Refusal of application for a European Union trade mark

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

Alicante, 28/04/2017

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	015993521
Your reference:	TM403983EM-JAF/LES/JXM
Trade mark:	IDSHIELD
Mark type:	Word mark
Applicant:	Pre-Paid Legal Services, Inc. One Pre-Paid Way Ada Oklahoma 74820 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/12/2016 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 13/02/2017, which may be summarised as follows:

1. The applicant does not dispute the meanings provided by the Office for the individual elements of the mark, but submits that, as a whole, the mark is not descriptive or non-distinctive in relation to the services for which registration is sought. This is because the word ‘SHIELD’ is normally perceived as a tangible thing and its use in relation to the somewhat vague concept of ‘identity’ is surprising and unexpected. It is even more unusual given the context of the services for which registration is sought.

2. The mark ‘IDSHIELD’ has been accepted by the national authorities of English-speaking countries, namely the United Kingdom, the United States and Canada.

3. The fact that the word ‘SHIELD’ is unusual and distinctive in relation to an intangible concept is evidenced by the numerous trade mark registrations accepted by the Office itself. The applicant listed several of these registrations, for example ‘DATA SHIELD’, ‘ImageShield’, ‘CashShield’ for goods and services related to protection of the goods named in the marks.

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).

As regards the national decisions referred to by the applicant, according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47.)

The applicant has also submitted a fairly long list of marks containing the element ‘Shield’, some of them indeed comparable to the mark applied for in the present case. However, 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The marks listed by the applicant could in any case be cancelled as a result of a cancellation procedure.

Furthermore, the Office considers that decisions of the Boards of Appeal in several cases, for example the decisions of 14/11/2012, R 543/2012-5, ESHIELD, and 28/01/2016, R 1425/2015-1, TCUSHIELD, confirm the view taken in the present case and also address the applicant’s arguments relating to the word ‘SHIELD’ referring to a tangible thing and its use being unexpected in conjunction with an abstract concept such as identity. The Board has stated that ‘the word ‘SHIELD’ is not limited to a physical object. In a figurative sense, it means something serving as a defence against attack or injury’ (see Oxford English Dictionary). Therefore, in modern English, ‘SHIELD’ can equally refer to nonphysical barriers or protective devices (see, in that respect, decision of 26 March 2007, R 1453/2006-2, ‘SAFETY SHIELD’, para. 18 )’ (14/11/2012, R 543/2012-5 ESHIELD, § 12). Furthermore, in another and fairly recent decision, the Board confirmed the approach taken in the previous case and stated that, ‘As such it is irrelevant whether or not the word component ‘SHIELD’ has several meanings and in any case, as indicated in paragraph 22, the descriptiveness of a sign has to be assessed in relation to the contested goods or services and by reference to the relevant public’s perception of it. The Board is not convinced that highly specialised and attentive professional consumers within the automotive industry, when confronted with the mark in the context of goods for preventing cyber-attacks will understand the word ‘SHIELD’ solely as a reference to a physical item, namely a large, relatively flat piece of metal used for protective purposes primarily in combat, rather than in the more general sense of something which provides protection’ (28/01/2016, R 1425/2015-1, TCUSHIELD, § 32). The above is fully applicable to the present case. Furthermore, it is apparent from the very wording of the services in question that they are in fact for such purposes (protection), bringing the mark into the realm of descriptiveness.

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 15 993 521 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.

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