Refusal of application for a European Union trade mark

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

Alicante, 17/05/2017

HOFFMANN · EITLE Patent- und Rechtsanwälte PartmbB

Postfach 81 04 20

D-81904 München

ALEMANIA

Application No:	016010704
Your reference:	S368/001_j12/dko
Trade mark:	STAYNTOUCH
Mark type:	Word mark
Applicant:	StayNTouch, Inc. 8120 Woodmont Avenue, Suite 500 Bethesda MD Maryland 20814 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/12/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for ‘STAYNTOUCH’ is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 26/01/2017, which may be summarised as follows:

1. There may be several meanings of the sign, such as ‘stay and touch’ or ‘stain touch’.

2. The message conveyed by the sign is not direct and specific for the goods in question.

3. There is no use of the sign with regards the services in question.

4. The relevant for the services in question are not guests, but the hotel management and the staff.

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).

The applicant argues that there are several meanings of the sign applied for ‘STAYNTOUCH’ such as ‘stay and touch’ or ‘stain touch’ and there is no use of the sign in relation to the services in question. Therefore there is not a direct and specific link between the mark and the services in question. 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 goods or services such as those in relation to which the application is filed, or of characteristics of those goods or 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 goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32)

Moreover, as pointed out above, the sign in question need not already be known as a descriptive indication; it is enough if it can reasonably be expected to be understood as such in the future. Therefore, it is irrelevant whether or not the sign at issue is commonly used in the sector concerned (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 46). The formulation “may serve” in Article 7(1)(c) EUTMR shows that a sign or indication must be refused registration if it may serve in trade to designate the characteristics of the goods, without its being necessary to show that the sign or indication is actually used or needed by the trade in question’ (16/06/1999, R 216/1998-1, DOUBLEMINT, § 12).

The Office does not dispute the fact that the sign in question, taken in isolation and without any goods and services to use as a point of reference for assessment, might have various different meanings. However, the Office would like to emphasise that the mere fact that the word happens to have another meaning does not entitle the trade mark to be registered. It is not uncommon for a word to have more than one meaning, depending on the context, and this does not preclude a legitimate objection being raised. Consequently, although they can have different meanings, the fact that the sign ‘STAYNTOUCH’ could be perceived by the public in the way indicated by the Office, is sufficient for the mark to fall under the objection of Article 7(1)(c) EUTMR.

As regards the argument that there is not a direct and specific link between the mark and the services in question, it should be noted that the Office does not share this view of the applicant. The Office is still of the view that the relevant public will understand the sign as a meaningful expression, namely ‘maintain contact with’. The services in question are software as a service (SAAS) services featuring software regarding many aspects of hotels and hotel accommodation for the guests. Considering the sign and the services in question, it is obvious that these services are being rendered to provide sufficient software to maintain contact between the guests and the service providers during their accommodation or after they finish the stay. This contact may be regarding the various aspects such as the needs of the guests during the stay, their future reservations or bookings, guest’s loyalty and incentive program accounts. Consequently, contrary to what is argued by the applicant, the Office is still of the view that the sign is descriptive of the kind and the intended purpose of the services in question and the information conveyed by the sign regarding the services is obvious and direct.

To reiterate, the services in question are aimed at both average consumers like guests and a professional public such as operators of the hotels or the staff. In this context, the Office does not share the view of the applicant that the relevant public for the services in question are not guests, but the hotel management and the staff. In the present case, it should be noted that even if only a professional public would be concerned, it would not change the descriptive nature of the sign. A high attentiveness on the part of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary; terms which are not (fully) understood by the consumers of cheap mass consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (see the Decision of BoA, 08/02/2017, R 1558/2016-2, Confirm Rx, § 17).

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Contrary to the applicant’s arguments in its observations, 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, which is clearly applicable to the present case.

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 16 010 704 – STAYNTOUCH 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.

Kubilay ÖZDEMIR