This decision raises interesting questions about the boundary between commercial promotion and distinctiveness required for a mark.
The context of the trademark application.
The company Expressions Parfumées, which specializes in the field of perfumes, had filed an application to register the sign “Sleepwell” as a word mark.
The products covered by the pledge mainly included essential oils, aromatic extracts, cleaning and perfume preparations and toiletries. According to the plaintiff these products aimed to promote relaxation and improve sleep quality, attributes reflected in the proposed brand.
EUIPO thus considered that the term “Sleepwell” was too descriptive and lacked distinctiveness. According to the office, the “relevant” English-speaking consumer will immediately perceive the term “Sleepwell” as a expression that literally means “sleep well”and therefore as one direct description of the supposed effects of the products covered by the pledge.
A rejection based on the lack of distinctiveness.
In its argumentation, EUIPO invoked that trademarks consisting solely of descriptive terms cannot be registered (Article 7(1)(c) EUTMR).
The aim is to prevent a company from appropriating generic terms which should remain available to all market participants. In this case, the term “Sleepwell” refers to a state that consumers desire without the need for cognitive effort to understand its meaning.
EUIPO also insisted that the absence of a space or hyphen between the two words making up the sign “Sleepwell” was not sufficient to give it distinctive character. Really, the target audience tends to break down terms to understand their overall meaning, especially when they refer to easy-to-understand concepts.
The arguments developed by the company Expressions Parfumées.
The plaintiff sought to defend the originality and effect of its trademark by arguing that the sign “Sleepwell” was not merely a descriptive term.
The company provided evidence that its products were formulated using fragrance design algorithms. These formulas were then validated by physiological tests that measured the brain frequencies of test participants exposed to the products during their sleep.
Despite these arguments, EUIPO maintained its refusal. She found that the company’s arguments, while interesting, supported the idea that rather, the term “Sleepwell” described the products’ function, not their commercial origin.
Furthermore, the documentation presented failed to convince the Harmonization Office that, despite its lack of inherent distinctiveness, the sign could fulfill its function of indicating origin.
On the contrary, the documents presented to the Office for Harmonization reinforced the idea that the sign was only an indication of the qualities of the products covered by the pledge, namely to help consumers improve the quality of their sleep.
An illustration of EUIPO’s refusal to register descriptive signs.
EUIPO’s refusal illustrates a classic pitfall encountered by applicants seeking to protect laudatory or descriptive terms as trademarks.
However The main function of a trademark is to help consumers identify the producer behind a product or service and to distinguish it from that of its competitors. An overly descriptive term, as assessed by EUIPO in this case, is thus unable to fulfill this identification function effectively.
According to the office, the “Sleepwell” sign does not allow consumers to specifically recall the commercial origin of the products covered by the lien.
In conclusion.
The EUIPO decision on the “Sleepwell” sign reminds the importance of distinctiveness for a trademark to be registered in the European Union.
This perfectly illustrates one of them the main difficulties encountered by economic operators in their choice of brand. Naturally, they address terms and expressions that describe or strongly evoke the products or services covered by the application, or at least certain qualities of those products or services.
Thereby, they come across the reality of trademark law and the requirement for distinctiveness, which the offices conscientiously remember.
So while the term “Sleepwell” may seem appropriate to describe products that aim to improve sleep, it is precisely this descriptive nature that has led to the rejection.
The Expressions Parfumées company nevertheless has one remedy and appeal this decision within two months of notification (Article 67 EUTMR). To do this, it must not only pay an appeal fee, but also argue in detail the reasons for its disagreement.
In the end, for her, it’s all about choose between adjusting your brand strategy or entering an appeal procedure to try to influence this decision.
The case of the “Sleepwell” sign is not isolated and highlights the strict requirements of the European trade mark system, particularly when it comes to evocative or descriptive terms. Businesses face a delicate balance between promoting products through catchy slogans and the need to create brands that really stand out in the minds of consumers.
