Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/11/2015

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	014402011
Your reference:	21.8.M108435
Trade mark:	TRAVEL PROBLEM SOLVED
Mark type:	Word mark
Applicant:	Kayak Software Corporation 7 Market Street Stamford Connecticut 06902 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/08/2015 pursuant to Article 7(1)(b) and 7(2) CTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 06/10/2015 which may be summarised as follows:

1. The applied for trade mark meets the minimum standard of distinctiveness required to be registered, as the syntactic structure of the mark is unusual, creative and original. The mark as a whole is distinctive in relation to the services applied for.

2. The mark is distinctive as the mark ‘TRAVEL PROBLEM SOLVED’ is not the same as the expressions – SOLVE YOUR TRAVEL PROBLEMS or TRAVEL PROBLEM SOLUTION.

3. The English speaking consumer would, if anything, understand the expression TRAVEL PROBLEM SOLVED to mean that a travel problem has already been solved in the past, not that a solution to a travel problem is to be found in the future.

4. The Office has previously registered several similar trade marks.

Pursuant to Article 75 CTMR, 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) CTMR, “trade marks which are devoid of any distinctive character” are not to be registered.

The marks referred to in Article 7(1)(b) CTMR 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’ (judgment of 27/02/2002, T-79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T-320/03, ‘LIVE RICHLY’, paragraph 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (judgment of 04/10/2001, C 517/99, ‘Merz & Krell’, paragraph 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (judgment of 11/12/2001, T-138/00, ‘DAS PRINZIP DER BEQUEMLICHKEIT’, paragraph 44).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) CTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 20 and judgment of 03/07/2003, T-122/01, ‘BEST BUY’, paragraph 21).

As regards the applicant's observations, the Office replies as follows:

1. The applied for trade mark meets the minimum standard of distinctiveness required to be registered, as the syntactic structure of the mark is unusual, creative and original. The mark as a whole is distinctive in relation to the services applied for.

The Office considers that the relevant public would perceive the expression “TRAVEL PROBLEM SOLVED” only as a promotional laudatory message, the function of which is to communicate an inspirational or motivational statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services concerned, namely that they are the easiest and most enjoyable travel and travel arrangement services (judgment of 21/01/2010, C-398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 34). Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin. (See judgment of 15/09/2005, T 320/03, ‘LIVE RICHLY’, paragraph 84.)

2. The mark is distinctive as the mark ‘TRAVEL PROBLEM SOLVED’ is not the same as the expressions – SOLVE YOUR TRAVEL PROBLEMS or TRAVEL PROBLEM SOLUTION.

The Office considers that there is not a remarkable difference between the expressions “travel problem solved”, “travel problem solution” or “solve your travel problems”. The above mentioned expressions are not able to function as trade marks in relation to the claimed services. The Office explains that it is common to use motivational statements in marketing in order to urge consumers to consume. Similar motivational expressions, such as “travel problem solved”, “travel problem solution” or “solve your travel problems” are commonly used by various traders only for the purpose of encouraging the consumer to employ services. The relevant consumers are familiar with this fact and are used to such kinds of expressions and perceive them only as laudatory and motivational statements that might be used by various traders with the purpose of motivating and moulding consumers. Therefore these motivational expressions will be seen as fairly commonplace in the language of marketing and it follows that they do not have the ability to distinguish the claimed services.

3. The English speaking consumer would, if anything, understand the expression TRAVEL PROBLEM SOLVED to mean that a travel problem has already been solved in the past, not that a solution to a travel problem is to be found in the future.

In the Office’s opinion the relevant consumer when faced in a market situation with the applied for trade mark would not follow the same thought process as it is stated by the Applicant but would perceive it as simple laudatory, non-distinctive commercial information. The fact of whether the word “solved” is present in the present or the future or in the past not does not determine how the expression would be perceived by the relevant public. The majority would immediately recognize it as motivational commercial information that indicates only the fact that the Applicant claims to offer the easiest and most enjoyable travel and travel arrangement services. Therefore, there is nothing about the mark that might, beyond its obvious promotional laudatory meaning, enable the relevant consumer to memorise the sign easily and instantly as a distinctive mark for the services in question (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

4. The Office has previously registered several similar trade marks.

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case-law, decisions concerning registration of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15 September 2005, C-37/03P, ‘BioID’, paragraph 47 and judgment of 9 October 2002, T-36/01, ‘Glass-sheet surface, paragraph 35).

Moreover, it is not appropriate to compare the mark applied for and the registrations quoted by the applicant. This is mainly because any given mark should be assessed as a whole and not by comparing its individual elements with other registrations.

Further, it is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (see judgment of 27 February 2002, T-106/00, ‘STREAMSERVE’, paragraph 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) CTMR, the application for Community trade mark No 14 402 011 is hereby rejected.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Liina PUU