General Court confirms that ENDURANCE lacks distinctiveness

Article publié dans World Trademark Review

– The court agreed with the EUIPO that the figurative mark ENDURANCE was devoid of any distinctive character for goodsand services in Classes 9, 25, 28 and 35
– A mark consisting of an advertising slogan will be devoid of any distinctive character if it is liable to be perceived only as amere promotional formula
– ENDURANCE consisted only of an incitement to purchase the goods via a banal advertising message, the content of whichwas clear and had no semantic depth

In Sports Group Denmark A/S v European Union Intellectual Property Office (EUIPO) (18 October 2023, Case T-566/22), GroupDenmark A/S (‘the applicant’) sought the annulment of a decision of the Second Board of Appeal of the EUIPO dated 8 July2022 (Case R 1779/2021-2).

Background

On 12 May 2020 the applicant designated the European Union in its international registration for the following figurative markin Classes 9, 25, 28 and 35:

On 17 February 2021 an objection was made to the registration. In doing so, the examiner found that the mark applied for wasa word mark and not a figurative mark and, on 23 August 2021, the examiner rejected the figurative mark.

On 18 October 2021 the applicant filed a notice of appeal, but the Board of Appeal of the EUIPO dismissed the appeal on theground that the mark applied for was, for the relevant English-speaking public in the European Union, which consisted ofprofessionals and of the general public, devoid of any distinctive character with regard to all of the goods and services.

General Court decision

The applicant put forward two pleas in law, alleging:
1. infringement of Article 7(1)(b) of Regulation 2017/1001, read in conjunction with Article 7(2); and
2. failure to comply with the principles of legal certainty and equal treatment.

First plea

The first plea in law consisted of three complaints, according to which, first, the Board of Appeal had erred in concluding, on thebasis of unsubstantiated or incorrect findings concerning endurance sports, that the mark applied for had no distinctivecharacter with regard to the goods and services in question. That assertion was supported by the complaints that, secondly, thefigurative elements of that mark were not negligible and thirdly, the term ‘endurance’ was not merely promotional or laudatory.

– First complaint

Article 7(1)(b) provides that trademarks which are devoid of any distinctive character must not be registered. Pursuant to Article7(2) of that regulation, Article 7(1) applies notwithstanding that the grounds of non-registrability obtain in only part of theEuropean Union. The notion of public interest underlying Article 7(1)(b) is indissociable from the essential function of atrademark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or enduser. This does not exclude the registration of marks consisting 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. It is apparent from the case lawthat, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality orincitements to purchase the goods or services at issue convey by definition, to a greater or lesser extent, an objective message,they are still capable of indicating the commercial origin of the goods or services, especially if they possess a certain originalityor resonance, require at least some interpretation by the relevant public or set off a cognitive process in the minds of that public.Therefore, a trademark consisting of an advertising slogan will be devoid of any distinctive character if it is liable to be perceivedonly as a mere promotional formula.

To decide that there is no distinctive character, it is sufficient that the semantic content of the word sign in question indicates tothe consumer a characteristic of the goods or services which, whilst not specific, comes from promotional or advertisinginformation which the relevant public will perceive first and foremost as such, rather than as an indication of the commercialorigin of the goods or services. In addition, the mere fact that the semantic content of the sign does not convey any informationabout the nature of the goods concerned is not sufficient to make that sign distinctive. One must take into consideration that thelevel of attention of the relevant public may be relatively low when it comes to promotional indications.

As regards the relevant public, the Board of Appeal had found that it was the English-speaking public in the European Union,which consisted in part of the public which was interested in sports and in part of a professional public involved in sportingactivities. As regards the meaning of the mark, the board had found that the sign consisted of “a figurative mark containing aslightly stylised representation of the verbal element ‘endurance’”. According to the Merriam-Webster online dictionary, theterm ‘endurance’ is an ordinary English word which means, among other things, “the ability to withstand hardship or adversity[and,] especially, the ability to sustain a prolonged stressful effort or activity”. The board had stated that, in relation to physicalexertion by humans, particularly in sports, that word was used to denote the individual’s ability to exert themselves for a longperiod of time.

The General Court first stated that the Board of Appeal had clearly identified the absolute ground for refusal set out in Article7(1)(b) of the regulation as being the only ground justifying the partial refusal of the registration. In that regard, the crucialquestion was whether consumers would perceive the mark as being capable of indicating that the goods and services coveredhad a particular commercial origin.
Next, the court pointed out that the definition of the term ‘endurance’ includes both the resistance of objects and that of humanbeings. It follows that the ability to withstand hardship or adversity and, especially, the ability to sustain a prolonged stressfuleffort or activity, encompasses both the endurance of the goods covered by the mark and that of the relevant public.
Lastly, it stated that the applicant confused the description of the established qualities of the goods concerned and thepromotion of those qualities by means of a promotional term or expression, while alleging that the Board of Appeal hadconfused them in the same way in its decision. In this connection, at the hearing, the applicant confirmed that there was adifference between the promotion and the description of a product.

The court held that the board was right in finding that the term ‘endurance’ conveyed a promotional message with regard to thegoods and the services at issue, a message which was understood as such without any effort on the part of the relevant public.The mark applied for consisted solely of an ordinary laudatory indication that the goods covered are desirable for enthusiasts ofspecific training or sports enthusiasts in general, whether or not that training or those sports are endurance training orendurance sports, which invariably presupposed that those goods have certain qualities which determined that desirability, inparticular their ability, which is assumed and open to interpretation by the relevant public, to withstand sustained physicalactivity without difficulty. The mark thus consisted only of an incitement to purchase those goods via a banal advertisingmessage, the content of which was clear and had no semantic depth. It was therefore likely to be perceived by the relevantpublic only as a mere promotional formula and not as an indication of the commercial origin of those goods. Since the servicescovered were closely related to the goods at issue and incited consumers to purchase them for the same reasons of desirability,that finding also applied to those services.

The court further confirmed that the Board of Appeal was right in referring to the characteristics of the goods concerned, whichare promoted by the term ‘endurance’, by concluding that, in the context of sporting activities or endurance sports, consumerswould perceive the mark only as mere promotional information regarding the goods in Classes 9, 25 and 28, simply incitingconsumers to purchase those goods by suggesting that they are more resistant, sturdy and durable. As regards the retail andwholesale services in Class 35, the board was right in finding that they were aimed at providing those goods and that that sameincitement to purchase would also be perceived with regard to them.

The court concluded that the Board of Appeal’s finding that the mark was devoid of any distinctive character was based not onlyon the fact that it had a clear promotional meaning in the context of the use of the goods and services concerned, but also onthe fact that the semantic content of the term ‘endurance’, by suggesting the superior quality of those goods and services, wasintended solely to incite consumers to purchase those goods and services and not to indicate their origin. The first complaintwas rejected in its entirety.

– Second complaint

The second complaint submitted, first, that the mark applied for was not regarded as a figurative mark, but rather as a wordmark and that, even though the examiner and the Board of Appeal had actually ruled on the figurative mark applied for, theconclusion drawn was overly biased in favour of confirming the examiner’s initial refusal on the basis – which was ultimatelyrejected – that it was a descriptive word mark. Secondly, the applicant submitted that the minimum threshold of distinctivenessrequired to allow the registration of a figurative mark is comparatively lower when the word element is defined by the EUIPO asbeing non-descriptive.
In the present case, it was clear that the board had examined the sign as being a figurative mark. The board had reached theconclusion that the mark did not contain any embellishing feature that would make it stand out as a trademark and, therefore,found that it was incapable of performing the essential function of a trademark.

In that regard, the applicant had not explained in what way the font of the term ‘endurance’ was capable of being regarded asdistinctive, individually or together with that term, or on what basis and why that font could distract the consumer from themessage conveyed by that word.

Therefore, the court held that a minimum degree of distinctiveness was not reached with regard to the goods and the services,which are aimed at providing those goods. The font used, and the way in which it is written, did not make the term ‘endurance’illegible or difficult to read and did not distract the consumer from the message conveyed by that term. In any event, thefigurative aspect of the mark was not capable, precisely on account of its banality, of attracting the relevant consumer’sattention and making them perceive the sign as an indication of commercial origin. The applicant’s first argument was thereforerejected as unfounded.
Secondly, it was pointed out, that, as regards its second argument, the applicant had in no way substantiated the claim that theminimum threshold for a figurative mark is comparatively lower when the word element is defined by the Board of Appeal asbeing non-descriptive. At the hearing, the applicant was asked to clarify its comments and replied that it was not able to giveprecise reasons in support of its claim.

In the present case, the promotional nature of the term ‘endurance’ was an additional reason for refusing registration once itsdescriptiveness had been ruled out. Consequently, in the light of the lack of precision of the applicant’s line of argument and theirrelevance of previous EUIPO practice, the applicant’s second argument and, consequently, its second complaint, was rejectedas unfounded.

– Third complaint

The applicant submitted that the term ‘endurance’ was incorrectly categorised as being merely or solely promotional.

First, the court rejected the applicant’s argument relating to the taking into account of the examiner’s objection based on thedescriptiveness of the term ‘endurance’, an objection which was subsequently withdrawn. The Board of Appeal had carried outits analysis solely with regard to the absolute ground set out in Article 7(1)(b). Consequently, although, as the mark was regarded as conveying only a clear promotional message, which merely serves to highlight the positive aspects of the goodsand the services, and to incite consumers to purchase them, that was manifestly on account of (i) the context of the practice ofsports or endurance sports in which those goods and services designated by the term ‘endurance’ are used and promoted, and(ii) the lack of other word or figurative elements which served to distract the relevant public’s attention from the directpromotional message.

The first argument was therefore rejected as unfounded and the reference to previous case law was then rejected since thefactual situation was different from that in the present case. It followed that the case law cited by the applicant was not relevantand the applicant’s second argument and, consequently, its third complaint, was rejected as unfounded.

As a consequence, the first plea was rejected as unfounded.

Second plea

The applicant submitted that the Board of Appeal had infringed the principles of legal certainty and equal treatment, becausethe contested decision was at variance with the EUIPO’s previous practice.

It was apparent from the examination of the first plea that the board was right in finding that the mark was caught by theabsolute ground for refusal set out in Article 7(1)(b), with the result that the applicant could not usefully rely, for the purposesof casting doubt on that finding, on previous EUIPO decisions.

Board of Appeal decisions concerning the registration of a sign as an EU trademark are adopted in the exercise of circumscribedpowers and are not a matter of discretion. Accordingly, the legality of the decisions must be assessed solely on the basis of thetrademark regulation, as interpreted by the EU judicature, and not on the basis of previous decision-making practice.

In any event, the respect for the principle of equal treatment must be consistent with the respect for the principle of legality. Theapplication did not contain any argument against the board’s finding that a person who files an application for registrationcannot rely, to their advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefitof someone else.

In the present case, the applicant referred to (i) decisions of EUIPO examiners, which could not bind the Board of Appeal and theGeneral Court, and (ii) an opposition decision provided for the first time at the oral hearing, which could not influence theassessment of the absolute ground for refusal and post-dated the board’s decision, with the result that it could not have aneffect on the legality of that decision.

Consequently, the applicant’s second plea was rejected as ineffective and the action was dismissed.

This article first appeared on WTR Daily, part of World Trademark Review, in November 2023. For further information, please go to www.worldtrademarkreview.com.