O-452-18 TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATIONS Nos. 3250658 AND 3250660 IN THE NAME OF HELEN ROSEMARY BROWN AND IN THE MATTER OF APPEALS BY HELEN ROSEMARY BROWN AGAINST DECISIONS OF MS LINDA SMITH DATED 29 MARCH 2018 _______________ DECISION _______________ Introduction 1. On 16 August 2017, Helen Rosemary Brown (“the Applicant”) made 2 x applications to register the designation MOUTH WATERINGLY SPECIAL for use as a trade mark in the UK as follows: (1) Application number 3250658 in Class 30 for the goods listed at Annex A to this decision; (2) Application number 3250660 in Class 29 for the goods listed at Annex B to this decision. 2. The Registrar raised objections to the Applications under Section 3(1)(b) of the Trade Marks Act 1994 which states: 3. - (1) The following shall not be registered – […] (b) trade marks which are devoid of any distinctive character …” 3. The accepted legal approach to Section 3(1)(b) was summarised by the Court of Justice of the European Union (“CJEU”) (in relation to the equivalent art. 7(1)(b) of Regulation (EU) 2017/1001 on the EU trade mark) in Case C-265/09 P, OHIM v. BORCO-Marken-Import Matthiesen GmbH & Co. KG. [2010] ECR I-8265 at paragraphs 30 – 37 and 45 (without authorities): “30. Under that provision [art. 7(1)(b)/s. 3(1)(b)], marks which are devoid of any distinctive character are not to be registered. 31. According to settled case‑law , for a trade m ark to possess distinctive character for the purposes of that provision, it must serve to identify the product in respect of which registration is applied for as originating from a 1 O-452-18 particular undertaking, and thus to distinguish that product from those of other undertakings … 32. It is settled case‑la w th a t th a t d istin c tiv e c h a ra c te r m u st b e a sse sse d , first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception of them by the relevant public … Furthermore, the Court has held, as OHIM points out in its appeal, that that method of assessment is also applicable to an analysis of the distinctive character of signs consisting solely of a colour per se, three‑dimensional marks and slogans … 33. However, 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 … 34. In that regard, the Court has already stated that difficulties in establishing distinctiveness which may be associated with certain categories of marks 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 application of the criterion of distinctiveness as interpreted in the case-law … 35. It is apparent from the case‑law of the C ourt … that the distinctive character of a mark must always be assessed specifically by reference to the goods or services designated … 36. … the requirement of an examination as to whether, on the facts, the sign in question is capable of distinguishing the goods or services designated from those of other undertakings, allows for the accommodation of the ground for refusal laid down in Article 7(1)(b) of Regulation No 40/94 with the general capacity of a sign to constitute a trade mark recognised in Article 4 thereof. 37. In that regard, it should be pointed out that, even though it is apparent from the case‑law cited that the C ourt has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts. […] 45. As is clear from the case‑law of the C ourt, the exam ination of trade m ark applications must not be minimal, but must be stringent and full, in order to prevent trade marks from being improperly registered and, for reasons of legal certainty and good administration, to ensure that trade marks whose use could be successfully challenged before the courts are not registered …” 2 O-452-18 4. The objections taken by the Examiner under Section 3(1)(b) were that the mark would be seen as a promotional message not conveying any trade mark significance to the average consumer in relation to the goods in Classes 30 and 29 respectively concerned. 5. The Applicant took issue with these objections primarily on the basis that her trade mark MOUTHWATERINGLY SPECIAL had already been accepted and registered by the UKIPO under number 3226567 in Class 35 for retail services connected with the sale of foodstuffs. In the Applicant’s contention the marks the subject of that registration and the present Applications conveyed the same intended message namely, that the products in question were of better quality, content and taste. 6. Following an oral hearing, the Applications were refused registration for the reasons given by Ms. Linda Smith, the Hearing Officer acting for the Registrar, in 2 x written decisions issued on 29 March 2018 under reference numbers BL O/204/18 (Application No. 3250658) and BL O/205/18 (Application No. 3250660). The Hearing Officer’s decisions 7. Ms. Smith reminded herself of the law noting that she was dealing with a mark that might be viewed as a promotional statement in relation to which the CJEU had stated in Case C-398/08 P, Audi AG v. OHIM [2010] ECR I-0535 at paragraph 44: “… while it is true … that a mark possesses distinctive character only in so far as it serves to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking, it must be held that the mere fact that a mark 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 mark is devoid of distinctive character.” 8. Nevertheless, Ms. Smith also noted that the test was one of immediacy or first impression; would the average consumer immediately perceive the mark “as an indication of the commercial origin of the goods … in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods … of the owner of the mark from those of a different commercial origin” (Case T-130/01, Sykes Enterprises, Inc. v. OHIM [2002] ECR II-5179, para. 20) 9. The Hearing Officer decided that the mark MOUTH WATERINGLY SPECIAL would not be so perceived in relation to the goods in Classes 30 and 29 applied for. Having identified the average consumer as the general public, she said: “18. The mark applied for consists of the phrase ‘mouth wateringly special’. The Merriam Webster online dictionary defines ‘mouth wateringly’ as being an adverb of the verb ‘mouth watering’ which itself means “arousing the appetite; tantalizingly delicious or appealing”. One of the definitions of the word ‘special’ in that same dictionary is “distinguished by some unusual quality; especially: being in some way superior”. 3 O-452-18 19. Used in respect of the goods intended for protection, I do not believe that consumers would perceive the phrase ‘mouth wateringly special’ as being anything other than a claim to those goods being of a superior quality, reflected in the fact that they will make one’s mouth water. In this application, the sign appears in plain word type and has no stylisation, device elements or unusual grammatical juxtaposition to give it any distinctive character. It is highly unlikely that the words alone would indicate, to consumers, the trade origin of the goods. [ …] 21. I have to decide whether the mark, which could be considered a promotional statement, has any qualities which could raise this promotional message into a distinctive indicator of trade origin. It is clear from the comments of the [CJEU in Audi] that where a sign (whether used in a promotional capacity or not) possesses ‘originality’ and ‘resonance’, and is capable of being remembered because of qualities arising from inter alia word-play, imagination, creativity or unexpectedness, then it cannot be considered to be completely devoid of distinctive character. Having made a full semantic analysis of this sign, without pre-conception or pre-emption, and taking into account all known and relevant surrounding circumstances, I do not consider it to have any of the qualities that would enable this sign to be seen as a trade mark. The mark is not, in any way, imaginative, surprising or unexpected. Used on or in respect of foodstuffs and beverages, it merely informs one that they are ‘mouth wateringly special’. In this respect, I have considered the comments made by the Appointed Person in BL O-353-10 BRING THE WORLD CLOSER where, at page 15, the following is stated: “The expression... is caught by the exclusion from registration in section 3(1)(b) because it is liable to be perceived and remembered by the relevant average consumer as nothing more than an origin-neutral statement about the [goods]concerned.