Refusal of application for a European Union trade mark

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

Alicante, 19/10/2016

KILBURN & STRODE LLP

20 Red Lion Street

London WC1R 4PJ

United Kingdom

Application No:	15 165 707
Your reference:	T103254EM/REP/de
Trade mark:	EASYTRANSPORT
Mark type:	Word mark
Applicant:	easyGroup Ltd 10 Ansdell Street, Kensington London W8 5BN United Kingdom

The Office raised an objection on 23/05/2016 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 o 29/07/2016, which may be summarised as follows:

• The services in Class 35 are not transportation services, nor services provided by transportation companies. Advertising consist of third party services rendered to others, and the applicant is not seeking protection for the production of advertisements advertising transport services. Nor is the mark descriptive for retail services or business management services which are rendered by one business to another.

• “EASYTRANSPORT” written as a conjoined neologism is not found in dictionaries, and for the mere fact that it is conjoined it will not be interpreted immediately and without further reflection but rather will be seen as a signifier of the origin of the services.

• It is not possible to describe loyalty schemes or restaurant services by the word “EASYTRANSPORT” in a grammatically correct sentence. It is also difficult to see, in the context of loyalty services, what “easy” refers to.

• While not contesting the descriptiveness of the mark for transport services, the applicant argues that packaging and storage of goods cannot be described by the neologism “EASYTRANSPORT” as these services are completely separate from any transportation service.

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 waive the objection for the following services:

Class 35 Advertising; advertising services provided via the Internet; production of television and radio advertisements; marketing and publicity services; dissemination of advertising, marketing and publicity materials.

The objection is maintained for the remaining services.

With regard to the applicant’s argument that the trade mark is a conjoined neologism, the following should be stressed:

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)(c) [EUTMR], 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 …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

In this respect, the words “easy” and “transport” will immediately be read as two English-language words, irrespective of them being conjoined. Given that both words are included in dictionaries, it has no relevance whether the expression combining them has a separate dictionary entry or not. The expression “easy transport” corresponds to the rules of English grammar, is it not an unusual or uncommon combination. The detection of these words will not require a further mental effort from the consumer.

Given its descriptive meaning, the term “easy” “is an inherently weak component of a mark for (almost) any goods and services.” (16/07/2009, R 215/2008-1, EASY TRAVEL, § 36) It is also laudatory term (08/11/2011, R 2031/2010-2, EASY lift (fig.), § 28) which carries little trade mark significance in the eyes of the relevant consumer. There is nothing imaginative, fanciful or arbitrary about linking together the commonly used adjective ‘EASY’ and another generic term (31/01/2014, R 907/2013-2, EASY CLIP (fig.), § 22 and 29; 18/11/2011, R 321/2011- 2, EASYGLIDE, § 15; and 29/01/2014, R 1751/2013-5, EASY CHIC, § 16; and 01/09/2011, R 216/2011-1, easysplice, § 20; and also 08/10/2014, R 1094/2014-1, easyprint, § 19).

With regard to the different service groups, the attached objection contains detailed explanations on how they can be related to transport. Thus, the Office will limit its observations to the arguments raised by the applicant.

In Class 35, the application was allowed to proceed for services relating to advertising, following consideration of the applicant’s arguments. The objection is however maintained for business management, administration and information services, which may well target businesses which have transport related activities. As already explained in the objection, in relation to loyalty and incentive schemes, the term “EASYTRANSPORT” will indicate a scheme providing benefits for regular users of transport services; either because the scheme is easy to use, or because it makes using the services easier, to address the applicant’s argument.

Retail and restaurant services are both industries routinely providing transport services in the form of home deliveries, as explained in the attached objection. The applicant did not appear to contest the objection for hotel and accommodation services, which were refused with the same reasoning.

As for packaging and storage services, they belong to the general domain of transport and travel pursuant to the attached objection. These services are complementary and strongly linked to the actual transporting of goods and as such will usually be expected to be provided by transport companies.

The fact that “EASYTRANSPORT” is conjoined, once again, makes little difference for the average consumer. “Easy” being an inherently weak component of the mark, and “transport” having a descriptive meaning in the context of services which may involve transport, the combination of these two words carries no perceptible difference between the word applied for and the mere sum of its parts.

Moreover, 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).

Consumers will immediately grasp the descriptive meaning, as well as the promotional message behind the expression “easy transport” referring to simple and convenient use of services relating to transport. There are no additional elements which would 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’ (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T 122/01, Best Buy, EU:T:2003:183, § 21).

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 15 165 715 is hereby rejected for the following services:

Class 35 Business management; business administration; office functions; operation and supervision of loyalty and incentive schemes; provision of business information; retail services connected with the sale of food and drink; retail services connected with the sale of preparations and substances for use in the care and appearance of the hair, scalp, lips, face, skin, teeth, nails and eyes; retail services connected with the sale of cosmetics, non-medicated toilet preparations, perfumes, fragrances, colognes and scents, soaps and cleaning preparations; retail services connected with the sale of shampoos, conditioners, moisturisers, tooth cleaning preparations; retail services connected with the sale of depilatory preparations, sun-screening and tanning preparations; retail services connected with the sale of anti-perspirants, deodorisers and deodorants; retail services connected with the sale of sunglasses, personal stereos, MP3 players, CD players, apparatus for playing music and video recordings; retail services connected with the sale of jewellery, stones, watches, clocks; retail services connected with the sale of books, magazines, newspapers, stationery, calendars, diaries; retail services connected with the sale of purses, umbrellas, parasols briefcases, purses, wallets, pouches and handbags; retail services connected with the sale of luggage, suitcases, travelling sets, sports bags, bike bags, backpacks, games, playing cards; retail services connected with the sale of gymnastic and sporting articles; retail services connected with the sale of scooters.

Class 39 Packaging and storage of goods; travel arrangement; travel information; provision of car parking facilities; airport check-in services; airline services; baggage handling services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; chauffeur services; taxi services; bus services; coach services; rail services; airport parking services; aircraft parking services; travel agency services; provision of tourist travel information, tourist guide services, arranging excursions for tourists, booking of travel through tourist offices; advisory and information services relating to the aforesaid services; information services relating to travel information and travel booking services provided on-line from a computer database or the Internet.

Class 43 Services for providing food and drink; temporary accommodation; restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation; hotel services; hotel reservation services; hotel services for the provision of facilities for exhibitions and conferences.

The application may proceed for the remaining services.

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.

Marianna KONDAS