Refusal of application for a European Union trade mark

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

Alicante, 21/07/2016

ΜΑΡΙΑΝΘΗ ΣΠΥΡΟΠΟΥΛΟΥ

3 Korai str.

GR-105 64 Athens

GRECIA

Application No:	015275209
Your reference:
Trade mark:	Tele-Proctor
Mark type:	Figurative mark
Applicant:	PEOPLECERT INTERNATIONAL LIMITED 40 THEMISTOKLI DERVI STR CY-1066 NICOSIA CHIPRE

The Office raised an objection on 15/04/2016 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 13/06/2016, which may be summarised as follows:

1. The applicant claims that the mark should be examined as whole and in the present case the mark is a new coined word.

2. The applicant cites the Baby Dry Case (V-383/99) to claim that as long as the mark does not constitute a commonly used expression for the determination of the goods and services, then the word mark is considered a lexical invention which offers to it distinctiveness/

3. The applicant claims that when a term has multiple meanings then this term has a vague meaning and cites the dictionary definitions of the term ‘proctor’.

4. The applicant claim that is has been using the same representation and configuration in other marks with make it memorable and recognisable to the relevant consumer.

5. The trade mark refers to a mechanism which is protected by a patent licence.

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.

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The Office agrees with the applicant’s statement that the mark must be considered as a whole. According to settled case-law, 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, that is not incompatible with an examination of each of the mark’s individual components in turn (see judgment of 19/09/2001, T 118/00, ‘Procter & Gamble’, paragraph 59).

In its objection letter, the Office has already demonstrated that the sign as a whole is indeed perceived as a meaningful expression. Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Moreover, the Office is of the opinion that it sufficiently justified its objections by providing dictionary references and by examining the meaning of the expression, first, by reference to the goods and services in respect of which registration is sought, and, second, by reference to the perception of the relevant public.

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 This clearly applies to the present case since ,as a whole, the words ‘‘Tele-Proctor’ immediately inform consumers without further reflection that the goods and services applied for are, inter alia, the analysis educational tests scores and data for others and educational examination services provided by teaching staff and invigilators at a distance, educational apparatus and simulators simulating the role of a proctor.

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

Indeed, the word in question is correctly spelt, thus the sign applied for is neither a ‘lexical invention’ within the meaning of the judgment of 20 September 2001, C-383/99 P, ‘Baby-Dry’, nor ‘perceptibly different from a lexically correct construction’, within the meaning of judgment of 9 October 2002, T-360/00, ‘UltraPlus’.

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).

The Office cannot follow the applicant’s arguments that although each of the individual words contained with the mark applied for may form part of expressions used in everyday speech in respect of the objected services, their juxtaposition is not familiar in the English language.

The Office points out, that from a syntactical point of view, the absence of a space or punctuation between the two component parts of the sign applied for has no bearing whatsoever on the ability of the consumer to recognise them separately within the whole. An English speaker would not struggle to identify the two English terms within the whole. This is because the two parts of the word are instantly recognisable as English words and would be seen as such immediately. The Office maintains that the mark applied for, ‘Tele-Proctor’ will mentally be split up and without effort into its recognisable component parts by English-speakers, as a result of the instantaneous recognition of each term within the sign ‘Tele-Proctor’.

The case-law of the Court of Justice and Court of First Instance has evolved considerably since the BABY-DRY judgment (see decision of the Second Board of Appeal of 2 August 2004 in Case R 262/2003-2 ECONOMY PLUS, at paragraph 11). Rather, it is the ability of a sign to identify the commercial source of the marked products that is of prime importance. The BABY-DRY judgment, it must be noted, was the first givenby the Court of Justice in relation to the Community trade mark, and one of its first pronouncements on the subject of absolute grounds for refusal. Since thenthe Court’s case law has evolved considerably. The Court has upheld a judgment of the Court of First Instance holding that COMPANYLINE was devoid of distinctive character for insurance services (Case C-104/00 P DKV Deutsche Krankenversicherung AG v OHIM [2002] ECR I-7561). It has annulled the judgment of the Court of First Instance which had held that DOUBLEMINT was not descriptive of chewing gum (Wrigley v OHIM, cited above). It has dismissed as clearly unfounded, by way of a reasoned order, appeals against judgments of the Court of First Instance which held that STREAMSERVE was descriptive of computers and related goods (Case C-150/02 P Streamserve Inc. v OHIM, order of 5 February 2004) and that UNIVERSALTELEFONBUCH and UNIVERSALKOMMUNIKATIONSVERZEICHNIS were descriptive of printed matter and reference works amongst other things (Case C-326/01 P Telefon & Buch VerlagsgmbH v OHIM, order of 5 February 2004)

In term of the argument that the word ‘proctor’ has several meanings the Office remids that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added.)

Article 7(1)(b) makes it clear 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 as originating from a particular undertaking, and thus distinguishing it from those of other undertakings and, therefore, being able to fulfil the essential function of a trade  mark.  Due to the impression produced by the mark, the connection between the relevant goods 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 also judgment of the Court of 12 February 2004 in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau (‘Postkantoor’) [2004] ECR I-1619, at paragraph 99, Decision by the Second Board of Appeal, of 29 July 2002, in Case R 335/1998-2 – Homeadvisor and Decision by the Second Board of Appeal, of 3 November 2003, in Case R 361/2003-2 – LITIGATION ADVISOR). The Office considers, therefore, that it is highly unlikely that, without a substantial use the consumer could perceive it as a badge of origin to distinguish the applicant the origin of the goods and services applied for.

As regards the applicant’s argument that no other competitors make use of the same combination, since it is protected by a patent licence, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The applicant claims that it has been using in its marks the combination of Red and Black fonts. However, it did not provide any evidence to that respect. The fact that it has registered different mark with the same color combination cannot prove that the combination will be memorable to the relevant consumers and that it has acquired distinctiveness through use.

The Office notes that in the examination of a mark, when the verbal element is descriptive and devoid of distinctive character, the question of whether or not the figurative element is striking, surprising or unexpected, or capable of creating in consumers’ minds an immediate and lasting memory of the sign by diverting their attention from the descriptive/non-distinctive message conveyed by the verbal element, must be considered in particular. This means that the stylisation must be such as to require an effort of interpretation on the part of the relevant public to understand/deduce the meaning of the verbal element. This is not the case with the present mark, since the font used is a standard, easily legible and unmemorable typeface and, thus, devoid of distinctive character. This is also confirmed by the judgment of 15/09/2005, C‑37/03 P, ‘BioID’, which stated that the commonplace typeface did not enable the mark in question to serve as an indicator of origin. In other words, to add distinctive character to a sign, the typeface’s stylisation should be of such a nature as to demand a mental effort from consumers to understand the meaning of the verbal element in relation to the claimed goods. In the present mark words are written in a standard typeface, which is easily legible and the red and black separate visually and conceptually the two conjoint words. Such combination on its own is quite banal in the relevant mark and cannot confer to the mark any distinctive character.

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 15 275 209 is hereby rejected for the following goods and services:

Class 9 Συσκευές εκπαίδευσης και εξομοιωτές· Εξοπλισμός εκπαίδευσης και παιδαγωγικός· Εξοπλισμός και όργανα παιδαγωγικά και διδασκαλίας. (educational apparatus and simulators; Teaching and instructional apparatus; Instructional and teaching apparatus and instruments)

Class 41 Εκπαίδευση, ψυχαγωγία και σπορ· Ατομική εκπαίδευση· Ανάλυση βαθμολογιών εκαπιδευτικών δοκιμασιών και δεδομένων για λογαριασμό τρίτων· Δια βίου εκπαίδευση· Διαχείριση εκπαιδευτικών υπηρεσιών· Εκπαιδευτικές εξετάσεις· Εκπαιδευτικές δοκιμασίες· Εκπαιδευτικές υπηρεσίες παρεχόμενες μέσω Η/Υ. (Education, entertainment and sports; Tutoring; Analyzing educational tests scores and data for others; Continuous training; Management of education services; Educational examination; Educational testing; Computer education training services.).

The application will be accepted for the remaining goods and 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.

Aliki SPANDAGOU