Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 22/02/2016

MICHAEL KYPRIANOU & CO. LLC

P.O. Box 28765

2082 Nicosia

CHIPRE

Application No:	014545602
Your reference:
Trade mark:	OPTIONWEB REGULATED AND SAFE TRADING
Mark type:	Figurative mark
Applicant:	LIONSMAN CAPITAL MARKETS (CYPRUS) LTD Evagora Papachristoforou, Petoussis Bros Building, 4th Floor CY-3030 Limassol CHIPRE

The Office raised an objection on 14/10/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 26/11/2015, which may be summarised as follows:

1. The applicant argues that the mark contains numerous distinctive features which make it registrable. The mark contains the colours white, grey, yellow and blue. The word “option” is written in white so that there is a contrast with the word “web” which is written in yellow. The phrase “REGULATED AND SAFE TRADING’ is written in smaller fonts. It cannot also be missed that within the letter ‘o’ of the word ‘option’ there is an arrow crossing through this letter.

2. In terms of the phrase ‘REGULATED AND SAFE TRADING’ the applicant argues that it presented the mark exactly as it will be used in the market and did not attempt to mislead the Office nor the relevant public. The descriptive phrase becomes distinctive with the addition of other elements in the mark such as the fonts and the colours. The applicant adds: “if the mark was only consisted of the phrase ‘REGULATED AND SAFE TRADING’ then it should have been rejected.

3. The applicant argues that the level of attention of the relevant public will be higher than normal as it is directed to professionals doing business within financial markets.

4. The Office has accepted the CTM 572750 ‘FX OPTIONWATCH’

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)(c) CTMR, ‘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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T 118/00, ‘Procter & Gamble’, paragraph 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)CTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.)

This clearly applies to the present case. The sign at issue contains is a straightforward combination of the descriptive/ laudatory verbal elements ‘OPTION WEB REGULATED AND SAFE TRADING’, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. As mentioned in the objections letter, in the present case the mark immediately informs consumers without further reflection that the services applied for are, inter alia, agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures which provide risk free, trustworthy and controlled transactions of stock options via the internet which is in conformity with the rules and the law of the relevant market.

As regards the applicant’s claim that the stylisation of the mark - -makes it distinctive, the Office notes the following:

In the examination of a mark, when the verbal element is devoid of distinctive character, it must be examined, in particular, whether the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the word element. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the word element. This is not the case with the present mark, since the font of the mark is a standard, easily legible and unmemorable typeface and thus devoid of distinctive character. This is also confirmed by the judgment of 15/09/2005, C-37/03P, ‘BioID’ which stated that the common typeface did not enable the mark in question to serve as an indicator of origin. In other words, in order to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to demand a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed goods and services.

The Office does not agree with the applicant that the stylisation of the mark makes it distinctive and notes that in the present case, the verbal element is placed in a banal, label which is not capable of impressing itself on the consumer’s mind, since it is too simple and/or commonly used in the trade. Additionally, the use of white and yellow letters in a blue background is too common/ banal to make the mark distinctive. Overall there is nothing striking in the mark which would make it memorable to the relevant consumers. Furthermore, the device depicting the graphic representation of a stock option price highlights the descriptive and laudatory message of the mark.

Therefore, it must be confirmed that the expression words ‘OPTION WEB REGULATED AND SAFE TRADING’, despite its figurative elements, is not unusual and does not depart from the individual meaning of the words of which it is composed. On the contrary, as already analysed, it is a straightforward combination of descriptive elements which do not create an impression sufficiently far removed from that produced by the mere combination of its constitutive elements which are descriptive (see 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 43). The applicant itself conceded that: “if the mark was only consisted of the phrase ‘REGULATED AND SAFE TRADING’ then it should have been rejected” and it relies on the figurative elements to render the mark distinctive. As illustrated above, the stylisation of the mark cannot render it distinctive.

The Office agrees with the applicant that some of the services designated by the mark may indeed be directed at professionals but not exclusively to them. Their level of attention will therefore most likely be high. However, this does not mean that the members belonging to these circles of consumers, although more attentive, will be not able to perceive any descriptive connotation in the sign under examination. In that regard, it must be pointed out that a higher level of attention and awareness by the professional public at issue does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, components which might be perceived as rather fanciful and distinctive by the public at large, may be perceived immediately as common and non-distinctive by a more aware and attentive public (see, by analogy, 11/10/2011, T 87/10, Pipeline, EU:T:2011:582, § 27 to 28).In addition, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

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 the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 35).

The Office strives to be consistent and always has regard to previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence which reflects them. Moreover, the fact that one trade mark may contain one of the words of the objectionable trade mark does not suffice to overcome the objection on absolute grounds. The Office also notes that the cited trade mark was registered a long time ago (in 1997) and since then the Office’s practice and relevant case law have substantially evolved.

The examination of absolute grounds for refusal must be full and stringent (see judgment of 6 May 2003, C 104/01, ‘Libertel’, para. 59), and may not just consist of the mere repetition of supposedly comparable decisions.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 545 602 is hereby rejected for the following services:

Class 36 Agencies for brokerage of securities trading in overseas securities markets and of transactions on commission of overseas market securities futures; Finance services; Investment services; Personal finance services; Financial portfolio management; Providing of economic/financial information, data, consultancy and advice; Financial transfers and transactions, and payment services; Investment consultation; Brokerage of commodities; Financial investment advisory services. (Γραφεία πρακτόρευσης συναλλαγών χρεογράφων σε αγορές χρεογράφων εξωτερικού και συναλλαγών συμβολαίων μελλοντικής εκπλήρωσης χρεογράφων υπερπόντιων αγορών με προμήθεια· Οικονομικές υπηρεσίες· Επενδυτικές υπηρεσίες· Προσωπικές οικονομικές υπηρεσίες· Οικονομικές υπηρεσίες διαχείρισης χαρτοφυλακίου· Οικονομικές /χρηματοπιστωτικές πληροφορίες, στοιχεία, υπηρεσίες συμβουλών και γνωμοδοτήσεων· Οικονομικές /χρηματοπιστωτικές συναλλαγές και εμβάσματα και υπηρεσίες πληρωμών· Υπηρεσίες παροχής συμβουλών σε θέματα επενδύσεων χρηματιστηριακών εμπορευμάτων· Υπηρεσίες παροχής συμβουλών σε θέματα χρηματοοικονομικών επενδύσεων· Υπηρεσίες παροχής συμβουλών σε θέματα επενδύσεων· Μεσιτεία χρηματιστηριακών εμπορευμάτων· Υπηρεσίες παροχής συμβουλών σε θέματα επενδύσεων χρηματιστηριακών εμπορευμάτων· Υπηρεσίες παροχής συμβουλών σε θέματα επενδύσεων.)

The application will be accepted for the remaining goods and services.

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.

Aliki SPANDAGOU