/08, Insulate for life, EU:T:2011:33; of 05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301; of 17/11/2009, T-473/08, Thinking ahead, EU:T:2009:442). For these reasons, even admitting that the sign does not exactly describe a characteristic belonging to the goods and services in question, it is nonetheless the fact that, in this case, the sign which is alleged to distinguish the contested goods and services will not be perceived as a mark and will not be remembered by the target public, which, in the absence of prior information or other distinctive elements, which are not present here, will not be able to repeat or avoid the purchase of the those goods and services.
  16. The Board acknowledges that an advertising slogan which, in addition to its purely promotional function, is perceived as an indication of origin can possess the distinctive character required for registration, in particular if the advertising slogan has several meanings, constitutes a play on words, or is perceived as imaginative, surprising and unexpected (judgment of 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47).
  17. However, according to the above considerations, the fact that the sign at issue can have several meanings as argued by the applicant, does not suffice to make it distinctive as those various elements only make a 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, these services from those of a different commercial origin. According to the above, the applicant’s sign will be perceived solely as a clear message that the goods at stake are sustainable in any of their various aspects and that the services refer to goods which are sustainable in any of their various aspects. Nonetheless the sign will not allow consumers to identify their commercial origin. Therefore, the applicant cannot validly claim that extra measures of interpretation or further analysis are required in the context of the goods and services concerned.
  18. In view of all the foregoing, the relevant English-speaking public for the goods and services concerned would not perceive the trade mark ‘SUSTAINABILITY IN EVERY FIBRE’ as an indication of their commercial origin.
  19. The remaining applicant’s arguments based on the judgment of 21 January 2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29 cannot invalidate the Board’s conclusions.
  20. Although the applicant argues that the laudatory connotation of a trade mark does not mean that it cannot guarantee the origin of the goods or services which it covers, the Board points out that, nonetheless, it is settled case-law that slogans too must fulfil the function of distinguishing the commercial or industrial origin of goods and/or services. However, this is not the case here.
  21. In fact, the ‘Vorsprung durch Technik’ judgment, cited by the applicant, cannot and should not be interpreted as suggesting that any promotional phrase may be registered as a trade mark solely because it is presented in the form of a slogan (see judgment of 08/07/2011, R 1798/2010-G, La qualité est la meilleure des recettes, § 28, confirmed by the judgment of 12/02/2014, T-570/11, La qualité est la meilleure des recettes, EU:T:2014:72).
  22. In addition, in that judgment, the ‘resonance’ of the slogan ‘Vorsprung durch Technik’, identified by the Court was, among other things, due to the fact that the sign in question was ‘a widely known slogan which has been used by Audi for many years’ (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 59).
  23. Therefore, in the case cited by the applicant, the Court held that the slogan was distinctive for a wide range of goods and services, partly in view of the distinctive character it had acquired through long-term use as a slogan to promote the sale of motor vehicles. It follows that the applicant’s arguments that rely on this judgment are not relevant, and must therefore be rejected.
  24. In view of all the foregoing, the Board endorses the examiner’s finding that the trade mark does not satisfy the minimum degree of distinctive character required under Article 7(1)(b) EUTMR, since it is incapable of identifying the goods and services applied for in Classes 16, 19, 40 and 42 as originating from a particular undertaking and thus to distinguish these goods and services from those of other undertakings.

Conclusion

  1. For all the above reasons, the applicant’s appeal must be dismissed.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

G. Humphreys

Registrar:

Signed

H.Dijkema

16/01/2017, R 1270/2016-5, SUSTAINABILITY IN EVERY FIBRE

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