Refusal of application for a European Union trade mark

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

Alicante, 10/02/2017

Papadopoulos, Lycourgos & Co LLC

2-4 Arch. Makarios III Avenue, Capital Center, 7th Floor

CY-1065 Nicosia

CHIPRE

Application No:	015439805
Your reference:	ACTL-TM2
Trade mark:	Bookcyprus.com
Mark type:	Figurative mark
Applicant:	AEOLOS CYPRUS TRAVEL LIMITED 12, Zinas Kanther, Marilena Building, 2nd Floor, Flat 201-202 CY-1065 Nicosia CHIPRE

The Office raised an objection on 06/06/2016 pursuant to Article 7(1)(b) and (c) and 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 copy of the original objection.

On 21/07/2016, the applicant replied to the abovementioned communication submitting its observations and, in the event the Office was not persuaded by the arguments submitted, reserved the right to file evidence of acquired distinctiveness.

The Office issued another notification on 20/10/2016, analyzing submitted arguments and claims of acquired distinctiveness, allowing another two-month deadline to submit further evidence under Art 7(3) to prove the Acquired distinctiveness through use.

On 20/12/2016, the applicant replied to the abovementioned communication submitting the following evidence of acquired distinctiveness:

• Copies of invoices, indicating that the applicant’s company AOELOS TRAVEL ltd. has rendered services in the territories of the UK, Holland, Russia, among others, before the filing date of the trade mark application 17/05/2016, amounting to sales’ volumes €9.500.000 per year.

• Sales’ volumes in the English-speaking countries, amounting to € 4.000.000. per year, according to applicant evidently proving the majority sales volumes of the applicant.

• Printouts from the websites, indicating extensive use of the mark by the Applicant in partnership with leading service providers, as follows:

• Extracts form the website of Tripadvisor.com (schedule A),

• Extracts form the website of Skyscanner.com (schedule B),

• Extracts form the website of Bing.com (schedule C),

• Extracts form the website of Yahoo.com (schedule D),

• Extracts form the website of Travelzoo.co.uk (schedule E),

• Extracts form the website of Dealchecker.co.uk (schedule F),

• Extracts form the website of Yandex.ru (schedule G),

• Extracts form the website of Google.gr (schedule H).

• Printouts of Investments in promoting and advertising the mark for Google Ad words, amounting to € 340.000,00 for the period 2011 to 2016, which according to applicant proves not only substantial devotion and cost incurred by the Applicant but the reputation achieved in the field of services related to the mark but also long-standing use.

The applicant concludes as the mark should proceed to registration given the above.

Assessment of the claim of acquired distinctiveness

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) CTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(See judgment of 10/11/2004, T396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C108/97 and C109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C299/99, ‘Philips’, paragraph 63.)

It must be reiterated here that in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character. In this case, as the mark applied for is composed of an English word, the distinctive character acquired through the use of that trade mark must be demonstrated in the English-speaking part of the European Union. It must be noted that, the Court has already confirmed that there is at least a basic understanding of the English language by the general public in the Scandinavian countries, the Netherlands and Finland (judgment of 26/11/2008, T-435/07 ‘NEW LOOK’, para. 23). Therefore, the distinctive character acquired through the use of the trade mark applied for must be demonstrated in the United Kingdom, in Ireland, in Malta, where English is an official language, as well as in the Scandinavian countries, in the Netherlands and in Finland.

Furthermore, a mark must have become distinctive through use before the application was filed (judgment of 11/06/2009, C-542/07 P, ‘Pure Digital’, paragraph 60). The filing date of the CTM applied for is 15/03/2016.

After examining the arguments and the evidence submitted by the applicant, the Office concludes that the evidence provided is insufficient to prove that the sign applied for has acquired distinctiveness through use in the relevant parts of the European Union, in relation to the services to which the objection was raised.

The final outcome depends on the overall assessment of the evidence of the particular case. This is because, in general, further evidence is necessary to establish the degree of notoriety of the sign, since such statements have to be considered as having less probative value than physical evidence or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to determine whether or not the contents of the declaration are supported by the other items of evidence.

In the present case, the evidence submitted does not allow for any definite answer regarding knowledge of the mark applied for in the relevant territory. The printouts from the applicant’s and other websites, containing information about the services offered by the applicant only give general information on the commercial activity of the applicant´s travel agency services, not the mark at issue. The same applies for GoogleAd words, indicating the applicant’s investments, again, only for the company as such, not the mark as applied for. The information regarding the market share, turnover, recognition is provided only in relation to the applicant and not to the mark applied for, apart from few printouts for the territory of the UK, printed out from the applicant’s website, hardly discernible. It is not possible to deduce any information regarding the notoriety and the relevant market position of the sign applied for in the relevant territory.

In the present case the evidence filed by the applicant consists of the invoices, from which can be inferred that certain commercial activity of the applicant’s company is established with various addressees in Cyprus, UK and Ireland, Malta, Holland and but no mention of the sign as applied for was offered in any of these invoices whatsoever. For the second batch of evidence, the Office agrees that the applicant achieved sale in this amount, however, again only by the applicant’s company name, AOELOS TRAVEL ltd., no mention of the mark as such present.

The partnerships established with the leading travel service providers as Skyscanner.com (schedule B), Bing.com (schedule C), Yahoo.com (schedule D), Travelzoo.co.uk (schedule E), Dealchecker.co.uk (schedule F), Google.gr (schedule H), are presented in the form of printouts, some in Greek, some in English, bearing no date, all originating from the webpage of bookcyprus.com, supposedly indicating search engine for cheap travel services in Cyprus. However, no additional information or evidence supports these partnerships.

There is no independent evidence showing how intensive use of the mark applied for has been or the amount invested by the undertaking in promoting the trade mark. According to the submitted printouts, indicating that the Bookcyprus.com was nominated as a National Champion representing Cyprus 2014/15 and a printout of the Guinness World Record that the Bookcyprus.com created in 2008 the largest towel in the world, prove that there is a certain distinction of the applicant’s mark, but it does not suffice for the overall recognition.

Finally, printouts from various websites are not particular relevant to the assessment of the acquired distinctiveness in the relevant territory as it must be noted that the mere presence of a trade mark on a website, without any knowledge of how popular these websites are, or the presence on the promoted services without the knowledge of how widely they were rendered, tells little about the recognition of the trade mark amongst the relevant public.

Overall, in its totality the evidence is not sufficient to prove that the sign applied for has acquired distinctiveness through use in the relevant parts of the European Union, namely in the United Kingdom, in Ireland and in Malta, as well as in the countries where there is at least a basic understanding of the English language by the general public, namely in the Scandinavian countries, in the Netherlands and in Finland.

It must be emphasised that the evidence necessary to satisfy the requirements of Article 7(3) EUTMR is of a different nature, and definitely more extensive, than in the case of a mere proof of use. The applicant had to show that, in the perception of the relevant public, the sign applied for has been used so intensively and in such a way as to allow the consumer, through the sign alone, to associate the goods and services at issue with the applicant.

Therefore, the Office concludes that the evidence presented is insufficient to demonstrate that, in the eyes of the relevant public, the sign applied for has become distinctive in relation to the services objected to, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) CTMR has not been proven.

To conclude, regarding the figurative element bestowing a sufficient distinctive character upon a trade mark, the Office as already explained in the objection letter and reiterates that the figurative elements consisting of stylized letters SO RED in nuances of red preceded by an acronym SL with a red drop attached only further reinforces these verbal elements, altogether

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 439 805 is hereby rejected for all the services claimed in classes 35, 39 and 43.

According to Article 59 EUTMR, you have a right to appeal against this decision and the earlier provisional refusal issued on 06/06/2016 and 20/10/2016.

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.

Gordana TRIPKOVIC