Whilst marketing teams and brand holders like to benefit from the latest trend, it's important to remember that a trade mark must be distinctive to perform its essential function as an indicator of the commercial origin of its goods and services
The practice of meditation and mindfulness has seen a rise in popularity in recent years, with many adopting these practices to promote their own personal wellbeing and mental health. Case T-48/20 Sahaj Marg Spirituality Foundation v EUIPO serves as a reminder to brand owners that they should, prior to filing a trade mark application, take steps to consider whether their trade mark is in fact distinctive, and the consumer is able to distinguish it from the goods and services of other proprietors. Or, whether their trade mark is descriptive because it is one which conveys a meaning which is associated with the relevant goods and services.
Background
On 19 April 2018 the Applicant Sahaj Marg Spirituality Foundation sought to obtain an International Trade Mark registration designating the EU for the figurative mark in class 16 for “Printed matter; instructional and teaching materials”, class 41 for “Education; providing of training and cultural activities”, and class 45 for “Consultancy services in spirituality”.
On examination, the EUIPO issued a provisional refusal of the EU designation for all of the abovementioned goods and services on the basis that the sign was descriptive and devoid of distinctive character under Article 7(1)(b) and (c) and 7(2) of the European Trade Mark Regulation 2017/1001 (EUTMR). In its reasoning, the EUIPO found that the relevant English-speaking public would understand the sign as describing a meditation and relaxation technique. To illustrate this point, the EUIPO provided the Applicant with Internet hyperlinks on ‘Heartfulness Meditation’, and ‘Introduction to Heartfulness Relaxation and Meditation’.
The Applicant appealed this decision to the EUIPO Fourth Board of Appeal in November 2019. The Board subsequently dismissed the appeal and found the mark was ineligible for protection because the word ‘Heartfulness’ is used to refer to the practices of meditation, psychotherapy or mindful education. Whilst it might not be immediately clear how the meditation is practised, or what the method consists of, the fact that the mark is used to designate a type of meditation offered by the Applicant to distinguish its goods and services does not affect the descriptiveness of the mark.
Following the decision of the Board of Appeal, the Applicant then appealed to the General Court alleging Infringement of Article 7(1)(b), (c) and 7(2) EUTMR. In addition to these grounds, the Applicant also included in its submissions that the EUIPO failed to comply with its previous decisions concerning the registration of trade marks containing the word ‘heart’.
General Court’s Decision
Infringement of Article 7(1)(c)
The General Court confirmed that signs or indications which may serve, in trade, to designate the characteristics of the goods or services in respect of which registration is sought are deemed to be incapable of performing the essential function of a trade mark. This is to identify the commercial origin of the goods or services, enabling the consumer to choose to acquire them again, if it was a positive experience, or to avoid doing so in the future, if the experience was negative. It follows that for a sign to fall foul of Article 7 there must be a direct and specific relationship between the sign and the goods and services to enable the relevant public to immediately perceive, without further thought, a description of the goods and services in question or one of their characteristics.
The Applicant claimed that it developed the ‘heartfulness’ technique itself, and that ‘heartfulness’ is a made-up word and carries no meaning. Unfortunately for the Applicant, the General Court confirmed the Board of Appeal’s findings that ‘Heartfulness’ is in fact a word and can be found in the Oxford English Dictionary and the Lexico Oxford Online Dictionary. Indeed, there is also a book about a meditation technique called the ‘Heartfulness Way’ in which the principles of ‘heartfulness’ are described by a heartfulness practitioner/trainer. Despite the additional third-party references, the Applicant did not dispute the Board of Appeal’s assessment that the goods and services related to meditation and relaxation techniques.
Whilst the Applicant submitted that it created the word, and that the Board of Appeal erred in failing to take account of the fact that consumers identified that word with the Applicant, the General Court clarified that just because the mark was created by the Applicant to designate a particular meditation or relaxation method, this does not mean that the mark would automatically benefit from trade mark registration. In order for the mark to benefit from such registration, the relevant public must perceive the mark as an indication of goods or services offered by the proprietor and be able to distinguish them from the goods and services of other proprietors. Since the Applicant by its own admission confirmed that the word ‘heartfulness’ was presented as a particular relaxation and meditation technique and not as an indicator of the goods and services offered by the Applicant, the Board of Appeal was right to refuse the registration Under Article 7(1)(c).
Infringement of Article 7(1)(b)
In relation to the appeal alleging infringement of Article 7(1)(b) EUTMR, it followed that as the mark was refused registration under Article 7(1)(c) there was no need for the General Court to consider the merits of the second plea, as it was sufficient that one of the absolute grounds for refusal applied in order for a sign not to be registerable as an EU Trade Mark.
Previous decision-making practice of EUIPO
The Applicant further submitted that the EUIPO had erred in departing from its previous decision making practices, and provided the EUIPO with several examples of ‘heart’ registrations combined with additional words, and also referred to its own earlier figurative trademark EUTM no. 14610621 (for the word “heartfulness” in combination with a logo).The General Court maintained that the decision of the Board of Appeal must be assessed solely on the basis of the EU regulation 2017/1001 and not on the basis of previous decision-making practices. It held further that an Applicant cannot complain that the Board of Appeal based its decision on the Regulation rather than previous decisions of the Boards of Appeal. This is because the EUIPO is under a duty to exercise its powers in accordance with EU law and, therefore, an Applicant who files a trade mark cannot rely to its advantage, in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. In short, the Court maintained that the registration of a sign depends on specific criteria in the Regulation, which are applicable in the factual circumstances of the particular case, the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.
In the present case, the Court held that the application filed by the Applicant was caught by Article 7(1) EUTMR. And that the Applicant therefore could not cast doubt on this decision based on the EUIPO’s previous decision-making practice.
On this basis the General Court dismissed the Applicant’s appeal.
Discussion
The case serves as a reminder that, whilst marketing teams and brand holders like to benefit from the latest trend or movement, or have a trade mark convey some sort of meaning to its consumers in order for it to be more memorable, it is important to remember that a trade mark must be able to perform its essential function, that is as an indicator of commercial origin for its goods and services so that they may be distinguished from the goods and services of other proprietors.
Where a mark, such as the matter at hand, designates a particular meditation and relaxation technique which informs consumers immediately without further reflection that the mark is a meditation and relaxation technique, that mark must remain available for public use and not become the subject of a monopoly even if that mark is not commonly used.