Refusal of application for a European Union trade mark

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

Alicante, 25/11/2016

HGF LIMITED

1 City Walk

Leeds, Leeds LS11 9DX

REINO UNIDO

Application No:	015719611
Your reference:	DPO/T236224EP
Trade mark:	CA$HFORCARS.COM
Mark type:	Figurative mark
Applicant:	Copart, Inc. 14185 Dallas Parkway, Suite 300 Dallas Texas 75254 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 23/08/2016 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 24/10/2016, which may be summarised as follows:

1. The relevant consumer would not perceive the element ‘ca$h’ in the mark as denoting the word ‘cash’, and is more likely to see it as a coined and arbitrary verbal construction to form a distinctive element of the mark.

2. The mark as a whole is sufficiently cryptic and unusual and the average consumer would not arrive at the alleged descriptive meaning without a considerable degree of interpretive effort.

3. The meaning arrived at by the Office is not directly descriptive of the applied for services but is merely allusive.

4. The composition and stylisation of the logo renders the mark distinctive overall.

5. A list of earlier trade marks of similar composition have been accepted by EUIPO.

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 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).

Specific remarks concerning the observations of the applicant

1. The relevant consumer would not perceive the element ‘ca$h’ in the mark as denoting the word ‘cash’, and is more likely to see it as a coined and arbitrary verbal construction to form a distinctive element of the mark.

The Office disagrees with this argument and asserts that the substitution of ‘ca$h’ for the word ‘cash’ in the mark would be readily understood by the consumer. The dollar sign in place of the letter s in ‘cash’ does not sufficiently disguise the word, particularly as it denotes units of currency. When taken as a whole, the element ‘ca$h’ makes immediate sense in relation to the other elements in the mark and is considered insufficient to offset the descriptive meaning derived from the mark in totality.

2. The mark as a whole is sufficiently cryptic and unusual and the average consumer would not arrive at the alleged descriptive meaning without a considerable degree of interpretive effort.

The Office disagrees and asserts that the message conveyed by the mark as a whole is clear and unambiguous in relation to services such as “providing monetary exchange services, namely, exchanging vehicles of others for cash” and would not require from the average consumer, who is reasonably well-informed and circumspect, any particular intellectual effort to be immediately understood.

3. The meaning arrived at by the Office is not directly descriptive of the applied for services but is merely allusive.

The Office refers to point 3 above and asserts that the meaning of the words conveyed by the mark is clear and direct about the kind of services on offer.

4. The composition and stylisation of the logo renders the mark distinctive overall.

The Office refers to Convergence Programme 3. Distinctiveness – Figurative marks containing descriptive/non-distinctive words:

“Descriptive or non-distinctive verbal elements combined with simple geometric shapes such as points, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezia and ellipses are unlikely to be acceptable, in particular when the above mentioned shapes are used as a frame or border. This is because a geometric shape which merely serves to underline, highlight or surround the word element will not have sufficient impact on the mark as a whole to render it distinctive.” (p.25)

Given the highly descriptive nature of the words in the mark, the presentation of the logo in which they are contained is not considered sufficient to counteract the direct meaning of the words conveyed.

5. A list of earlier trade marks of similar composition have been accepted by EUIPO.

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).

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 015719611 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.

Lance EGGLETON