Refusal of application for a European Union trade mark

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

Alicante, 02/09/2016

BAKER & MCKENZIE LLP

100 New Bridge Street

London EC4V 6JA

REINO UNIDO

Application No:	015174709
Your reference:	TMU/DJMJ/4665612
Trade mark:	MAPS MANAGED ANTI PIRACY SOLUTIONS
Mark type:	Word mark
Applicant:	Baker & McKenzie LLP 100 New Bridge Street London EC4V6JA REINO UNIDO

The Office raised an objection on 18/03/2016 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 on 18/05/2016, which may be summarised as follows:

1. The mark ‘MAPS MANAGED ANTI PIRACY SOLUTIONS’ is fanciful and inventive, since it does not immediately convey a clear descriptive message about the goods and services for which registration is sought. It is capable of fulfilling the essential function of distinguishing the applicant’s goods and services from those of others.

2. ‘Anti-piracy’, as included in the mark, and ‘anti-counterfeiting’, to which the goods and services in question relate, are different concepts. The goods and services do not have a clear link to the expression ‘anti-piracy’. Therefore, the mark is not descriptive for the goods and services for which registration is sought.

3. Although the word ‘MAPS’ in the mark is an acronym that stands for MANAGED ANTI PIRACY SOLUTIONS, this does not mean that the mark, as a whole, is descriptive. The Office’s Guidelines for Examination of European Union Trade Marks state that ‘not all instances of descriptive word combinations juxtaposed with an abbreviation of that word will be considered descriptive as a whole. This will be the case where the relevant public will not immediately perceive the acronym as an abbreviation of the descriptive word combination, but rather as a distinctive element that will make the sign as a whole more than the sum of its individual parts, as demonstrated in the following example: The Organic Red Tomato Soup Company — ORTS.’ The mark in question is an example of the abovementioned type of distinctive mark. Since the word ‘MAPS’ has a clear meaning in English and is not generally recognised as an acronym for anything else, the relevant consumers will interpret the word not as an acronym but rather as a distinctive term in relation to the goods and services in question.

4. If the objection under Article 7(1)(c) EUTRM is waived following the above submissions, so must be the objection under Article 7(1)(b) EUTRM. Furthermore, the word ‘MAPS’ is intriguing and unusual and possesses at least the minimum required level of distinctiveness to be registered, and so the objection under Article 7(1)(b) EUTRM should be waived.

5. The Office has accepted several marks that take a similar form to the mark in question, for example, CPTG CERTIFIED PURE THERAPEUTIC GRADE, WKF WORLD KICKBOXING FEDERATION, CC CIGARETTE COVER, etc. The mark has no less distinctive character than those registered marks. For the consistency of the register and public certainty, the mark should be allowed to proceed to registration.

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.

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T 118/00, ‘Shape of a product for washing machines or dishwashers’, paragraph 59).

It is also 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).

Furthermore, by prohibiting the registration as European Union 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 (judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 31).

The Office will now examine each of the applicant’s arguments in turn.

The applicant argues that the mark is fanciful and inventive, and that it does not convey a clear descriptive message about the goods and services for which registration is sought. The Office remains of the view that the relevant consumer will easily understand the meaning of the word making up the mark ‘MAPS MANAGED ANTI PIRACY SOLUTIONS’ and make a direct association with the goods and services. The message is that the goods and services in question are, or are related to, ‘anti-piracy products or services administered and maintained by a provider’, and the word ‘MAPS’ is the acronym for ‘MANAGED ANTI PIRACY SOLUTIONS’. Therefore, the mark directly describes the nature and characteristics of the goods and services in question.

The applicant argues that ‘anti-piracy’ and ‘anti-counterfeit’ are different concepts and that, therefore, the mark is not descriptive of the goods and services in question. In this regard, the Office agrees that the two expressions have different meanings. However, it should be noted that the goods and services at issue are aimed at both the average consumer and a professional public and that the degree of attention of the professional public will be high, while that of average consumers will vary depending on the type of goods and services in question. Furthermore, it is well established that the average consumer is considered to be reasonably well informed, circumspect and observant but will perceive trade marks as a whole and not pause to analyse their various details. Therefore, the average consumer, in the present case, will not easily spot the difference between the two terms and at first glance will perceive the sign as being descriptive of the goods and services in question. This is even more so because both terms are used in the area of intellectual property rights and, therefore, average consumers will understand that the goods and services to which both ‘anti-piracy’ and ‘anti-counterfeiting’ relate generally have the same providers. Even though the degree of awareness of some average consumers is higher than that of other average consumers and some consumers may recognise the difference between those terms, this does not imply that a descriptive sign can be registered.

As far as the Guidelines for Examination of European Union Trade Marks are concerned, the Office has examined the mark for which registration is sought in line with the Guidelines and considers that the present mark is not of the kind ‘where the relevant public will not immediately perceive the acronym as an abbreviation of the descriptive word combination, but rather as a distinctive element that will make the sign as a whole more than the sum of its individual parts’, since the mark consists merely of the descriptive expression ‘MANAGED ANTI PIRACY SOLUTIONS’ and its acronym ‘MAPS’, which clarify each other and draw attention to the fact that they are linked. It should be noted that the example in the Guidelines ‘The Organic Red Tomato Soup Company — ORTS’, which is considered more than the sum of its descriptive parts, is different from the mark in the present case, as the word ‘ORTS’ is not an exact acronym of the words ‘The Organic Red Tomato Soup Company’.

As regards the applicant’s argument that several similar mark have been accepted by EUIPO, it should be remembered that, 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 (judgements of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and 09/10/2002, T‑36/01, ‘Surface of glass’, paragragh 35).

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 15 174 709 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against 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.

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