Refusal of application for a European Union trade mark

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

Alicante, 10/04/2017

BIRCHAM DYSON BELL LLP

50 Broadway

London Westminster SW1H 0BL

REINO UNIDO

Application No:	016021917
Your reference:	165492.0001
Trade mark:	THE ARTS SOCIETY
Mark type:	Word mark
Applicant:	Bircham Dyson Bell LLP 50 Broadway London SW1H 0BL REINO UNIDO

The Office raised an objection on 18/11/2016 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 09/01/2017, which may be summarised as follows:

1. The applicant does not object to the Office statement that the mark ‘THE ARTS SOCIETY’ is descriptive for the following services in Class 41 organizing cultural and arts events; art exhibitions; art gallery service; education services related to arts.

2. The applicant does however not agree with the Office that the applied for mark is descriptive for the following services in Class 41 education; providing of training, entertainment, sporting and cultural activities; arranging and conducting of workshops; arranging and conducting of educational seminars; arranging and conducting of workshops; arranging and conducting of tutorials; arranging of lectures; career information and advisory services (educational and training advice); conducting courses, seminars and workshops; conducting of educational courses; education and training services; educational information; publication of educational materials; research in the field of education; publishing services; publishing of books and magazines; publishing of newsletters; music publishing services; publishing of journals; recording services; sound recording services; music and audio recording services. These are services that not clearly denotes as being related to art or society per se.

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Firstly the Office notes that the applicant doesn’t disagree with the Office objection that the mark ‘THE ARTS SOCIETY’ is descriptive for organizing cultural and arts events; art exhibitions; art gallery service; education services related to arts and consequently the Office maintains its objection that the mark conveys obvious and direct information regarding the provider or the recipient of the services in question.

The Office also maintain its objection concerning education; providing of training, entertainment, sporting and cultural activities; arranging and conducting of workshops; arranging and conducting of educational seminars; arranging and conducting of workshops; arranging and conducting of tutorials; arranging of lectures; career information and advisory services (educational and training advice); conducting courses, seminars and workshops; conducting of educational courses; education and training services; educational information; publication of educational materials; research in the field of education; publishing services; publishing of books and magazines; publishing of newsletters; music publishing services; publishing of journals; recording services; sound recording services; music and audio recording services. Although we can agree with the applicant that these services not necessarily are related to the arts they are all very general services that includes services related to art and the art society such as events for cultural purpose, workshops, education and research in education are provided by an organised group of people with a common interest in non-scientific branches of knowledge a group of people that studies “the arts”. It could be education, newsletters and publications concerning the art and the arts society or services in relation to such services.

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 16 021 917 is hereby rejected for the following services:

Class 41 Organising events for cultural purposes; Organizing cultural and arts events; Art exhibitions; Art gallery services; Education services related to the arts; Education; Providing of training; Arranging and conducting of workshops; Arranging and conducting of educational seminars; Arranging and conducting of tutorials; Arranging of lectures; Career information and advisory services (educational and training advice); Conducting courses, seminars and workshops; Conducting of educational courses; Training and education services; Educational information; Publication of educational materials; Research in the field of education; Publishing services; Publishing services for books and magazines; Publishing of newsletters; Music publishing services; Publishing of journals; Recording services; Sound recording services; Audio recording services.

The application may proceed for the remaining goods and services namely for:

Class 16 Printed matter; Stationery and educational supplies; Books; Brochures; Stationery; Educational publications; Information booklets; Informational flyers; Instructional and teaching materials; Advertising signs of paper or cardboard; Advertising publications; Advertising signs of paper; Advertising signs of cardboard; Business card paper [semi-finished]; Business cards; Art paper; Art prints; Graphic art prints; Fine art prints; Artists' easels; Artists' brushes; Artists' canvas; Decoration and art materials and media; Works of art made of paper; Papers for use in the graphic arts industry.

Class 36 Fundraising; Charitable fundraising; Fundraising services; Charitable fundraising services; Fundraising and sponsorship; Charitable fundraising by means of entertainment events; Arranging charitable collections [for others]; Financial sponsorship; Investment of funds for charitable purposes; Organisation of collections; Organisation of charitable collections; Providing information relating to charitable fundraising.

Class 39 Travel arrangements; Coordinating travel arrangements for individuals and for groups; Travel organisation; Arranging of sightseeing tours; Accompaniment of travellers; Arranging and booking of travel; Arranging of overseas travel for cultural purposes.

Class 42 Commercial art design; Graphic art design; Graphic art services; Art work design; Industrial art design; Design of artwork; Design services for art-work; Providing information about industrial analysis and research services; Provision of research services; Research and development for others; Research and development services; Research into new products; Scientific and industrial research; Design, drawing and commissioned writing of computer software; Creating, maintaining and hosting the websites of others; Computer software development; Designing; Design services; Design consultation; Graphic design; Graphic designing.

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.

Magnus ABRAMSSON