Refusal of application for a European Union trade mark

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

Alicante, 28/10/2016

INARA SMIDEBERGA, AGENCY INTELS LATVIA

1, Academijas Sq.

Riga, LV-1050

LETONIA

Application No:	015365224
Your reference:	ITA/EUTM/32
Trade mark:	ITALCANTIERI
Mark type:	Word mark
Applicant:	Obschestvo s ogranitchennoi otvetstvennostyou "Italcantieri" Spartakovskaya ploshchad, d.14, str. 3, etazh 2, komn. 9 Moscow 105082 FEDERACIÓN DE RUSIA

The Office raised an objection on 13/05/2016 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 mark applied for is the words ITALCANTIERI and is considered objectionable for all the services claimed, namely:

Class 35 Import-export agencies; Advertising agencies; Business auditing; Employment agencies; Bookkeeping; Demonstration of goods; Opinion polling; Marketing studies; Business information; Commercial information and advice for consumers [consumer advice shop]; Business investigations; Marketing research; Business research; Personnel recruitment; Business management and organization consultancy; Professional business consultancy; Business management of performing artists; Organization of exhibitions for commercial or advertising purposes; Arranging newspaper subscriptions for others; Organization of trade fairs for commercial or advertising purposes; Business appraisals; Data search in computer files for others; Business management assistance; Commercial or

industrial management assistance; Presentation of goods on communications media, for retail purposes; Sales promotion for others; Distribution of samples; Dissemination of advertising matter; Advertising; Tax preparation; Drawing up of statements of accounts; Procurement services for others [purchasing goods and services for other businesses]; Outsourcing services [business assistance]; Secretarial services; Shorthand; Administrative processing of purchase orders; Advisory services for business management.

Class 36 Real estate agencies; Financial analysis; Lease-purchase financing; Accommodation bureaux [apartments]; Capital investments; Insurance information; Financial information; Clearing, financial; Insurance consultancy; Financial consultancy; Real estate appraisal; Financial evaluation [insurance, banking, real estate]; Housing agencies; Insurance brokerage; Rental of offices [real estate]; Renting of apartments; Leasing of real estate; Insurance underwriting; Apartment house management; Real estate management.

Class 37 Asphalting; Drilling of wells; Rebuilding machines that have been worn or partially destroyed; Retreading of tires [tyres]; Vulcanization of tires [tyres] [repair]; Damp-proofing [building]; Pressing of clothing; Building insulating; Repair information; Construction information; Bricklaying; construction consultation; Scaffolding; Road paving; Car wash; Window cleaning; Vehicle wash; building construction supervision; Rustproofing; Anti-rust treatment for vehicles; Strong-room maintenance and repair; Vehicle maintenance; Paper hanging; Cleaning of buildings [exterior surface]; Vehicle polishing; Vehicle breakdown assistance [repair]; Rental of construction equipment; Rental of cranes [construction equipment]; Plumbing; Masonry; Roofing services; Painting, interior and exterior; Underwater repair; Cabinet making [repair]; Plastering; Motor vehicle maintenance and repair; safe maintenance and repair; Vehicle lubrication [greasing]; Demolition of buildings; Warehouse construction and repair; vehicle service stations [refuelling and maintenance]; Pier breakwater building; Building of fair stalls and shops; Construction; Factory construction; Cleaning of buildings [interior]; Street cleaning; Installation of doors and windows; Irrigation devices installation and repair; Elevator installation and repair; Heating equipment installation and repair; Burglar alarm installation and repair; Furnace installation and repair; Air conditioning apparatus installation and repair; Fire alarm installation and repair; Freezing equipment installation and repair; Electric appliance installation and repair; Office machines and equipment installation, maintenance and repair; Swimming-pool maintenance; Chimney sweeping; Vehicle cleaning; Rental of road sweeping machines; Machinery installation, maintenance and repair.

The applicant submitted its observations on 13/07/2016, which may be summarised as follows:

• The mark ITALCANTIERI has distinctive character and is capable of distinguishing the services for which registration is sought.

• The services covered by the mark ITALCANTIERI from the consumer’s point of view are neither expensive nor potentially hazardous nor technically sophisticated. A consumer does not need professional assistance or advice when choosing or buying them.

• The objected services are aimed as much at the general public as at the specialists. The distinctive character of mark must be assessed also in relation to the perception of general public.

• At the same time it has to be taken in to consideration that the fact that the services at issue target specialists does not necessarily mean that the degree of attention is high.

• In present case the degree of the consumer’s (relevant public's) awareness and attention will be average or even low.

• We would like to stress that the objection does not assess the objected mark, with reference to each of the refused services, and give no reasons why the mark has been refused in relation specifically to any of the services.

• ITALCANTIERI is a sufficient fanciful and invented combination. ITALCANTIERI is not an existing combination of words and does not create mono-semantic association in each user.

• It is not readily and immediately understandable, and has no clear or obvious meaning and can have many different meanings.

• The objection incorrectly considers in isolation each of the word components of the mark, namely the words, ITAL' and 'CANTIERI', and does not consider the overall perception of the mark by the relevant public. The objected mark is a compound mark, which must be assessed as a whole.

• It should be taken in to consideration that the owner of the mark has created it from following components, ‘IT-ALCAN-TIERI'.

• The mark ITALCANTIERI is unlikely be understood as a meaningful expression, namely Italian shipyard/building site.

• The term ITALCANTIERI is not a natural term that the average consumer would use in relation to the services claimed.

• There is not a sufficiently direct and specific relationship between the mark ITALCANTIERI and the objected services either.

• The mark ITALCANTIERI has distinctive character within the meaning of Article 7(l)(b) EUTMR, namely the sign serves to identify the services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that services from those of other undertakings and therefore mark ITALCANTIERI is eligible for 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 for all the services claimed.

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 (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).

Therefore, 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).

The Office maintains its viewpoint, despite the applicant’s submissions, that in the present case, the objectionable services covered by the mark applied for are specialised services aimed at a professional/specialist public. In view of the nature of the services in question, the awareness of the relevant public will be high.

Moreover, since the mark contains Italian words, namely ‘ITAL CANTIERI’ (conjoined), the relevant public with reference to which the absolute ground for refusal must be examined is the Italian language-speaking consumer in the Union (judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik Meyer’, paragraph 26; and judgment of 27/11/2003, T-348/02, ‘Quick’, paragraph 30).

Furthermore, when assessing the distinctive character of a trade mark consisting of a combination of elements, the mark needs to be considered as a whole. However, that does not preclude prior examination of each of the trade mark’s individual features (judgment of 09/07/2003, T-234/01, ‘Stihl’, paragraph 32).

To reiterate, the Office remains of the viewpoint that taken as a whole, the word ITALCANTIERI immediately informs the relevant Italian speaking consumer without further reflection that the services directly relate to, originate from and/or are provided from an Italian shipyard(s) and/or building and construction sites being places or facilities where building, maintenance and repair services are carried out and/or are provided from. As such, the words would merely be seen as a descriptor in relation to the all the services claimed rather than an indicator of sole trade origin.

It is acknowledged that the mark applied for is ITALCANTIERI and not ITAL CANTIERI, however, in this instance the conjoining of two descriptive words does not imbue the mark with distinctiveness as it fails to sufficiently disguise the obvious meaning conveyed by the mark. Therefore, even though two descriptive terms have been conjoined the message in the mark remains clear as the mark can only be pronounced and interpreted one way, namely ‘Ital-cantieri’. As a result, when the mark is used in conjunction with the objectionable services by the relevant Italian speaking consumer, the mark would be viewed in a purely descriptive sense.

Moreover, A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the services in respect of which registration is sought is itself descriptive of the characteristics of those 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 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 (See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.) In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgment of 30/11/2004, T‑173/03, ‘NURSERYROOM’, paragraph 21).

It is noted that in terms of the contested services the applicant requests that the Office states on a service by services basis how the expression ITALCANTIERI can be descriptive for all. In response the Office submits that as the above reasoning of the objection applies equally to all the services concerned it is not necessary for the Office to provide an explanation to the objection on a service by service basis it is sufficient for the applicant to note that the objection raised and the reasoning provided in support of the objection applies equally to all the contested services. It has to be put forward that if the ground for refusal is the same for the group of services concerned, as in this case, the Office may use general reasoning, such as that provided.

Consequently, there is nothing about the expression ITALCANTIERI that might, beyond its obvious descriptive meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services concerned on the basis that the mark conveys obvious and direct information regarding the kind of services in question.

The applicant submits that the examiner has incorrectly suggested that the objectionable services covered by the mark applied for are specialised services aimed at a professional/specialist public. As such the applicant submits that the examiner has incorrectly concluded that In view of the nature of the services in question, the awareness of the relevant public will be high. The applicant submits that the services applied for are actually aimed at average consumers and thus the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

The applicant submits that the services covered by the mark ITALCANTIERI from the consumer’s point of view are neither expensive nor potentially hazardous nor technically sophisticated, and as such a consumer does not need professional assistance or advice when choosing or buying them. Furthermore, the applicant submits that it has to be taken in to consideration that the fact that the services at issue may target specialists does not necessarily mean that the degree of attention is high adding that in the present case the degree of the relevant public's awareness and attention will be average or even low. The Office cannot share the applicant’s viewpoint.

The services at issue are, inter alia, services such as import-export agencies; Business auditing; Employment agencies; industrial management assistance; Tax preparation; Drawing up of statements of accounts; Financial analysis; Capital investments; Real estate appraisal; Financial evaluation [insurance, banking, real estate]; Housing agencies; Insurance brokerage; Rental of offices [real estate]; Renting of apartments; Leasing of real estate; Insurance underwriting; Apartment house management; Real estate management; Asphalting; Drilling of wells; Rebuilding machines that have been worn or partially destroyed; Retreading of tires [tyres]; Vulcanization of tires [tyres] [repair]; Damp-proofing [building]; Demolition of buildings; Warehouse construction and repair; vehicle service stations [refuelling and maintenance]; Pier breakwater building; Building of fair stalls and shops; Construction; Factory construction; Furnace installation and repair; Electric appliance installation and repair; Office machines and equipment installation, maintenance and repair; Swimming-pool maintenance; Machinery installation, maintenance and repair, etc. Therefore the Office cannot agree with the applicant that the services concerned are neither expensive nor potentially hazardous nor technically sophisticated, and as such a consumer does not need professional assistance or advice when choosing or buying them, in fact these examples of the services claimed as well as all of the other services claimed are all considered to be either, or in combination, potentially expensive, potentially hazardous and potentially sophisticated and therefore the Office cannot agree that the degree of the relevant public's awareness and attention when purchasing such services will be average or even low as quite clearly this would be an incorrect analysis.

However, that said even if the objected services are aimed as much at the general public as at specialists the Office is aware that the distinctive character of mark must be assessed also in relation to the perception of general public. The Office remains of the opinion that the services covered by the mark, such as those listed above, are specialised services and are therefore mainly aimed at a professional/specialist public and as such the awareness of the relevant public will be high on the basis that the services in question are not considered to be everyday consumption services and are of a specialised nature.

Nevertheless, the Office confirms that if it were the case that the relevant public is made up of consumers who are part of the general public and professionals, the group with the lowest level of attention must be taken into account. It follows that, in the present case, for those services which address both the general public and professionals, account must be taken of the level of attention of the consumer who is part of the general public (15/07/2011, T-221/09, ERGO Group, EU:T:2011:393, §21).

That said, the contested services in general are not purchased regularly and are generally sought via specialist outlets and providers, so, even if the applicant is correct in suggesting that the services are directed at the average consumer, the Office notes that the services at issue are not the type that fulfil basic needs and are not sought on a daily basis. As such, according to the case-law of the General Court, the fact that the services at issue are not sought on a regular basis, leads one to assume that the public’s degree of attention will be rather high (see 13/10/2009, T-146/08, Redrock, EU:T:2009:398, § 45).

Furthermore, account must be taken of the fact that, in view of the nature of the services concerned and in particular their price and their character, the average consumer displays a particularly high level of attention when purchasing them (see 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37) with respect to their technical nature, etc., (see 02/12/2008, T-212/07, Barbara Becker, EU:T:2008:544, § 26).

It has to be put forward that the descriptiveness of the sign has to be assessed in relation to the services for which registration is sought and by reference to the relevant public’s perception of it (see 02/04/2008, T-181/07, Steadycontrol, EU:T:2008:86, § 38; and 21/05/2008, T-329/06, E, EU:T:2008:161, § 23). The applicant is reminded that even if the relevant public was the average consumer, average consumer’s level of attention is likely to vary according to the category of services (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42¸ 07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 18). The descriptiveness of the sign has to be assessed in relation to the services for which registration is sought and by reference to the relevant public’s perception of it (see 02/04/2008, T-181/07, Steadycontrol, EU:T:2008:86, § 38; and 21/05/2008, T-329/06, E, EU:T:2008:161, § 23).

In the present case, having regard to the contested list of services, the Office maintains the examiner’s findings on the basis that due to the specialised nature of the services, they are mainly directed at a professional/specialist public, having a higher level of attention than that of the average consumer. It follows that the relevant public with respect to whom the ground for refusal must be assessed is the Italian-speaking public in the European Union. It is maintained that the specialists belonging to this public will understand the overall meaning given by the sign at issue. Therefore it is reasonable to assume that the professional public working in, or seeking the use of services inside the field of those applied for within the area of the European Union will, because of their knowledge and experience, generally be able to understand the expression applied for and its meaning.

To reiterate, in their submissions the applicant suggests that the services at issue are aimed at the general public. However, it has to be put forward that this argument is of no relevance in the present context of Article 7(1)(c) EUTMR, as a word which describes specialised services and which is recognised as such by specialists in the relevant area must be rejected, independently of any other non-specialist layperson who may not know such a specialist term. In addition, as previously stated, any layperson interested in the services at issue will likely show a high level of attention and knowledge in the field concerned; his/her level of attention and knowledge is higher than average because of the specific nature, expertise and skill required in relation to the services at issue.

As such, the Office reaffirms its viewpoint that that the relevant public will be particularly well informed and attentive. It must be stressed that this higher level of attention and knowledge, does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 28).

Consequently, it is reasonable to accept that the relevant consumer will make a clear link between the mark and the function of the services and therefore perceive the descriptive message of the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the services in question, but is also a word that might profitably be employed for such services. Moreover, It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the services in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).

With respect to the lack of distinctive character of the mark, given that the term ITALCANTIERI has a clear descriptive meaning in relation to the services at issue, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Therefore, the Office remains of the viewpoint that the mark is readily intelligible when taken in conjunction with the objectionable services applied for, and viewed by the relevant consumer, who will perceive the mark ITALCANTIERI merely as a descriptor of the intended services, namely that the services directly relate to, originate from and/or are provided from an Italian shipyard(s) and/or building and construction sites being places or facilities where building, maintenance and repair services are carried out and/or are provided from. As such, the words would merely be seen as a descriptor in relation to the all the services claimed rather than an indicator of sole trade origin.

The conjoined words ITALCANTIERI is presented in a sequence that is intellectually meaningful, thus there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the services concerned. Furthermore, the term ITALCANTIERI is not sufficiently fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer in relation to the services. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the services at issue.

Furthermore, it is important for the applicant to note 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 services such as those in relation to which the application is filed, or of characteristics of those 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 services concerned. (See judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 32.)

Consequently, 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 15 365 224 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.

Sam CONGREVE