Refusal of application for a European Union trade mark

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

Alicante, 25/05/2017

Markets Place

Business Center Eurotour 12 Mihail Tenev Str., Fl.9

1000 Sofia

BULGARIA

Application No:	016313413
Your reference:
Trade mark:	XMarkets
Mark type:	Word mark
Applicant:	Markets Place Business Center Eurotour 12 Mihail Tenev Str., Fl.9 1000 Sofia BULGARIA

The Office raised an objection on 09/02/2017, 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. The objection letter is attached.

The mark applied for is Xmarkets and is considered objectionable for all the services claimed, namely:

Class 36 Financial services; Financial intermediary services; Financial exchange services; Financial research services; Financial investigation services; Financial information services; Financial credit services; Financial loan services; Financial advisory services; Financial consultation services; Financial consultancy services; Financial consulting services; Financial nominee services; Financial savings services; Financial transaction services; Financial investment services; Financial clearing services; Financial management services; Financial analysis services; Financial appraisal services; Financial sponsorship services; Financial planning services; Insolvency services [financial]; Financial payment services; Computerised financial services.

The applicant submitted its observations on 14/02/2017 which may be summarised as follows:

• The applicant is developing a product which will be a huge break through within the financial markets.

• The applicant wants to protect their development and services from the competitors.

• The idea of the trademark is to make sure the services claimed remains protected and to disallow competitors taking advantage.

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.

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 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, § 34).

In the present case, the objectionable services covered by the mark applied for are specialised services aimed at a professional public. In view of the nature of the services in question, the awareness of the relevant public will be high.

Moreover, since the mark applied for contains an English language word along with a recognised letter from the English alphabet (X and markets) the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

Thus, the Office remains of the opinion that, contrary to what the applicant says the sign Xmarkets is indeed descriptive of the kind and intended purpose of the services in question.

The Office acknowledges that when assessing the distinctive character of a trade mark consisting of a combination of elements, as in the present case, the mark needs to be considered as a whole. However, it is important for the applicant to note that that does not preclude prior examination of the trade mark’s individual features (judgment of 09/07/2003, T‑234/01, ‘Stihl’, § 32).

It should be noted that descriptiveness must be assessed with regard to the ordinary meaning the sign applied for has in common parlance for the public at whom the services are directed (judgment of 8 July 2004, T-289/02, ‘Telepharmacy Solutions’, § 45). Dictionary entries represent common parlance – the understanding the public at large has of a word.

The trade mark consists of the conjoined letter and word combination X and markets. To reiterate, English language dictionaries define the letter ‘X’ as, inter alia, a symbol for the preposition ‘ex’ used in business, banking and finance 

(www.collinsdictionary.com ); and the expression ‘ex’ is an abbreviation for exchange (www.merriam-webster.com ). As regards to the term ‘exchange’ this means inter alia, the transfer or interchange of sums of money of equivalent value, as between different national currencies or different issues of the same currency; a place where securities or commodities are sold, bought, or traded, especially by brokers or merchants (www.collinsdictionary.com ). Finally, the term ‘Markets’ is defined as, inter alia, the trading or selling opportunities provided by a particular group of people (www.collinsdictionary.com/dictionary/english/market ). Thus, it is apparent from these definitions that the combination of the mark indicates clearly to the relevant public the kind and intended purpose of the services bearing the expression claimed. Consequently, the Office remains of the opinion that the relevant consumer will understand the word combination as a meaningful expression.

Accordingly, taken as a whole, the expression Xmarkets immediately informs consumers without further reflection that the services applied for directly relate to exchange markets concerned with financial trading or selling opportunities such as money of equivalent value, between different national currencies or different issues of the same currency; and/or a place where securities or commodities are sold, bought, or traded, especially by brokers or merchants. Therefore, the mark consists essentially of an expression that conveys obvious and direct information regarding the kind and intended purpose of the services in question.

Whilst it is noted that the expression applied for is Xmarkets and not X markets the Office is of the opinion that whether the mark is analysed as Xmarkets or X markets makes little difference on the basis that whether analysed separately or as a whole, the expression can only be interpreted and understood one way, namely in a descriptive sense in relation to the contested services. The message expressed by the sign is clear, direct and immediate to the relevant public and in relation to the contested services. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor will it be perceived as unusual or akin to an allusive fanciful sign in relation to the services claimed.

Consequently when the mark Xmarkets is used in connection with the contested services it would be reasonable to accept that the relevant consumer is likely to perceive the expression in a descriptive sense rather than as a badge of sole trade origin.

There is nothing unusual about the structure of the expression. The word and letter combination applied for is presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer, being the English-language speaking consumer, will not perceive it as unusual but rather as a meaningful expression. Furthermore, the expression Xmarkets is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer in relation to the financial services claimed.

Furthermore, it has to be put forward that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the services at issue in respect of which registration is sought is itself descriptive of the characteristics of those services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.) In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgment of 30/11/2004, T 173/03, ‘NURSERYROOM’, paragraph 21).

Additionally, it should be recalled by the applicant that the test is not whether the relevant consumer upon viewing the sign Xmarkets in isolation can guess what services it covers. Consumers will come into contact with the sign in tandem with the services concerned and the question therefore is whether at that point they will perceive the sign as an indication of origin, i.e. a trade mark, or as an indication of a characteristic of the services.

It is important for the applicant to note that 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 services such as those in relation to which the application is filed, or of characteristics of those 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 services concerned (See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32).

Moreover, it is reasonable to believe that consumers will not require a high degree of sophistication to make a sufficiently clear link between the mark and the services and perceive the descriptive message of the mark. No other interpretation is reasonably open to the relevant public in the context of the services concerned. Indeed, the mark not only directly embodies a sensible meaning in relation to the services in question but is a combination of words that might profitably be employed for such services. It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the services in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 40 and the case-law therein cited).

In addition, the Office reaffirms that the sign Xmarkets also lacks any distinctive character in relation to the contested services and therefore also falls foul of Article 7(1)(b) EUTMR, not only because the mark lacks distinctiveness (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86), but also because, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services concerned.

In conclusion, the argument in the present case concerns whether Xmarkets can be registered as a trade mark for the contested services claimed in Class 36 in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the expression is likely to convey to a relevant consumer of those services, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated.

Thus, the Office confirms, for the reasons already given, that the mark Xmarkets conveys obvious and direct information regarding the kind and intended purpose of the services in question. Whilst it is noted that the applicant does not agree with this viewpoint, the Office has to put forward that when the mark Xmarkets is used in connection with the contested services it is reasonable to accept that the relevant consumer is highly likely to perceive the expression in a descriptive sense rather than as a badge of sole trade origin.

Consequently, 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 Xmarkets 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.

Sam CONGREVE