Refusal of application for a European Union trade mark

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

Alicante, 01/09/2017

RIECHELMANN & CARLSOHN

Wiener Str. 91

D-01219 Dresden

ALEMANIA

Application No:	16 312 001
Your reference:	M_17_3_858
Trade mark:	WORLD OF CHILDREN
Mark type:	Word mark
Applicant:	World of Children, Inc. 23046 Avenida de la Carlota, Suite 600 Laguna Hills California 92653 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 07/03/2017 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 14/06/2017, which may be summarised as follows:

1. Descriptive character

2. The mark has several meanings

3. The Office has to show that other similar signs are used in the market

4. Distinctive character

Subsequently, an amendment of the classification of goods and services following a notice has taken place, and the list of goods and service now reads as follows (in conformity with the Office´s letter L161 of 18/08/2017 with confirmation of amendment of classification of goods and services):

Class 35 Charitable services to promote public awareness and financial support for

a range of services delivered to vulnerable children, including educational services, health and medical welfare services, protection, rescue and rehabilitation services for children who have suffered abuse, neglect, exploitation or violence, and services to support the humanitarian needs of vulnerable children; charitable foundation services, namely providing labor for charitable programs and services of others developing, supporting and coordinating projects for charitable organisations providing the before- referenced services; promoting the recognition of outstanding individual contributions in the field of child advocacy by identifying, conducting due diligence regarding, funding and honoring individuals around the world who perform exceptional work on behalf of vulnerable children; advice, consultancy and information for the aforesaid, included in the class.

Class 36 Fundraising and sponsorship; charitable fundraising services; charitable foundation services, namely providing financial assistance for charitable programs and services of others; Investment of funds for charitable purposes; advice, consultancy and information for the aforesaid, included in the class.

Class 41 Organizing and hosting awards; arranging and conducting award ceremonies; arranging and conducting various events for charitable purposes, including live events, sporting and cultural activities, educational events and live performances all for charitable purposes; charitable foundation services, namely providing educational and training services for charitable programs and services of others; advice, consultancy and information for the aforesaid, included in the class.

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.

1. Descriptive character

General remarks

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).

Applicant´s remarks

The applicant contended that the relevant public would not perceive the sign ‘WORLD OF CHILDREN’ as a meaningful indication in relation to the services claimed and therefore the sign at issue has no descriptive meaning in relation to these services.

Moreover, the applicant contended that the children are not the potential consumer of the services at issue. Moreover, the applicant argued that the sign at issue does not give any indication as to the purpose of the services, especially to their charitable purposes.

Lastly, the applicant contended that the term ‘world of children’ is different from all the children of the world. Moreover, the applicant contended that the relevant public - being confronted with the sign ‘WORLD OF CHILDREN’ in relation to the services - would think of a childcare facility or physiological aspects of the child development rather than children in need.

Office´s comments

The Office still respectfully maintains its position that the message of the sign ‘‘WORLD OF CHILDREN’ is clear, direct and immediate to the relevant public in relation to the contested services. It is not ambiguous in any way, nor does lend itself to different interpretations, nor will it be perceived as unusual or akin to an allusive fanciful sign in relation to the goods claimed. The sign will simply be perceived as the target or intended purpose of the charitable services in Class 35, the fundraising and sponsorship activity servicess in Class 36, and the recognition and awards services in Class 41, namely that these services are targeting, focusing on or relating to the world of children, children in the world, etc.: - the latter all same expressions for children throughout the world.

Therefore, it follows that the link between the sign ‘‘WORLD OF CHILDREN’ and the services claimed is sufficiently close for the sign to fall within the scope of the prohibition laid down by Art. 7(1)(c) EUTMR and Art. 7(2) EUTMR.

2. The mark has several meanings

Applicant´s remarks

The applicant contended that the entry from Collins Dictionary as cited by the examiner includes several examples to illustrate the meaning chosen by the examiner as follows:

‘The world refers to all the people who live on this planet, and our societies, institutions, and ways of life.

The world was, and remains, shocked.

He wants to show the world that anyone can learn to be an ambassador.

...his personal contribution to world history.

...inflationary pressures in the world economy.’

The applicant contended that these examples from Collins Dictionary do not support the examiner´s definition. Moreover, the applicant contended that neither the (theoretical) meaning as alleged by the examiner, nor the meaning used in practice refers to the services applied for with the mark ‘WORLD OF CHILDREN’.

Office´s comments

The Office does agree with the applicant that the verbal element ‘WORLD’ on its own may have the meaning ‘all people in the world’. However, the sign at issue is ‘WORLD OF CHILDREN’ and must be considered as a whole in its assessment. Followingly, the second verbal element of the sign, ‘of’, is defining or giving more precise information about the ante-ceding noun ‘world’, thus limiting of defining the scope or the object of the services, namely children world-wide or children in the world.

Furthermore, 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, emphasis added).

3. The Office has to show that other similar signs are used in the market

Applicant´s remarks

The applicant contended that the examiner – although not obliged - did not provide examples of internet searches. Moreover, the applicant submitted the following examples in support of its opinion about the meaning of ‘world of children’ (according to the applicant contrary to the examiner´s view of the term as meaning ‘children throughout the world’):

• Annex 3, 4, 5 and 6: Result of a Google search on the term ‘world of children’ which - according to the applicant - is used to describe the inner or outer development of children or their “spiritual life”

• Annex 7: Links to ‘World of Children – Artek Pioneer Camp Archives, 1944-1967 Online’, about a Soviet youth pioneer camp

• Annex 8: Wikipedia-article about ‘World of Children Awards’ (in the name of the applicant, World of Children, Inc.)

Office´s remarks

As the applicant correctly pointed out, it is not up to the Office to show that other similar signs are used in the market. The European Union Court of Justice has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as common and not as the trade mark of a particular proprietor.

However, the Office has studied with interest the examples given and submitted by the applicant for the term ‘world of children’, including annex 8 with a Wikipedia-article about ‘World of Children Awards’ (in the name of the applicant, World of Children, Inc.).

In the afore-mentioned annex 8 regarding the mission of World of Children Awards’/World of Children, Inc. it is stated that ….. World of Children® Award improves the lives of vulnerable children by funding and elevating the most effective changemakers for children worldwide.

Therefore, the Office takes the liberty to presume that, inter alia, the charitable fundraising and sponsorship services applied for in Class 35 and 36 as well as, inter alia, the award, recognition and award ceremonies services claimed in Class 41 concern both children throughout the world and changemakers/award-winners worldwide.

Moreover, as mentioned above, 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, emphasis added).

4. Distinctive character

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Applicant´s remarks

The applicant contended that if it is correct that the sign ‘WORLD OF CHILDREN’ is not descriptive in relation to the services claimed, the sign at issue is distinctive and fulfils its essential function as a trade mark, namely to gurantee the identity of the origin of the services applied for.

Office´s comments

For the reasons given above, the Office finds that the sign ‘‘WORLD OF CHILDREN’ has a clear descriptive meaning in relation to the services, the reason for which the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could serve as a trade origin.

Consequently, the Office is of the opinon that the sign ‘‘WORLD OF CHILDREN’, taken as a whole is devoid of any distinctive character and is not capable of distinguishing the services claimed within the meaning of Art. 7(1)(b) EUTMR and Art. 7(2) EUTMR.

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 16 312 001 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.

Finn PEDERSEN