Refusal of application for a European Union trade mark

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

Alicante, 31/12/2016

MATHYS & SQUIRE LLP

Abbey House 32 Booth Street

Manchester Lancashire M2 4AB

REINO UNIDO

Application No:	015205909
Your reference:	T12310CTM-1
Trade mark:	THE CLUB
Mark type:	Figurative mark
Applicant:	Desmond McCausland Flat 37, Regal Building, 75 Kilburn Lane London W10 4BB REINO UNIDO

The Office raised an objection on 29/04/2016 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 12/08/2016, which may be summarised as follows:

1. The objection based on Article 7(1)(c) is unfounded. The words ‘THE CLUB’ do  not inform the consumer of the nature of the services.

2. The examiner’s assessment of the figurative elements of which the signs is composed is unsubstantiated.

3. The mark is not devoid of any distinctive character and therefore should not be refused 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.

General remarks on Article 7(1)(c) EUTMR

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 services’ 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).

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.

(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 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).

As to the applicant’s arguments

1. The objection based on Article 7(1)(c) is unfounded. The words ‘THE CLUB’ do not inform the consumer of the nature of the services.

Contrary to the applicant’s contentions, the Office maintains that the expression ‘THE CLUB’ is meaningful with regard to the services covered by the application. The Office’s assessment is not based on speculation as the applicant suggests, but on dictionary definitions and the general meaning of the word as understood by any English-speaker.

Clubs are organizations which offer its subscribers certain benefits, as discounts, bonuses, or interests, in return for regular purchases or payments.¹

It is not uncommon in trade to create associations, communities, loyalty clubs which promote a high degree of participation and commitment on the part of those involved.² They are generally created by companies within the framework of loyalty strategies with the objective of strengthening the relationship between the customers and the service providers. Loyalty programs can explore the financial aspect by offering discounts or award programme for the most loyal customers.

Moreover, it is customary in marketing to create tiers of products or services dedicated to selected groups of customers, who by choosing a given higher range can benefit from certain privileges and bonuses.³

In view of the above it is not unreasonable to consider that the relevant customers will be aware of the possibility of purchasing certain services through a membership in a club with a view to get better offers, discounts or benefits.

From a linguistic point of view, the Office finds the mark ‘THE CLUB’ as a commonplace expression composed of English words and follows English grammar and syntax rules: ‘THE’ is 1. the definite article 2. used to refer to a person, place or thing that is unique; ‘CLUB’ is an organization that offers its members certain benefits.

Therefore, the verbal elements contained in the mark, taken as a whole, immediately inform consumers without further reflection that the services applied for are provided only for members of a certain or unique association or organization. Consequently, the present mark conveys obvious and direct information regarding the kind and quality of the services in question.

In this context it must be noted that when a word combination consists of a grammatically correct juxtaposition of two or more words, the test is whether each of its elements is descriptive and if this is the case, whether the combination is not more than the sum of its parts (judgment of 12/02/2004, C-363/99, ‘Postkantoor’, paragraph 100).

It should be noted that mere bringing descriptive word elements together without introducing any unusual variations, in particular with regard to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (judgment of 12/02/2014, C-265/00, ‘Biomild’, paragraphs 39, 43). This is true irrespective of whether the word combination as such is also referenced in dictionaries or is used in a descriptive way by third parties.

In view of the above, the meaning of the term ‘THE CLUB’ is beyond any doubt clear to any English-speaker who will immediately and without difficulty establish a direct and specific link between the mark and the services claimed. It is therefore the Office’s view that the term ‘THE CLUB’ is readily intelligible when taken in conjunction with the services applied for and viewed by the relevant public.

Consequently, taking account of all the components of the mark applied for as a whole, the Office considers that the mark demonstrates a sufficiently close link with all the goods at issue for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR. Accordingly, the judgment of 30/11/2011, T‑123/10, Paul Hartmann AG/OHIM, referred to by the applicant, does not apply in the present case.

2. The examiner’s assessment of the figurative elements of which the signs is composed is unsubstantiated.

The Office in its notice of 29/04/2016 stated that the figurative elements applied in the present mark, even if they confer upon it a degree of stylisation, are so minimal in nature that they do not endow the mark applied for as a whole with any distinctive character.

The mark contains verbal elements ‘THE CLUB’ written in capital letters in a standard typeface, which does not depart significantly from other letter types commonly used in trade. On the left-hand side of the text there is a representation of a crown.

Contrary to the applicant’s argument, the Office maintains that above graphic elements do not render the trade mark distinctive. The crown conveys the message of quality/exclusivity. Moreover, it is a decorative element commonly used in trade. As a result, the figurative elements are not capable of diverting the attention of the relevant public’s from the descriptive / non-distinctive message conveyed by the word elements. They will merely reinforce the descriptive message transmitted by the verbal elements, namely that the services are provided by a unique organization and are intended for a selected, exclusive group of members who can benefit from certain offers or bonuses.

As regards the above argument that the Office’s analysis is unsubstantiated, the Court has confirmed that where the Office finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Office is not obliged to give examples of such practical experience.

(See judgment of 15/03/2006, T‑129/04, ‘Forme d'une bouteille en plastique’, paragraph 19.)

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

3. The mark is not devoid of any distinctive character and therefore should not be refused registration.

Due to the overall impression produced by the mark, the connection between the relevant services and the mark is not sufficiently indirect to endow the mark with the minimum level of inherent distinctiveness required under Article 7(1)(b) EUTMR (see judgment of 12/02/2004, C-363/99, ‘Postkantoor’, § 99 and decision of 29/07/2002, R-335/1998-2, ‘Homeadvisor’).

It is the Office’s view that the sign perceived as a whole will definitely attract attention of the relevant consumers but will not enable them to memorise it as a badge of origin of the services in question. Consequently, the relevant public will not be able 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 concerned (see judgment of 27/02/2002, T-79/00, ‘LITE’, § 26).

Article 7(1)(b) EUTMR provides clearly that a minimum degree of distinctive character suffices for the absolute ground for refusal set out in that article not to apply.

However, in the present case, the required minimum degree of distinctive character could not be established. The Office admits that registration of a sign as a trade mark is not subject to a finding of a specific degree of inventiveness or creativity on the part of  the trade mark proprietor. However, it is also clear from the case law of the Court of Justice in relation to Article 7(1)(b) EUTMR that, as far as assessing distinctiveness is concerned, every trade mark, of whatever category, must be capable of identifying the product or services as originating from a particular undertaking and, therefore, being able to fulfil the essential function of a trade mark.

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 015205909 is hereby rejected for all the 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.

Anna MAKOWSKA

Attachments:

Internet excerpt

Notice of 29/04/2016 of absolute grounds for refusal

ANNEX

Internet excerpt

http://www.talentzoo.com/beneath-the-brand/blog_news.php?articleID=17547

Information extracted from the Internet on 30/12/2016.