Refusal of application for a European Union trade mark

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

Alicante, 14/04/2016

CLEVELAND

10 Fetter Lane

London EC4A 1BR

REINO UNIDO

Application No:	015003015
Your reference:	LSH/NS/62944EM1
Trade mark:	ParkandTube
Mark type:	Figurative mark
Applicant:	Transport for London (statutory authority) Windsor House 42-50 Victoria Street London SW1H 0TL REINO UNIDO

The Office raised an objection on 26/01/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR 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 24/03/2016, which may be summarised as follows:

1. The term ‘Tube’ or ‘The Tube’ refers to solely the London Underground, Annex A further shows further supporting use of the mark.

2. Annex B includes a Wikipedia extract to further support the use as a specific transport network unique to London, and also use as a nickname for the network.

3. Annex C and Annex D demonstrate that Transport for London owns rights to the UK registration for ‘THE TUBE’

4. The mark must be considered as a whole, and the mark forms an unlikely lexical construct.

5. The examiner has not provided an explanation of how the mark lacks distinctiveness for each of the goods and services listed in the application.

6. Annex E demonstrates how the applicant owns the specific font applied for to add stylisation to the mark in question.

7. A number of earlier EUIPO acceptances are included in Annex F which are accepted based upon their stylisation which in the applicants view include no more stylisation than the subject mark.

8. The word Tube is distinctive for the goods and services offered by the applicant so the addition of ‘Park and’ must enhance this further.

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.

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 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).

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’ (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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (judgment of 29/04/2004, joined cases C‑456/01 P and C‑457/01 P, ‘Henkel’, paragraph 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 42 and judgment of 03/12/2003, T‑305/02, ‘Forme d'une bouteille’, paragraph 34).

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) EUTMR 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).

In the present case the applicant argues that the term ‘Tube’ is distinctive because the term is clearly associated with the London Underground alone, and therefore the addition of ‘Park and’ should add to this distinctiveness even further, to form a suitably acceptable mark. The website hits and references included support this notion.

The applicant has included several Annexes that support the argument for acceptance, namely:

Annex A: This demonstrates that the term ‘Tube’ is used as a trade mark in conjunction with the Transport for London words and it’s associated device. The term Tube always appears with an uppercase first letter as it is accepted as a proper noun. In this context the term is frequently portrayed as a brand, with the uppercase lettering and the references made.

Annex B: Shows an extract from Wikipedia which demonstrates that the term ‘the Tube’ is synonymous with the London Underground and explains that the later dug tunnels being almost round gave way to the nickname of ‘the Tube’ accordingly. Although this is the case, and clearly the Tube is again demonstrated as an identifier, the extract here can only be used to assist in clarifying how the term ‘the Tube’ may be understood, as the mark being considered here is not simply ‘the Tube’ applied for solus.

Annexes C and D: Show trade marks owned by Transport for London in the UK. These trade marks confirm the applicant has owned rights to the name since 1993, with additional applications extending cover filed in the year 2000, ensuring that both ‘THE TUBE’ and ‘TUBE’ are trade mark protected in a number of classes. Although 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.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

With regard the applicants submission that the mark must be considered as a whole, including the unusual terms ‘Park and’ along with the aforementioned registered mark ‘Tube’ in an unlikely lexical construct and conjoined, the Office considers that although the mark contains a registered trade mark it is not portrayed as such in the context of the mark.

The mark the applicant has applied for, in totality reads as ‘Park and Tube’ and is presented in the Transport for London font. In the UK, and a number of other countries, relevant consumers are accustomed to seeing the similar term ‘Park and Ride’, as it is commonly used to designate a parking area where one can leave their vehicle and take further transport by other means, i.e. park somewhere and take a bus for the remainder of the journey.

As such, and as the relevant UK public would understand the Tube to be the London underground, it will be immediately apparent to the relevant consumer – potentially any UK citizen – that the service offered is a service akin to park and ride services, but where one can park and use the tube, or ‘park and tube’ by analogy to park and ride.

In the above context the term Tube becomes lost within the mark as a whole and the mark instead takes on a new concept, not only of the registered term Tube, but of the composite and immediately intelligible term ‘park and tube’, meaning to leave one’s car and take the tube for their onward travel. As such the term will be seen as indicating a means of travel, and could belong to any car park operator anywhere within a reasonable distance of the tube to designate such a service (NCP for example), so in this respect it fails to designate brand origin in the mind of the relevant consumer.

In regards the assessment not covering the mark in all goods and classes, the Office provides the following clarification:

With regards the goods listed in Class 9 namely, where all of the goods are restricted to those for car parks and car parking, would likely be:

telecommunication apparatus and instruments; apparatus and instruments for the recordal and reproduction of sound and data; time recordal apparatus and instruments; computing and data processing apparatus and instruments; safety and security apparatus and instruments; alarm apparatus and instruments; access control apparatus and instruments; vehicle access control systems; parking management systems; specifically designed to relay information from car parking meters at destinations where one can park their vehicle and take the tube later, maybe for relaying information about discounted tube tickets updated online daily for example, or to record voice commands about parking information or a machine to manage parking by operating barriers for car park entry and exit; the sign, when seen on any of the above goods would be seen as a non-distinctive term that signifies what they are to be used to assist, and the relevant consumer would establish that they are used in conjunction with a park and tube system, but would not know who operates such a system.

Additionally payment platforms; electronic parking card systems; encoded plastic cards; encodable cards; smart cards; stored value cards; encoded loyalty cards; prepaid cards; apparatus and equipment for payment with encoded cards, stored value cards, prepaid cards and smart cards; apparatus and equipment for payment with magnetically encoded memory cards; devices and equipment incorporating terminals for electronically processing credit, debit card or stored value card payments; terminals for the electronic payment of charges by credit card; electronic interrogators with use for the aforesaid; credit transfer systems; credit transfer systems, cards and accessories for use therewith; toll collection systems; computers and computer software relating to the aforesaid goods; would be utilised to take or process payments in car parks where the park and tube service is provided, however, when seeing the term park and tube on a card or parking meter the relevant consumer is unlikely to attribute any brand origin, and would instead see that they are able to pay for their service of parking and taking the tube.

Also, computer software applications; digital downloadable material facilitating access to or payment for car parks or car parking; scanning apparatus and equipment; computer software; computer software enabling the scanning of encoded plastic cards, encodable cards, smart cards, stored value cards, loyalty cards, prepaid cards; machine readable data carriers; magnetic data carriers would be software, downloadable material, scanning apparatus and equipment and data carriers designed specifically for such devices and systems as demonstrated above, i.e. carrying the words ‘park and tube’ to illustrate that they are compatible with a parking meter that supports the facility of allowing one to park their vehicle and take the tube; no trade mark significance will be given to such a term when seen on these goods.

For the services in Class 35, namely:

Loyalty; incentive and bonus program services; administration of discount programs enabling participants to secure discounts on goods or services through the use of a discount membership card; customer loyalty and discount services; operation of sales and promotional incentive schemes; compilation of information into computer databases; business management and administration services; advertising or promotional services; digital media advertising services; providing business information in social media; providing an online directory information service; consultancy and advisory services in relation to the aforesaid services.- these would be services for offering customer loyalty, incentives, administrative services, sales and promotion services, databases, business services, and advertising services that assist in the promotion of a park and tube system, and as such seeing the term used in conjunction with these services the relevant consumer will recognise that they are set up to support a system or service where one can use a park and tube facility to travel, as opposed to distinguishing that they belong to one trade originator.

For the services in Class 36, namely:

The issue of tokens of value; membership services in association with the issuing of tokens of value; the issue of parking vouchers; electronic payment services relating to the provision of parking spaces; payment services relating to the provision of parking services; the payment of excess charges and the recovery of fines; the issue of pre-encoded plastic cards, stored value cards, prepaid cards and smart cards; information services relating to the automated payment of accounts and charges; payment administration services; automated or electronic payment, administration, processing, collection and management; payment transaction card services; processing of payments in relation to encoded plastic cards, stored value cards, prepaid cards, smart cards, charge cards, credit cards and debit cards; financial management in relation to pre-payment accounts, parking fees, excess charges and fines; online and telephone account payment and management services; processing the payment of fines; consultancy and advisory services in relation to the aforesaid services. – i.e those services connected with tokens of value (parking tokens for example) vouchers, payment services and fine collection, issuing cards, information, administration, and account or financial management, the relevant consumer would understand they are contacting or paying through an organisation that provides a parking service allowing them to be able use park and tube facilities, but would expect to be contacting a service provider of those facilities, i.e. maybe Transport for London the house mark in this case, and would presume that someone is supplying the service where they can park and take the tube.

For the services in Class 38, namely:

Telecommunications and text messaging services; text messaging; sms messaging; providing online chat rooms; access to content websites and portals; consultancy and advisory services in relation to the aforesaid services – these would be services to support the above services, by offering telecommunications provisions, i.e. telecoms services, chat rooms to discuss, or access to websites about such ‘park and tube’ facilities, and would not be understood by the relevant consumer as anything but such a supportive facility for their journey.

For the services in Class 39, namely:

The provision of parking facilities; provision of car parks and car parking services; arranging parking places by means of electronic device; removal of vehicles causing an obstruction in breach of parking regulations; vehicle parking services; the operation of equipment for the acquisition and transmission of data in connection with the provision of parking places; consultancy and advisory services in relation to the aforesaid services. – the provision of parking services, removal of obstructions and operation of equipment related to a park and tube style parking facility, where one can leave their car and commute further. However in seeing a car park labelled as such the consumer would simply note that they can park their car at that location and tube the rest of their journey.

For the services in Class 45, namely:

The operation of monitoring and surveillance equipment for the acquisition and the transmission of data in connection with the security or location of road vehicles; enforcement of parking regulations and restrictions; removal of vehicles causing obstruction or in breach of parking; advisory and consultancy services in connection of the aforesaid services – the relevant consumer would immediately recognise that these are security, monitoring, surveillance, and obstruction removal services used at a park and ride facility, but again, would fail to recognise who provides the services but rather that the security supports such services and that their car is likely to be safer left at such car parking facilities.

As demonstrated above the mark remains to be seen as purely a promotional formula and a non-distinctive sign for all of the goods and services as there is no distinctiveness to be noted in the term when viewed as a whole. Potentially the open ended ambiguous term, ‘park and’ may have a degree of distinctiveness alone, although it could be seen equally as an invitational statement, and the remainder of the mark is an accepted UK mark. However, when combining the term as a whole, it simply informs the relevant consumer that they can park their vehicle and take the tube, and thus loses any credibility offered by the independent components that make up the mark.

Annex E: Demonstrates that the Johnston typeface is specific to Transport for London and is used only by them, which clarifies that (if recognised by the relevant consumer) it will be seen as signifying a Transport for London developed good or service. The applicants’ mark follows suit in all of their other signage and uses this typeface as the ‘trademark’ font of the brand. In this respect, while it is the typeface that clearly denotes Transport for London to those in the know, it is difficult for the Office to conclude the relevant consumer will share the same perspective, as the font is not greatly out of the ordinary, so it is considered that it will provide a ‘mere association’ at most.

Annex F: Illustrates prior acceptance of a number of earlier rights that the applicant argues are on a par, or even less distinctive than, the trade mark that is the subject of this current application. The office is inclined to agree that the marks possess only the minimum level of distinctive character to enable them to function as a badge of trade origin, however it is considered that some of the marks may have further redeeming features, i.e. in the case of MyHEALTHCARE, there are few, if any, services tailored to one’s individual healthcare, as perhaps may exist in class 44, so the term ‘my’ would be an unusual concept, as nothing would be aimed specifically at the consumer.

In any instance however, and according to settled case‑law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union 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).

‘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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 003 015 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Richard PRYCE