Refusal of application for a European Union trade mark

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

Alicante, 30/03/2016

NACHTWEY IP RECHTSANWÄLTE

Buschhöhe 10

D-28357 Bremen

ALEMANIA

Application No:	014632806
Your reference:	U/014
Trade mark:	Praxisbörse
Mark type:	Word mark
Applicant:	Universität Bremen Enrique-Schmidt-Straße 7 D-28359 Bremen ALEMANIA

I. The Office raised an objection on 23/11/2015, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character (see the enclosed letter of three pages).

II. The applicant submitted its observations on 20/01/2016, which may be summarised as follows:

The sign Praxisbörse as a whole is not descriptive of the services in question. Experience or practice cannot be exchanged. The services applied for would not be classified as an exchange of experience but as bringing together of people to assist them in getting employment. Further mental steps are required to establish a link between the sign and the services in question.

III. 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)(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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see 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) EUTMR 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) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

The Office gave a dictionary definition in its original objection and examined the meaning of the term Praxisbörse in relation to the services in question and by reference to the perception of the section of the public targeted. Contrary to the applicant’s view, the meaning of the sign, as examined by the Office, is capable of designating characteristics of all the services in question.

As demonstrated in the objection letter, by reference to the German standard dictionary Duden, the term Praxisbörse can be understood as denoting an institution or event to arrange/exchange practice, because “Praxis” refers to practice/experience and “Börse” denotes a place, institution or an event where something is traded/exchanged/arranged.

Contrary to the applicant´s opinion practice/experience can without any doubt be subject to an arrangement/exchange between somebody looking for practice/ experience (e.g. somebody looking for employment or education) and somebody offering such practice/experience (e.g. a company offering employment or an entity offering education).

As the applicant correctly states, the services applied for serve to bring people together to assist them in getting employment. Therefore the term Praxisbörse informs the relevant public immediately, that the services applied for serve to arrange/exchange e.g. work practice/experience, by providing them with recruitment/employment services, etc. in Class 35, and educational services and events in Class 41, that will enable them to acquire or exchange practice or experience to make them fit for work or to meet with people for arrangements regarding work practice/experience. All these service are of such a nature, that a consumer looking for the arrangement or an exchange of practice/experience would typically expect to be provided as part of an institution/event through which the acquisition of practice or experience is arranged, or such practice/experience is exchanged.

The combination of the words “Praxis” and “Börse” to the term Praxisbörse complies with German grammar rules, and the term as a whole does not have any meaning that goes beyond the combined content of its elements. Consequently, the meaning of the term Praxisbörse as set out above will be clear to the relevant consumer within the relevant public; this consumer will immediately and without any mental step establish a direct and specific link between the mark and the services in respect of which registration is sought.

As the sign lacks any further element that might be perceived by the consumer as indicating the commercial origin of the goods and services applied for, the Office also maintains its opinion that the sign lacks the minimum level of distinctiveness to allow registration under Article 7(1)(b) EUTMR.

IV. For the above reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for Community Trade Mark 14 632 806 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. 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.

Tobias KLEE