Refusal of application for a European Union trade mark

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

Alicante, 29/08/2017

HUCKE & SCHUBERT

Waidmarkt 11

D-50676 Köln

ALEMANIA

Application No:	016322802
Your reference:	00561-2
Trade mark:	SPECIALIST ID
Mark type:	Word mark
Applicant:	Specialist ID, Inc. 4614 SW 74th Avenue Miami Florida 33155 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 15/02/2017 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 19/06/2017, which may be summarised as follows:

1. The applicant refutes the mark to be descriptive or lacking distinctive character.

2. The applicant claims that the complex mark has to be assessed as a whole, perceiving the expression ‘SPECIALIST ID’ as a fanciful neologism, where each of its individual elements are not descriptive.

3. The applicant also points out that the relevant consumer will have to make mental effort to perceive a descriptive meaning for the goods for which registration is sought.

4. In conclusion, the applicant claims that the mark as applied for enables the relevant consumer to recognise the sign as an indication of origin as well as to repeat the purchasing experience if it proves to be positive.

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 refutes the mark to be descriptive or lacking distinctive character.

The Office notes that 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 goods 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 ‘SPECIALIST ID’ has descriptive and generic relevance in relation to id badge accessories, immediately understood as being specialists, experts in producing, creating and/or manufacturing id badge holders, displays, or id badge accessories in general.

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.

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).

2. The applicant claims that the complex mark has to be assessed as a whole, perceiving the expression ‘SPECIALIST ID’ as a fanciful neologism, where each of its individual elements are not descriptive.

The Office is examining trade marks in their entirety, never dissecting its elements and examining them in isolation. Even if the abbreviation alone was apt for registration, the result would not change as the combination of a plain word and an abbreviation results in not being registrable under Article 7(1)(c) EUTMR.

There is nothing new or unusual about the sign ‘SPECIALIST ID’, which is merely a combination of elements that conveys obvious and direct information about the kind and intended purpose of the goods and services in question. The two words will be directly and easily understood by an average native English speaker as to refer to id badges, holders, accessories, created, manufactured or crafted by specialists in the field.

3. The applicant also points out that the relevant consumer will have to make mental effort to perceive a descriptive meaning for the goods for which registration is sought.

The relevant public will have no difficulty in immediately perceiving the meaning that a consumer might encounter or purchase the badge holder, accessories, created by specialists, professionals in the field of ID accessories. Therefore, contrary to the applicant’s view, the term is not allusive, vague or indeterminate, but on the contrary, it is likely to be understood without further thought as a descriptive indication referring to kind and intended purpose of the goods at issue.

4.In conclusion, the applicant claims that the mark as applied for enables the relevant consumer to recognise the sign as an indication of origin as well as to repeat the purchasing experience if it proves to be positive.

The expression consists of words that will be clearly understood by English-speaking consumers, as previously mentioned.

The applicant failed to submit any evidence to prove the sign at issue acquired distinctiveness. It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T-194/01, Soap device, EU:T:2003:53, § 48).

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 16 322 802 is hereby rejected for the following goods:

Class 20: Clear plastic holders for badges; Containers, and closures and holders therefor, non-metallic; Displays, stands and signage, non-metallic.

The application may proceed for the remaining goods.

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