EU General Court says that ‘heartfulness’ for meditation cannot be registered as an EU trade mark
In an mindful (given the topic!) decision from earlier this year, the General Court considered that the word ‘heartfulness’ conveys the meaning of a particular relaxation and meditation technique and therefore does not perform its essential function as an indicator of commercial origin for meditation-related goods and services. The mark was therefore considered descriptive pursuant to Article 7(1)(c) of Regulation 2017/1001 (the EU trade mark regulation (EUTMR)).
The decision is interesting since it exposes the difficulties in registering terms that, whilst fanciful, are perceived as being associated with meditation practices. In particular, the General Court appears to be stringent, yet consistent, in its approach to these types of goods and services which is also testified by its earlier findings in Maharishi Foundation Ltd v OHIM (T-426/11). The present also provides useful guidance on the evaluation of the descriptive character of a sign within the field of spiritual practice.
Background
In April 2018, Sahaj Marg Spirituality Foundation (the applicant) obtained an international trade mark registration designating the EU for the following figurative sign:
The registration related to goods and services in Classes 16 (printed matter, instructional and teaching materials), 41 (education, providing of training and cultural activities), and 4 (consultancy services in spirituality) of the Nice Classification.
In April 2019, the EUIPO examiner refused the application for extension to the EU territory pursuant to Article 7(1)(b) – (c) and (2) EUTMR. The applicant appealed the decision to the EUIPO Fourth Board of Appeal (the board). In November 2019, the board dismissed the appeal and found that the word ‘heartfulness’ described a particular relaxation and meditation technique and informed the consumer, directly and without the need for further reflection, that the goods and services in question concerned that technique.
In particular, the board reasoned that the word provided sufficient information to the relevant public that allowed it to immediately perceive, without further thought, that the services in question were centred or based on the type of meditation known as ‘heartfulness’ and that the goods in question concerned that type of meditation. The relationship between the applicant’s mark and the subject matter or purpose of the goods and services in question were therefore sufficiently direct to render the word mark descriptive of those goods and services, in spite of the fact that the relevant public did not know how the meditation was practised or what the method used exactly consisted of. The fact that the applicant’s mark was used to designate a type of meditation offered by the applicant and to distinguish its services did not affect the conclusion regarding the descriptiveness of the mark.
The applicant subsequently appealed to the General Court and alleged infringement of Article 7(1)(b) and (c) and (2) EUTMR and failure to comply with EUIPO’s previous decision-making practice concerning the registration of signs containing the word ‘heart’.
Infringement of Article 7(1)(c) of Regulation 2017/1001
The applicant alleged, in essence, that the board had failed to take into account the fact that the word ‘heartfulness’ was created and published by the applicant itself in order to designate a particular relaxation and meditation technique and that, therefore, consumers would identify the applicant with the mark applied for.
The General Court considered that, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (Deutsche Post EURO EXPRESS v OHIM (T‑334/03)).
As regards the definition of the relevant public, the board had taken the view that the goods and services covered by the applicant’s mark, which may relate to meditation and relaxation techniques, were directed both to the public at large and to education and spirituality consultancy professionals. The applicant did not dispute this assessment.
Furthermore, the board had considered that the word ‘heartfulness’ described a particular relaxation and meditation technique and identified specific services in the field of spiritual practice. In addition, there is a book about that meditation technique called The Heartfulness Way, in which the principles of ‘heartfulness’ are described by a Heartfulness practitioner/trainer. In this regard, the applicant submitted that it had developed the technique in question and that it uses the word ‘heartfulness’ to designate its goods and services.
According to the General Court, the fact that the mark applied for was created by the applicant to designate a particular meditation or relaxation method could not mean that the mark should automatically benefit from registration as an EU trade mark. In order to benefit from such a registration, the applicant’s mark had to enable the relevant public immediately to perceive the mark as an indication of goods or services offered by the applicant and distinguish them from the same goods and services that have a different commercial origin (Kaatsu Japan v OHIM (T‑567/12)).
Since the applicant confirmed that the word ‘heartfulness’ presented a particular relaxation and meditation technique and was not an indicator of the goods and services offered by the applicant, the General Court considered that the board had been correct to refuse registration of the applicant’s mark, pursuant to Article 7(1)(c) EUTMR.
The first part of the applicant’s single plea was therefore rejected.
Infringement of Article 7(1)(b) EUTMR
In relation to Article 7(1)(b) EUTMR, the General Court noted that it is sufficient that one of the absolute grounds for refusal apply in order for a sign not to be registrable as an EU trade mark. Since the applicant’s sign was descriptive for the purposes of Article 7(1)(c) EUTMR, there was no need to consider the merits of the second part of the plea.
Previous decision-making practice of EUIPO
By the third part of its plea, the applicant submitted that the board had erred in departing from its previous decision-making practice.
The General Court considered that the decisions concerning the registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of the decisions of the board had to be assessed solely on the basis of the EUTMR, as interpreted by the EU judicature, and not on the basis of a previous decision-making practice.
Furthermore, it is also clear from case law that the EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law. Although, in the light of the principles of equal treatment and sound administration, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must be consistent with respect for the principle of legality. Consequently, a person who files an application for registration of a sign as a mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else (Agencja Wydawnicza Technopol v OHIM (C‑51/10 P)).
In the present case, the application was caught within one of the grounds for refusal set out in Article 7(1) EUTMR. Since the board had been right to conclude that registration of the mark applied for in respect of the goods at issue was incompatible with that regulation, the applicant could not properly rely, in order to cast doubt on that conclusion, on EUIPO’s previous decision-making practice.
In light of all of the above, the General Court dismissed the applicant’s plea in its entirety.