Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/01/2018

DECHERT LLP

160 Queen Victoria Street

London EC4V 4QQ

REINO UNIDO

Application No:	016139801
Your reference:	960423/051091
Trade mark:
Mark type:	Figurative mark
Applicant:	Thomas Cook Group plc 3rd Floor South Building 200 Aldersgate London EC1A 4HD REINO UNIDO

The Office raised an objection on 15/12/2016 pursuant to Article 7(1)(b) and (c) 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 first attached letter.

The applicant submitted its observations on 10/01/2017 and requested the opportunity to file evidence of acquired distinctiveness should the Office maintain its objection, the Office maintained its objection on 31/05/2017 and allowed a new deadline for submitting evidence of acquired distinctiveness, for the reasons set out in the second attached letter, the applicant filed evidence on 06/10/2017 without specifying whether the claim was principal or subsidiary, the Office therefore communicated that this must be clarified on 08/11/2017, the applicant clarified that the claim is principal one on 14/11/2017, all the evidence submitted may be summarised as follows.

1. In support of your claim, you submitted evidence of use on 06/10/2017 and 11/10/2017. The evidence to be taken into account is, in particular, the following:

• Affidavit: Witness statement from Shirley Bradley, of Thomas Cook Group (the applicant), who, in summary, states: the applicant has offered package holidays under the ‘AIRTOURS’ brands since the 1980s; the general turnover of the applicant amounts to 2,461,921,182 pounds over the six years before the application was filed; between 2012 and 2017 nearly 4,500,000 passengers have travelled with ‘AIRTOURS’; the brand enjoys a very favourable reputation among the relevant consumers; the brand has been recommended and mentioned in the media in both the UK and Malta; the brand is widely promoted through its website and social media channels with many followers and ‘likes’; the applicant has spent several million pounds on marketing and brochures the past six years; over 3,500,000 brochures have been printed and distributed since 2012. Ms Bradley concludes that the brand, ‘AIRTOURS’, has acquired distinctiveness through use for all the services for which registration is sought.

• Press clippings: one clip from www.theguradian.com on 14/02/2017 recommending a trip to Gran Canaria with ‘AIRTOURS’; copies of pages from the travel book The Rough Guide to Malta & Gozo, of 2001, where ‘AIRTOURS’ is recommended as tour operator for travels to Malta.

• Advertisements: screenshots of the applicants websites, dating back to March 2000, demonstrating that services under the ‘AIRTOURS’ brand has been available since then; screenshots from Twitter and Facebook, demonstrating the argument from the witness statement; extracts from various brochures showing promotion of the ‘AIRTOURS’ brand.

2. The above-mentioned material demonstrates that ‘AIRTOURS’ has acquired distinctiveness through use under Article 7(3) EUTMR; the Office should therefore accept the mark for registration for all the services applied for. In particular as the Office has deemed that ‘AIRTOURS’ is not descriptive in an opposition decision of 2008, the level of acquired distinctiveness should therefore be low in the present case.

Pursuant to Article 94 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).

In response to the applicant’s submissions, the Office states the following:

1.

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

The evidence submitted in the present case must enable the Office to find that at least a significant proportion of the relevant section of the public identifies the services at issue as originating from a particular undertaking because of the trade mark (judgment of 15/12/2015, T-262/04, Briquet à Pierre, EU:T:2005:463, § 61). Furthermore, the evidence submitted must relate to each of the services claimed in the application.

In respect of the statement drawn up by Shirley Bradley, of Thomas Cook Group, it has to be put forward that evidence drawn up or generated by the interested parties themselves are given less weight than independent evidence. This is because the perception of the party involved may be more or less affected by its personal interests in the matter. However, this does not mean that such information does not have any probative value. Their exact value always depends on its concrete form and has to be assessed together with the rest of the evidence submitted to support its content.

In relation to documents originating from the applicants themselves, the Board of Appeal stated that:

As stated by the Court of First Instance ‘…in order to assess the probative value of a document, it is necessary first to check the plausibility and truthfulness of the information it contains. In that regard account must be taken, inter alia, of the origin of the document, the circumstances of its preparation and to whom it is addressed, and whether it seems from the content to be sensible and reliable’, (see ‘Briquet à pierre’, at paragraph 78). Bearing in mind that the above assessed documents did not originate from an independent source, but was drawn up by the applicant itself, they need to be corroborated by other proof (see also decision of the Board of Appeal of 28 September 2006 in Case R 785/2006-2 CASINOLINK, at paragraph 34). This is also in line with the considerations in the ‘Chiemsee’ case, at paragraph 51, in which, although not stated in an exhaustive manner, the Court gave some indications as to the appropriate evidence to prove the acquired distinctiveness of a mark. Statements drawn up by the parties themselves are therefore of rather limited probative value

(29/10/2007, R 1128/2007-2, ’3D (alarm device for vehicles)’, § 31)

To prove acquired distinctiveness it would be necessary to show not only great commercial success, it would also be necessary to identify with precision the turnover/advertising figures and evidence relating to the mark applied for, as well as their link to the relevant services. Furthermore, it is desirable that the figures be segregated on an annual and market by- market basis. This must be done within all the specific territories of the European Union where English is official language, namely Ireland, United Kingdom and Malta, hence, the distinctive character acquired through use must have been proved in all these countries. Although the applicant has generated a huge turnover over the last years, a simplified table showing the general gross income of the applicant is not sufficient to demonstrate that ‘AIRTOURS’ has acquired distinctiveness, for the specific services in question, among the relevant public in all the relevant territories.

Furthermore, to show that the mark has acquired distinctiveness, it would be necessary to prove not only great commercial success within all of the relevant territories, but also that the relevant public perceives the mark as an indicator of trade origin, for instance through a market survey. Statements from chambers of commerce and industry or other trade or professional organisations could also give weight to the applicant’s claim (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 56-59). No such documents have been submitted.

As put forward in the previous objection letter, the Office maintains that the relevant public for the mark ‘AIRTOURS’ includes consumers in the native English-speaking Member States, namely the United Kingdom, Ireland and Malta. Although some of the evidence is marked as concerning Malta and the UK, the evidence is not clearly organised with concrete and specific evidence of acquired distinctiveness in all of the relevant territories. To prove acquired distinctiveness under Article 7(3) EUTMR it would be necessary to provide concrete evidence from all of the relevant territories.

In summary, the Office concludes that the material submitted is not sufficient for it to determine that the mark ‘ ’ had, at the date of the filing of the application, acquired distinctiveness through use in respect of the services for which registration was sought within the relevant territories, namely the United Kingdom, Ireland and Malta, to the extent that it would allow the relevant public to identify the services as originating from a particular undertaking.

2.

As regards a conclusion drawn up in a previous opposition decision, this can have no decisive impact on present decision. In particular as the decision referred to is an opposition decision and the principles of assessing distinctiveness differs from absolute grounds assessments; see, for example, the EUIPO Guidelines, Part C, Examination, Section 2, Opposition, Chapter 5, Distinctiveness of the Earlier Mark, 2.1.1:

When dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

Furthermore, each mark must be assessed solely on its own merits, and how these merits relate to settled case law and practice must be the decisive factor when assessing distinctiveness. The Office has already concluded that the mark is descriptive and devoid of any distinctive character, consequently, a lower standard of evidence of acquired distinctiveness will not be accepted as sufficient in the present case.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 16 139 801 is hereby rejected for the following services:

Class 35 Advertising; business management; business administration; the bringing together, for the benefit of others, of photographs, calendars, posters, maps, enabling customers to conveniently view and purchase those goods in travel stores; the bringing together, for the benefit of others, of photographs, calendars, posters, maps, enabling customers to conveniently view and purchase those goods in a travel catalogue by mail order or by means of telecommunications; consultancy services relating to the acquisition of goods and services; business advisory and information services; provision of trade, business, economic information; business research services; compilation and provision of business information.

Class 36 Insurance affairs, issuing of travellers' cheques and currency vouchers; travel insurance services.

Class 39 Travel services; travel agency and tourist services; arranging of tours and excursions; air transport; tour conducting and escorting; booking of seats and travel reservations for travel and for tickets; advisory and information services relating to transportation travel and tourism; rental of aeroplanes.

The application may proceed for the remaining services:

Class 35 Office functions; the bringing together, for the benefit of others, of writing implements, stationery, diaries, personal organisers, writing instruments, decalcomanias, playing cards, games and playthings, clothing, footwear, headgear, gymnastic and sporting articles, travelling bags, umbrellas, enabling customers to conveniently view and purchase those goods in travel stores; the bringing together, for the benefit of others, of writing implements, stationery, diaries, personal organisers, writing instruments, decalcomanias, playing cards, games and playthings, clothing, footwear, headgear, gymnastic and sporting articles, travelling bags, umbrellas, enabling customers to conveniently view and purchase those goods in a travel catalogue by mail order or by means of telecommunications; dissemination of business information relating to financial markets.

Class 36 Financial affairs; lending to individuals and companies; business affairs; financial information services; credit cards, debit cards, currency exchange; insuring of hotel accommodation.

Class 39 Railway transport, car transport; bus transport, boat transport, truck transport; packaging of goods; freight brokerage, freight forwarding; delivery of goods; parcel delivery; parking place rental; rental of cars, ships and boats.

Class 43 Travel agency services for arranging temporary accommodation; package holiday services for arranging temporary accommodation; temporary accommodation services, namely booking and rental that of villas, homes, estates, apartments; rental of hotel accommodation; tourist homes; booking of temporary accommodation; services for providing food and drink; providing reviews and information relating to temporary accommodation via computer networks and global information networks.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Lars Paalgard SOYLAND