“AGING BACKWARDS” for fitness-related goods and services? Insufficiently distinctive, says EUIPO Fourth Board of Appeal

Can the phrase “AGING BACKWARDS” be regarded as sufficiently distinctive, when used for fitness-related goods and services? The EUIPO Fourth Board of Appeal recently answered this in the negative in a decision handed down a few days ago.

Background

In September 2017, Canada Inc sought to register the phrase “AGING BACKWARDS” as an EU trade mark (EUTM) for goods and services in Classes 9 (Pre-recorded DVDs and downloadable videos containing physical fitness instruction and episodes in the nature of a dramatic television series) and 42 (Conducting fitness classes, developing fitness programs, fitness training, organisation of seminars, working groups, research groups and conventions in the field of physical fitness and health and wellness) of the Nice Classification.

The examiner rejected the application on grounds that the sign would be devoid of distinctive character as per Article 7(1)(b) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)). In particular, by taking the sign as a whole, it would simply be perceived as a laudatory slogan indicating that the relevant goods and services would help customers obtain rejuvenating effects (i.e. to age backwards). The examiner also observed that the wording in question is commonly used in the EU in relation to fitness, health, diet and well-being.

The applicant appealed the decision to the Fourth Board of Appeal of EUIPO claiming that:

• Some of the goods and services would be entirely unrelated to aging, health, or fitness, eg, pre-recorded DVDs and downloadable videos, episodes in the nature of a dramatic television series;
• While it is might be that the remaining goods and services specifically relate or may relate to health, fitness or well-being, the sign would have not been shown to be commonly used in the EU in said context. 

The decision

The Board first noted that for a sign to possess distinctive character, it must serve to identify the goods and services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings (C-473/01 P, Procter & Gamble v OHIM). Furthermore, the public perceives a mark as a whole and does not proceed to analyse its various details (C-342/97, Lloyd Schuhfabrik).

The Board then went on to note that registration of a trade mark which consists of indications that are also used as advertising slogans are not precluded from registration per se. However, such signs must include components that might – beyond their obvious promotional meaning – enable the relevant public to memorise the word sequence easily and immediately as a distinctive trade mark for specific goods and services.

Accordingly, the distinctive character must be assessed, first, by reference to the goods and services in respect of which registration is sought and, second, by reference to the perception of the sign by the relevant public (C-398/08P, Audi v OHIM).

The relevant services in Class 41 concern physical fitness, nutrition, weight loss, health and wellness, as does the majority of the digital media applied for in Class 9. The relevant public consists of the public at large, including professionals in the fitness, health and wellness fields. In accordance with Article 7(2) EUTMR, the assessment should be based on the English-speaking part of that public.

The Board then went on to note that "AGING BACKWARDS" would be perceived by the relevant public as a laudatory slogan, namely the promise that the purchase and use of relevant goods and services would help consumers appear younger, and attract custom precisely because clients wish to look and/or feel younger. Exercise is well known for keeping muscles and immune systems young: both physical exercise and healthy lifestyle can therefore overcome health problems that have the effect of making one both frailer and prematurely old. One can therefore indeed appear younger, stronger, and be sprightlier than before in this way.

Gotta look young and schmexy for my human

As regard to other goods and services, the Board deemed it sufficient to note that the list is incomplete, but that it would nonetheless include goods and services relating to fitness, health, and wellness.

As a final note, the English-speaking public in the EU would indeed understand the phrase. Given the number of books entitled ‘Aging backwards’, in particular self-help books on how to ‘age backwards’, there is no doubt that in the English language and the health, fitness and wellness fields, the term would be already well-known. This is also supported through searches on websites like Amazon.com and the fact that English language books are easily available for purchase from outside the EU to English speakers within the EU.

Concluding remarks

In conclusion, this decision indicates that while it might not be possible to actually age backwards, as Brad Pitt did in the movie “The Curious Case of Benjamin Button”, it is still – largely - possible to improve physical appearance by exercising and living a healthy lifestyle. Despite all this, signs like that one at issue here would be still considered non-distinctive ... at least for certain goods and services.