Refusal of application for a European Union trade mark

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

Alicante, 18/05/2017

NORTON ROSE FULBRIGHT LLP

3 More London Riverside

London SE1 2AQ

REINO UNIDO

Application No:	016117913
Your reference:	LD05913
Trade mark:	DEALERWEB
Mark type:	Word mark
Applicant:	Tradeweb Markets LLC 1177 Avenue of the Americas New York New York 10036 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 24/01/2017 pursuant to Article 7(1)(b) and (c) and 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 24/03/2017, which may be summarised as follows:

1. The applicant claims the term ‘DEALERWEB’ might be perceived as rather invented, fanciful, which does not clearly refer to the goods at issue.

2. The applicant further elaborates that even if the individual elements ‘DEALER’ and ‘WEB’ might have the meaning on their own, the combination as such does not and would not be understood by any relevant consumer as descriptive of services.

3. The applicant submits that the term ‘DEALERWEB’ analysed as the examiner had, requires an additional mental effort and a conscious exercise of extracting such a meaning as a whole.

4. The applicant concludes by claiming the mark to be inherently distinctive and registrable.

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 which underlies 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 a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those 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).

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. Accordingly, it also has to be rejected under Article 7(1)(b) EUTMR.

The Office now replies to the applicant’s comments.

1. The applicant claims the term ‘DEALERWEB’ might be perceived as rather invented, fanciful, which does not clearly refer to the goods at issue.

There is nothing new or unusual about the sign ‘DEALERWEB’, which in fact is merely a combination of elements that convey obvious and direct information about the kind and intended purpose of the services in question. As already stated in the objection letter, the mark conveys a clearly descriptive message, since it would immediately inform consumers that the services for which registration is sought are providing consumers with online trading, brokerage, via electronic platform or website.

Moreover, the relevant consumer will never perceive the mark alone but in relation to the goods and services for which registration is sought. Even when being confronted for the first time with the sign in question in the context of the services at hand, the relevant public will not require any analytical effort to grasp its descriptiveness, which is based on the common meanings of its single words. As already stated in the objection letter, the term ‘DEALERWEB’ has descriptive and generic relevance in, for instance, relation to financial service, brokerage via electronic platforms.

2. The applicant further elaborates that even if the individual elements ‘DEALER’ and ‘WEB’ might have the meaning on their own, the combination as such does not and would not be understood by any relevant consumer as descriptive of services.

It is worth noting that the simple conjoining of two words, the adjective ‘DEALER’, standing for ‘a particular type of stock broker or trader’, and an abbreviation ‘WEB’, standing for ‘world wide web’, does not render the already descriptive sign distinctive. Consequently, the expression ‘DEALERWEB’ is regarded as a neologism that is descriptive (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 37); (12/01/2005, T-367/02‑T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31; and 22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 26) since it is the result of the mere combination, which is grammatically correct, of two elements which are descriptive for the purposes of Article 7(1)(c) EUTMR.

The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

3. The applicant submits that the term ‘DEALERWEB’ analysed as the examiner had, requires an additional mental effort and a conscious exercise of extracting such a meaning as a whole.

As already pointed out on several instances, the Office notes that the relevant consumer does not need to apply any mental process to understand the message conveyed by the mark applied for, is clear and unambiguous. The relevant public, when confronted with the sign applied for ‘DEALERWEB’ as related to financial, brokerage services, will immediately, undoubtedly and with no mental effort recognise that they are mainly offered or provided via electronic platforms, websites, thus serving as a unique electronic marketplace.

4. The applicant concludes by claiming the mark to be inherently distinctive and registrable.

The applicant failed to submit any evidence to prove that the trade mark for which registration is sought possesses inherent distinctiveness for the relevant public, as it claimed in its observation on several instances. Accordingly, the sign applied for would not allow the relevant public to distinguish the commercial origin of the goods from those of other undertakings providing identical or similar ones and, for this reason, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR.

As regards the applicant’s argument that third parties, and more particularly his competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) EUTMR, does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 16 117 913 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.

Gordana TRIPKOVIC