TENDERNESS IS INSIDE | Decision 637/2016-1

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DECISION

of the First Board of Appeal

of 13 January 2017

In Case R 1637/2016-1

Kraft Foods Schweiz Holding GmbH

Chollerstrasse 4

6301 Zug

Switzerland

Applicant / Appellant

represented by WILSON GUNN, Charles House 148/9 Great Charles Street, Birmingham B3 3HT, United Kingdom

APPEAL relating to European Union trade mark application No 15 221 948

THE FIRST BOARD OF APPEAL

composed of Th. M. 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 16 March 2016, Kraft Foods Schweiz Holding GmbH (‘the applicant’) sought to register the word mark

TENDERNESS IS INSIDE

for the following goods:

Class 30 – Chocolate, non-medicated confectionery, in particular chocolate confectionery, edible ices, namely ice cream products, frozen confectionery and desserts; chilled confectionery and desserts; chocolate spreads.

  1. On 1 April 2016, the examiner provisionally refused the application in its entirety pursuant to Article 7(1)(b) in conjunction with Article 7(2) EUTMR. The examiner referred to definitions in English of the components of the mark applied for and pointed out that the average consumers of the goods would understand the mark as a promotional laudatory message highlighting the characteristics of the goods, namely, that they have a soft interior. Accordingly, the examiner found the contested mark devoid of distinctive character.
  2. On 26 May 2016, the applicant replied contesting the examiner’s objections.
  3. On 8 July 2016, the examiner waived the objection for ‘chocolate spreads’ but maintained his objections under Article 7(1)(b) and 7(2) EUTMR for the remaining goods, adding as follows:
  • In relation to the goods in the application, it is unlikely that  ‘TENDERNESS’ will bring to the mind of the relevant consumer the ‘intangible concept of compassionate feelings’;
  • ‘TENDERNESS’ will be understood as referring to soft, succulence and tasty;
  • The goods for which registration is sought have a solid outer structure with a soft, succulent and tasty interior;
  • The meanings of the terms ‘TENDERNESS’ and ‘INSIDE’ are straightforward and unequivocal in the context of the goods;
  • Previous Office practice cannot be invoked and observance of the principle of equal treatment must be reconciled with observance of the principle of legality (the applicant cited settled case-law).
  1. On 7 September 2016, the applicant requested a limitation of the goods in the application to the following:

Bar chocolate; solid chocolate in bar form, chocolate spreads.

  1. On 8 September 2016, the applicant filed an appeal against the contested decision. The statement of grounds of the appeal was received on 3 November 2016.

Grounds of appeal

  1. The applicant considers that the mark applied for is distinctive for ‘bar chocolate, solid chocolate in bar form’ and argues as follows:
  • The examiner made the assessment on the basis of English dictionary definitions of the words ‘tender’, ‘is’ and ‘inside’;
  • There is a difference in the meaning of the words ‘TENDERNESS’ and ‘tender’. ‘TENDERNESS’ is more commonly used to refer to the intangible concept of compassionate feelings. When used in the field of consumable products, the English term ‘tender’ is used in relation to meat products and not confectionery;
  • The extract from the website of ‘Wieden + Kennedy’ (Annex 1) details the ethos behind the mark applied for and its focus on compassionate feelings and acts of kindness rather than on the physical characteristics of the goods;
  • Press articles in Annex 2 show that the average consumer will understand the mark applied for as relating to compassionate feelings and/or acts of kindness rather than any physical characteristics of the goods;
  • The examiner has failed to provide examples of the use of either ‘TENDERNESS’ or ‘TENDERNESS IS INSIDE’ as a meaningful expression in the context of the goods. Unless the office can show otherwise, it cannot be suggested that the words of the mark applied for are so frequently used that they have lost any capacity to distinguish the goods in the application from those of others. The mark applied for would not deprive others of their legitimate right to employ common terminology used in the course of trade without impropriety in the market place;
  • The examples of chocolate bar descriptions in Annex 3 do not mention either ‘TENDERNESS’ or ‘TENDERNESS IS INSIDE’;
  • The consumer will associate phrases such as ‘soft filling’ or ‘soft centre’ with the food sector but not ‘soft inside’ or ‘soft interior’. These goods have no interior and no recesses;
  • None of the goods in the application, after the limitation, are capable of having a ‘soft, succulent or tasty interior’;
  • It is inappropriate to apply to slogans stricter criteria than for other trade marks;
  • The word elements ‘TENDERNESS’ and ‘INSIDE’ add peculiar originality, introduce elements of conceptual intrigue and surprise, can have a number of meanings and will trigger a cognitive process in the mind of the relevant consumer.
  • The mark applied for is fanciful and allusive.

Reasons

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

Limitation

  1. Registration of the mark applied for was sought for:

Chocolate, non-medicated confectionery, in particular chocolate confectionery, edible ices, namely ice cream products, frozen confectionery and desserts; chilled confectionery and desserts; chocolate spreads.

  1. The applicant has requested a limitation of the goods in the application to:

Bar chocolate; solid chocolate in bar form, chocolate spreads.

  1. The Board accepts the limitation.
  2. The examiner waived the objection for ‘chocolate spreads’ and refused the application for the remainder of the goods. The goods at issue in the appeal are therefore:

Bar chocolate; solid chocolate in bar form.

Article 7(1)(b) EUTMR

  1. Article 7(1)(b) EUTMR precludes the registration of trade marks which are devoid of distinctive character.
  2. Distinctive character within the meaning of that article means that the mark applied for must serve to identify the goods or services in respect of which registration is sought 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).
  3. The distinctiveness has to be assessed by reference to the relevant public to which the claimed goods or services are directed (21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 43). Regard must be had to the relevant public’s perception of the mark.
  4. The goods in the application are for everyday consumption. The relevant public is the average consumer who is reasonably well informed and reasonably observant and circumspect (16/07/1998, C-210/96, Gut Springenheide, EU:C:1998:369, § 31; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 68.
  5. The goods in the application are inexpensive confectionery items for everyday consumption, which will be purchased rapidly and without paying a great deal of attention (12/02/2014, T-570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 30, 31).
  6. That the mark applied for is an advertising slogan is not in dispute.
  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. The Board considers that neither ‘TENDERNESS’ nor ‘INSIDE’ are words that are associated with chocolate bars.
  10. The applicant, considers that there is a difference in meaning between the meaning of the word ‘TENDERNESS’ and the word ‘tender’ since, firstly, ‘TENDERNESS’ is used to refer more commonly to the intangible concept of compassionate feelings and, secondly, ‘tender’, is used more for meat products than confectionery.
  11. ‘TENDERNESS’ is the noun form of the adjective ‘tender’. In the English language, a noun is very often formed by adding the suffix ‘ness’ to the adjective.
  12. Thus, inasmuch as the adjective ‘tender’ is used in the literal and physical sense for the physical quality of ‘soft or delicate in texture or consistence; … of food, easily masticated, succulent’ (see Oxford English Dictionary, http://www.oed.com), so, correspondingly, ‘TENDERNESS’ refers to the physical ‘quality or state of being tender’ in the physical sense (see entry for the word and the etymology of the word ‘TENDERNESS’ in Oxford English Dictionary, http://www.oed.com).
  13. As the reference to the entry for ‘tender’ in the Oxford English Dictionary illustrates, the use of ‘tender’ is not merely of relevance for meat products. It is used for food products in general. Any food that is soft, succulent, and delicate in texture or consistency that does not require chewing is ‘tender’.
  14. By analogy, it must follow that having regard to the nature of the goods in question, namely food products, the average consumers will understand ‘TENDERNESS’ as a meaningful expression for the tangible quality or state of being soft, delicate and succulent. The Board does not, therefore, accept that average consumers who have been educated to consider otherwise, will perceive in ‘TENDERNESS’ the intangible feelings or quality of being compassionate.
  15. The adverb ‘INSIDE’, as in the mark applied for, means ‘the interior; on the inner side’ as the examiner rightfully pointed out.
  16. With respect to the word ‘INSIDE’, the applicant considers that it is not pertinent for the goods in the application, after the limitation, which do not have an interior or recesses and are incapable of having a ‘soft, succulent or tasty interior’.
  17. The Board considers that the natural meaning of a chocolate bar or a solid chocolate bar  does not exclude that it can have a soft centre.
  18. For average consumers, a chocolate bar also refers to a typically snack-sized bar coated with or substantially consisting of chocolate but containing other ingredients and fillings. A ‘chocolate bar is a flattish rectangular block of chocolate manufactured as an item of confectionery, usually sold individually wrapped; (also) any similarly-shaped item of confectionery that is coated or flavoured with chocolate’ (see www.oed.com).
  19. A solid is a substance or object that is solid rather than liquid or fluid. The texture and tenderness of a chocolate bar can vary depending on the ingredients and the temperature it is exposed to. Nothing more is gained by the word ‘solid’ – A solid chocolate bar remains a chocolate bar and a chocolate bar can have a soft, delicate and more succulent interior than the exterior without that filling being a liquid or fluid. Protection is sought for chocolate in bar form as opposed to individually portioned chocolates such as bonbons or truffles, and it is feasible and common for a chocolate bar to have an interior filling.
  20. That chocolate bars commonly have an interior is apparent from the examples of the chocolate bars that the applicant itself has provided (see Annex 3). The examples illustrate that chocolate bars have a filling in the centre or interior part that is soft and succulent (‘Cadbury’s Dairy Milk Chocolate Bar’ has ‘deliciously creamy milk chocolate’; ‘Lion bar’ is ‘filled wafer with caramel and cereals covered with milk chocolate’; ‘Lindt Nocciolatte’ is a milk chocolate bar with a ‘hazelnut filling and whole hazelenuts’; ‘Thornton’s Viennese chocolate bar’ ‘is a distinct combination of light airy milk chocolate mousse and a crisp coating of beautifully blended milk and white chocolate’; ‘Thornton’s Mint Truffle Chocolate bar’ – ‘The smooth chocolate truffle is flavoured with cool peppermint oil, with mint pieces added for crunch, then the soft centre is covered completely in our rich dark chocolate; ‘Divine Chocolate Bar’ is a ‘smooth dark chocolate bursting with a soft caramel filling’).
  21. The centre or the filling of a chocolate is the non-visible part of the chocolate bar that has yet to be broken. The filling whether it is soft or otherwise is always in the interior part of the bar. It is, therefore, far-fetched for the applicant to argue that the average consumer will associate phrases such as ‘soft filling’ or ‘soft centre’ with the food sector, but not ‘soft inside’ or ‘soft interior’.
  22. Accordingly, in light of the above considerations, the Board rejects the applicant’s argument that the meaning of ‘TENDERNESS IS INSIDE’ is fanciful and suggestive for ‘bar chocolate; solid chocolate in bar form’. The average consumer will expect these goods to have a soft interior or centre part. The mark applied for is a plain and simple qualitative indication of a characteristic of chocolate bars, namely, that the chocolate bars have a soft, succulent centre or filling. There is nothing vague or unusual about the contested mark, which is clearly banal for the goods in question, plain in meaning and lacking any original sequence or structure.
  23. The semantic content of the contested mark indicates to the relevant public a positive characteristic of the goods in question, relating to their market value, inasmuch as softness, being delicate to the taste buds and succulence are sought-after characteristics in food products, including confectionery products.
  24.  There is absolutely nothing that can be found distinctive in using the expression ‘TENDERNESS IS INSIDE’ for the goods covered by the contested mark, over and above its obvious promotional meaning that the interior of the applicant’s chocolate bars is soft and succulent, to enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods 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 desirable characteristics of the applicant’s chocolate bars and therefore possesses no particular resonance (see, to that effect, 09/07/2008, T70/06, Vorsprung durch Technik, EU:T:2008:266, § 44 to 45 and 56 to 59).
  25. The amendment of the goods has no impact whatsoever on the assessment. The contested mark 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 an indication that consumers can expect that the applicant’s bars are characterised by a soft, succulent centre or filling. The relevant public will not tend to perceive in the sign any particular indication of commercial origin. The contested mark clearly lacks distinctive character.
  26. The contested mark is not rejected merely because it is a promotional slogan, but rather because it is a banal slogan, with a clear and unambiguous laudatory meaning (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 32 to 35). Since the expression ‘TENDERNESS IS INSIDE’ does not immediately indicate to consumers the origin of their intended purchase, but just gives them purely promotional information, average consumers will not take the time either to enquire into the sign’s various possible functions or to register it mentally as a trade mark. It is, therefore, concluded that the mark will be perceived by the relevant public primarily as a banal promotional slogan, and not as a trade mark (05/122002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 29 and 30).
  27. The arguments that result from the press articles on the ‘Milka’ advertising campaign that the average consumer will understand the mark applied for as relating to compassionate feelings and/or acts of kindness rather than as a reference to any physical characteristics of the goods, is an issue that can only be addressed in the context of acquired distinctiveness under Article 7(3) EUTMR. A claim under that article has not been made.
  28. Even if such claim had been made, the documentation on the campaign does not show that the mark applied for has become associated in the mind of the consumer in the English- speaking Member States with the goods in question at the date the application was filed, namely 16 March 2016. Indeed, the article in Annex 2, dated 27 July 2016, clearly states the ‘campaign is running in Central and Eastern Europe and will roll out in additional international markets later in the year’.
  29. For the reasons given above, the mark ‘TENDERNESS IS INSIDE’ lacks distinctive character and the examiner, therefore, rightly refused the application pursuant to Article 7(1)(b) and 7(2) EUTMR.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

Th. M. Margellos

Registrar:

Signed

H.Dijkema

13/01/2017, R 1637/2016-1, TENDERNESS IS INSIDE

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