Refusal of application for a European Union trade mark

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

Alicante, 15/02/2017

The Good Box Co Labs Ltd

76 Greenway Harlow Business Centre

Harlow Essex CM19 5QE

REINO UNIDO

Application No:	015822612
Your reference:
Trade mark:	Tap and Give
Mark type:	Word mark
Applicant:	The Good Box Co Labs Ltd 76 Greenway Harlow Business Centre Harlow Essex CM19 5QE REINO UNIDO

The Office raised an objection on 05/10/2016 because it was found that trade mark applied for is not eligible for the registration under Article 7(1) (b) and (c) and 7 (2) EUTMR, for the following reasons:

The trade mark you have applied for is not eligible for registration under Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR.

The mark applied for ‘Tap and Give’ consists of the words ‘tap’, ‘and’, ‘give’ and is considered objectionable for:

Class 9 Electronic payment terminal; Encoded prepaid payment cards; Payment cards being magnetically encoded; Apparatus for electronic payment processing; Payment terminals, money dispensing and sorting devices; Terminals for electronically processing credit card payments; Electronic and magnetic ID cards for use in connection with payment for services.

Class 36 Payment processing; Electronic payment services; Payment processing services; Payment administration services; Automated payment services; Financial payment services; Remote payment services; Conducting cashless payment transactions; Debit card payment services; Credit card payment services; Credit card payment processing; Automated payment of accounts; Payment transaction card services; Telegraphic remittance [payment] services; Financial pre-payment services; Processing of electronic payments; Electronic processing of payments; Issuing of payment gift vouchers; Issuing of payment gift cards; Electronic wallet services (payment services); Money order payment guarantee services; On-line bill payment services; Processing of payments for banks; Processing of credit card payments; Processing of debit card payments; Processing of electronic check payments; Credit card and payment card services; Bill payment services provided through a website; Processing of payment transactions via the Internet; Processing payments made by charge cards; Payment and receipt of money as agents; Financial transfers and transactions, and payment services; Processing electronic payments made through prepaid cards; Collection of payments for goods and services; Processing of payments in relation to credit cards; Processing of payments in relation to charge cards; Financial management of reimbursement payments for others; Providing multiple payment options by means of customer-operated electronic terminals available on-site in retail stores; Processing payments for the purchase of goods and services via an electronic communications network.

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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 (09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32).

In the present case, the objectionable goods and services covered by the mark applied for are everyday consumption/mass consumption goods and services and are mainly aimed at average consumers. In view of the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. Moreover, since the mark ‘Tap and Give’ consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

The trade mark consists of the words with the following meanings:

TAP ‘Strike with a quick light blow or blows.’ (Oxford English Dictionary, on 04/10/2016 athttp://www.oed.com/view/Entry/197647?rskey=omP8MW&result=7#eid.)

AND ‘along with; in addition to’ (Collins English Dictionary, on 04/10/2016 at http://www.collinsdictionary.com/dictionary/english/and_1)

GIVE ‘To render (a benefit or service) without payment.’ (Oxford English Dictionary, on 04/10/2016 at http://www.oed.com/view/Entry/78553?rskey=txcPBv&result=3&isAdvanced=false#eid.)

The relevant consumer will understand the words as a meaningful expression: just tap the screen and give.

1) Descriptiveness

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T‑311/02, Limo, EU:T:2004:245, § 30).

Taken as a whole, the words ‘Tap and Give’ immediately inform consumers without further reflection that the goods applied for in Class 9 such as electronic payment terminals and apparatus for electronic payment processing are operating in a way that the user finishes the payment transaction only by tapping on the screen of the payment device such as mobile phones or tablets. It can also be understood that by just tapping the screen of an electronic device one can give/donate money. Regarding the services applied for in Class 36 such as payment processing and electronic payment services, the words ‘Tap and Give’ inform consumers that these services are rendered easily, namely transferring money to the people only by tapping on the screen of the payment apparatus.

Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question.

It follows that the link between the words ‘Tap and Give’ and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

2) Lack of distinctive character

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This is clearly applicable to the present case.

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, 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.

Consequently, taken as a whole, the mark applied for – ‘Tap and Give’ – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) EUTMR.

If you have any observations, they should be submitted within two months from the notification of this communication. If you do not submit any observations, the application will be rejected.

If your application was being processed as ‘Fast Track’, please be aware that your

application has had a deficiency raised against it and, consequently, can no longer

be processed as such. Therefore, the usual timeliness standards will now apply to

your application.

No observations were received by the Office within the time limit set.

Therefore and due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Union Trade Mark 15 822 612 is hereby rejected for all the goods and services which have been 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.

Kubilay ÖZDEMIR