Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 26/01/2017

ESOF vzw

Matthew Coucke

Schapenstraat 47

B-3000 Leuven

BÉLGICA

Application No:	014326722
Your reference:
Trade mark:	European Student Orchestra Festival
Mark type:	Word mark
Applicant:	ESOF vzw Schapenstraat 47 B-3000 Leuven BÉLGICA

The Office raised an objection on 01/08/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 29/09/2016, which may be summarised as follows:

1. The Office should consider the term ‘student orchestra’ as a whole because it is a compound noun. This fact would alter the meaning of the mark ‘European Student Orchestra Festival’ stated by the Office in its notice.

2. There are similar registered trade marks with a very similar structure to the mark ‘European Student Orchestra Festival’ in TMview.

3. The purpose of the EUTM application is to protect IP rights of the applicant. The applicant created a new concept which has no precedent in the European Union. The applicant disagrees that the mark is devoid of any distinctive character.

Pursuant to Article 75 EUTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

1. As regards the applicant’s first argument, the Office disagrees with the applicant. The Office notes that there is not any dictionary definition for the combination ‘student orchestra’. The Office maintains its opinion that the mark as a whole immediately informs consumers without further reflection that the services applied for are closely related to an orchestra festival of European students in the meaning that the music festival services are related to the some festival of the student orchestras originating from Europe.

2. As regards the applicant’s second argument, the Office notes that the TMview is a database containing registered trade marks or applications of trade marks not only in the European Union but also in a number of other countries. The trade marks listed by the applicant were not registered by the Office.

As regards the national decisions, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

3. As regards the applicant’s final argument, the Office notes that the distinctive character and descriptiveness of a trade mark must be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. Therefore the fact that the applicant created a new concept is not relevant for assessing of the distinctive character and descriptiveness of the mark.

Furthermore, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 326 722 is hereby rejected for all the services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

Klara BOUSKOVA