Refusal of application for a European Union trade mark

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

Alicante, 29/06/2016

CASAS ASIN, S.L.

Av. San Francisco Javier, 9

Edificio Sevilla 2, 8ª Planta, Oficina 7

E-41018 Sevilla

ESPAÑA

Application No:	015192719
Your reference:
Trade mark:	Educhat
Mark type:	Word mark
Applicant:	Love Orange Network Technology Co., Ltd Unit 1301, Building B, Fuli Yingtai Plaza, No. 100, Huangpu Avenue West, Tianhe District Guangzhou REPÚBLICA POPULAR DE CHINA

1. The Office raised an objection on 24/03/2016, 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.

2. The applicant submitted its observations on 24/05/2016, which may be summarised as follows:

• The mark “Educhat” as a whole is at most suggestive and it possesses the required minimum degree of distinctive character. The mark does not give obvious and immediate information about e.g. the quality or nature of the goods and services in question, and it is not the normal way of referring to the goods and services or of representing their essential characteristics.

• The fact that a mark may lack an additional element of imagination does not make it unregistrable.

• The real meaning of the term EDUCHAT is “Easy DU Chat”, referring to realizing person-to-person conversation and communication in an easy way. It is a social networking platform for language exchange and knowledge share.

• The examiner did not object to several goods and services in classes 9, 41 and 42 and has therefore indicted that the mark at issue is in fact registrable

• The applicant refers to case law in support of its arguments.

3. 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 arguments, the Office has decided to maintain the objection.

As shown in the Notice of grounds for refusal EDU is an abbreviation for “education”.

The goods and services objected to are e.g. computer programmes and computer software applications, rental of computer software and educational services.

Computer software applications or “apps” for short, include chat apps, that is, software that make it possible for users to chat with other users of the app.

There are many different kinds of chat apps, not least chat apps in relation to education. They are for instance used by teachers to interact with a student or a group of students, and for students to interact with each other. They may also be used by schools to inform potential students (and/or their parents) about their educational offerings, and by teachers and others who discuss and exchange ideas about education and educational matters. See for instance the web sites below:

http://teachwithict.weebly.com/its-all-about-the-hashtag-essential-chats-for-educators.html

It's all about the hashtag! A teacher's guide to education chats.

For me, Twitter is a powerful educational tool, not only because it allows me to engage with likeminded professionals and expand my ever-growing PLN (Personal Learning Network), but because it also provides me an opportunity to reflect and question my own teaching practice. However, with so many chats covering so many topics, where do you start. Here is my guide to some of the best Edu chats on the web:

http://angesmindlabexperience.blogspot.com.es/

…Reading this blog post lead on to reading more and more and more….. Now, while I am not a regular ‘tweeter’, I allocate regular time to exploring the people and organisations I follow on twitter for new learning opportunities. Lately, at the suggestion of a teacher friend, I become involved in edu-chats.

http://mieexpert15.newsradar.info/author/johnson-simon/

For those new to the concept, slow chats are just like normal edu chats except that they usually takes place from Monday through to Saturday - Usually only one question per day is asked during a slow chat and teachers can jump in whenever they want. - "Slow chats give you a chance to think, reflect and share." - Julie Szaj (@shyj) 

http://www.msgbox.co.uk/Generic_Register.asp?m=Education

Education Chat - From MSGBox

Here are just some of our members that share your interest in Education, once you are registered (see below) you will be able to MSG them, view their pictures and find out more about them and our other members.

https://www.dur.ac.uk/education/chat/

Live Chat

Want to find out more about programmes at the School of Education?

Visit us from the comfort of your own armchair at an online information session.

This is a great opportunity for you to ask questions and to find out more about our programmes and life in Durham. 

It should be noted that the first three web sites above actually use the term “edu chats”, which shows that the term is actually used and understood among the relevant public.

From the above it is obvious that the term “Educhat” is nothing more than the sum of its two component parts, and a totally descriptive term in relation to the goods and services at issue.

The Office acknowledges that, according to case law, a trade mark does not need to be original, imaginative, unusual or striking, however, it does not mean that such matters are irrelevant when appraising the distinctiveness of a sign. On the contrary, a sign which is imaginative, original, unusual and fanciful is far more likely to be able to do the job of distinguishing the goods or services of a specific undertaking than a sign which in banal, hackneyed, commonplace and derivative. In particular, when a sign contains information about the characteristics of the goods or services in relation to which it is to be used, it may none the less qualify for registration if that information is presented in an original or imaginative manner. There are several linguistic and stylistic techniques by which a descriptive message can be clothed in distinctiveness: unusual syntax, alliteration, rhyme, paradox, a play on words and so forth. No such technique is present in the sign.

The applicant holds that the real meaning of the term EDUCHAT is “Easy DU Chat”. This may be the applicant’s intention, but for any English-speaker the only way to read and understand “edu” is “education”.

Therefore, when viewing the mark in connection with the goods and services under objection, the relevant consumers (both average consumers and professional users) would immediately understand that the good are chat apps in relation to education (class 9), rental of such apps (class 42), and that the educational services are provided through chats and chat technology.

The message of the mark is clear, direct and impossible to miss, and, as far as the examiner can see, there is no element whatsoever that would lead the relevant consumer to believe that the mark as a whole is an indication of commercial origin.

And finally, some of the goods and services were accepted because the mark is not considered descriptive/non-distinctive for them, for instance, computer game software, memory cards for video game machines, mobile library services. Those goods are not in any way related to “education chats”.

4. 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 15192719 is hereby rejected for the following goods and services:

Class 9: Computer programmes [programs], recorded; Computer software, recorded; Computer software applications, downloadable; Computer programs [downloadable software].

Class 41: Educational services. Instruction services; Teaching.

Class 42: Rental of computer software.

The application is accepted for the remaining goods and services.

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.

Anne-Lee KRISTENSEN

Enclosure: A copy of the Notice of grounds for refusal, and print-outs of the above cited Internet references, 7 pages.