Refusal of application for a European Union trade mark

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

Alicante, 09/12/2016

Hviezdoslavovo nam. 17

81102 Bratislava

ESLOVAQUIA

Application No:	015231707
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	Scandalist s.r.o. Ovocný trh 568/17 CZ-110 00 Praha REPÚBLICA CHECA

The Office raised an objection on 22/04/2016 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 22/08/2016, which may be summarised as follows:

1. The word ‘FAKT’ does not have any direct and/or specific meaning in relation to the services applied for. When hearing the word ‘FAKT’, the relevant public will not automatically establish an association with advertising services or media. The meaning of the word ‘FAKT’ is of such nature that it can be associated with almost any service.

2. The word ‘FAKT’ is combined with the number ‘24’. The number ‘24’ as such does not have any meaning as regards the services for which application is sought. The relevant public has to do some mental steps to conclude that the number ‘24’ refers to 24 hours a day.

3. The combination of the word ‘FAKT’ with the number ‘24’ creates a new expression that is unique.

4. The mark has to be assessed as a whole. The mark for which registration is sought is a figurative mark, not a word mark. The mark contains black, red and white colours, a square and stylised number ‘24’.

5. The applicant referred to the similar registered EUTMs.

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.

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).

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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

1. As regards the applicant’s first argument, the Office notes that the distinctive character and descriptiveness of a trade mark must be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. The relevant public will not perceive the mark separately but in relation to the services for which registration is sought. Therefore it is not necessary the relevant public when hearing the word ‘FAKT’ would establish an association with advertising services or media because they will perceive the mark together with these services. The Office maintains its opinion that the mark conveys obvious and direct information regarding the intended purpose and subject matter of the services in question.

2. Regarding the applicant’s second argument, the Office refers to the judgment 22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 47 that confirms the interpretation of the number ‘24’ provided by the Office that it is understood as ’24 hours’ indicating that the services are accessible without interruption.

3. As regards the applicant’s third argument,

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).

The Office is of the opinion that the mark for which registration is sought is mere sum of its parts. The mark as a whole immediately informs consumers without further reflection that the services applied for are continuous news reporting services focused on providing information about things that really occurred, and other closely related services including advertising services.

4. Regarding the applicant’s fourth argument, the Office examined the mark how it was applied for – in its figurative form. The Office maintains its opinion that the stylisation of the mark is so minimal that it does not endow it with the distinctive character. The letters are in a common font. Colours black, red and white are basic colours which the relevant consumers will not perceive as a badge of commercial origin. The red square is a simple geometric shape that merely visually separates the word ‘FAKT’ and the number ‘24’. It is not even able to endow the mark with the distinctive character. Therefore the mark as a whole is descriptive and devoid of any distinctive character.

5. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

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 15 231 707 is hereby rejected for all the services claimed.

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.

Klara BOUSKOVA