Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 22/01/2018

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

REINO UNIDO

Application No:	16 380 321
Your reference:	67411.216
Trade mark:
Mark type:	Figurative mark
Applicant:	Haymarket Media Group Limited Bridge House, 69 London Road Twickenham Middlesex TW1 3SP REINO UNIDO

The Office raised a partial objection on 10/03/2017 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 also is devoid of any distinctive character, for the reasons set out in the attached letter.

Upon request from the applicant, the Office extended twice - on 10/05/2017/respectively on 13/07/2017 - the time limit for submitting observations with two months till 15/07/2017/respectively till 15/09/2017.

The applicant submitted its observations on 12/09/2017, including the reservation of the right to file evidence of acquired distinctiveness through use under art. 7(3) EUTMR.

The Office raised a partial objection again on 07/11/2017 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 also is devoid of any distinctive character for the reasons set out in the attached letter. At the same time, the Office set an extension of the time limit by two months till 12/01/2018 for the applicant to file evidence of acquired

distinctiveness through use under art. 7(3) EUTMR.

The applicant failed to submit observations/file any evidence of acquired distinctiveness through use within the time limit. For the reasons set out in the letters of objection, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No  16 380 321 is hereby rejected for the following goods and services:

Class 25 Clothing; articles of outerwear, ski wear, ski jackets, jackets, waterproof and weatherproof jackets, coats, waterproof and weatherproof coats; clothing namely, shirts, T-shirts, shirts, polo shirts, rugby shirts, sports shirts, shorts, sports shorts, leisurewear, sweatshirts, sweatpants, sweat shorts, sweat suits, jogging suits, hoodies, tracksuits, slacks, pants, trousers, dungarees, bodysuits, tuxedos, blazers, blouses, skirts, dresses suits, trouser suits skirts; cloehting namely wraps, jerseys, jumpers, sweaters, smocks, cardigans, pullovers, twinsets, knitwear, leggings, neckties, cravats, waistcoats, dresses, robes, gowns, capes, wraps, shawls, bibs, stockings, ties, vests, kilts, blazers, overalls, halter tops, tank tops, crop tops, tops, vests; clothing namely underwear, bras, sport bras, bralets, bustiers, body suits, bra accessories, namely bra straps, bra extenders, bra pads, lingerie, panties, g-strings, thongs, bikinis, briefs, girdles, underpants, sarongs, camisoles, chemises, negligees, slips, boxer shorts; clothing namely sleepwear nightwear, sleep shirts, sleep pants, sleep tops, pyjamas, pyjama sets, baby doll nightdresses, nightdresses, bathrobes, teddies, socks and hosiery, stockings, pantyhose, tights; clothing namely swimwear, beach cover-ups, towelling dress, beachwear, bikinis, swimming costumes, fitted swimming costumes with bra cups; bathing caps; wristbands, ties and belts, scarves, belts (being articles of clothing), waterproof clothing; theatrical costumes; gloves, mittens, aprons, footwear, namely, boots, shoes, slippers, sandals, trainers, running shoes, beach shoes, football shoes, soles for footwear, ski boots; headgear, namely, hats, caps, baseball caps, berets, earmuffs, visors, bandanas, head squares, beanies; saris; baby sleeping bags, being a wearable sleeping garments; parts and fittings for all the aforesaid goods.

Class 35 Demonstration of goods; distribution of samples; presentation of goods and services; conducting, arranging and presenting of events, exhibitions, fairs, festivals and shows for commercial, promotional and advertising purposes; organisation of events, exhibitions, fairs, festivals and shows for commercial, promotional and advertising purposes; promoting the goods and services of others through promotional events; promoting the goods and services of others by arranging for sponsors to affiliate their goods and services with an awards program; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to style, fashion, beauty, design and musical events; arranging of competitions for advertising and business purposes; modelling and model agency services for advertising and promotion; retail services connected with the sale of jewellery, beauty products, publications, clothing, footwear, headwear and food; advisory, consultancy and information services relating to the aforesaid.

Class 41 Entertainment in the nature of fashion shows on clothes and style; organising and presenting displays of entertainment relating to style and fashion; entertainment services in the form of live music performances; entertainment in the nature of showing off beauty products and design of fashion and fashion accessories; education and training services relating to art, style, fashion, clothing, beauty, design and music; provision of recreational and entertainment facilities; exhibition services; organisation of exhibitions for cultural and educational purposes; production and presentation of shows; presentation of live performances; live entertainment services; production and presentation of live entertainment; live demonstrations relating to style, fashion, clothing, beauty and design; organizing and presenting displays for entertainment relating to style, fashion, clothing, beauty, design and music; education, training and teaching services relating to art, style, fashion, clothing, beauty and design; sporting and cultural activities; beauty school services; education services relating to modelling; arranging and conducting courses, workshops, conferences, festival, exhibitions, events, shows and seminars in the style, fashion, clothing, beauty, design and music industries; organising, presenting and production of fashion, clothing, beauty and design shows; organisation of award ceremonies relating to the style, fashion, clothing, beauty and design industries; cultural services in the fields of art, style, fashion, clothing, beauty, design; publishing services; electronic publishing; providing electronic publications (not downloadable); publication of electronic books and journals on-line; publication of books; publishing reviews; publishing podcasts; organization and arranging of competitions; ticket reservation and ticket agency services for entertainment, art, style, fashion, clothing, beauty, design and music; services relating to the editing, recording and production of sound and images; services relating to the editing, recording and production of sound and image recordings on sound and image carriers; recording, film, video and television studio services; consultancy, advisory and information services relating to all of the aforesaid.

Class 42 Fashion design; clothing design; design for others in the field of clothing; footwear design; design for others in the field of footwear; hat design; design for others in the field of millinery; jewellery design; exhibition design; commercial art design; graphic art design; set design for exhibitions, shows, festivals and live entertainment; consultancy, advisory and information in relation to the aforementioned services.

The application may proceed for the remaining goods and services, namely:

Class 9 Photographic, cinematographic, optical, weighing, measuring, radio, television, sound recording, sound reproducing, telecommunications, signalling, checking (supervision), teaching apparatus and instruments; apparatus for recording television programmes; apparatus for recording, transmission, reproduction or reception of sound or images; electrical and electronic apparatus for use in the reception of satellite, terrestrial or cable broadcasts; television receivers including a decoder; set top boxes for use in decoding and reception of satellite, terrestrial and cable broadcasts; apparatus for decoding encoded signals including set top boxes for television reception; set top box apparatus including a decoder and an interactive viewing guide; set top box apparatus including a decoder and a recorder for recording television and audio programmes; set top box apparatus including a decoder and a recorder programmable to transfer stored recordings to storage and also to delete the older recordings; recorded television and radio programmes; recorded programmes for broadcasting on television and on radio; video recordings; computers; computer programs; electronic interactive computer games; computer software; computer software and computer programs for distribution to, and for use by, viewers of a digital television channel for the viewing and purchase of goods; computer games; computer games software; computer software applications; software and applications for mobile devices; downloadable applications for mobile devices; computer quiz software; virtual reality system (software); computer programs for interactive television and for interactive games and/or quizzes; computer video games, all relating to betting, gaming, gambling, lottery or book making services; MP3 players; personal digital assistants; video screens; video projectors; tapes, discs and wires, all being magnetic; cassettes and cartridges, all adapted for use with the aforesaid tapes; blank and pre-recorded audio and video cassettes, tapes and cartridges; phonographic records; laser readable discs for recording / replaying sound or video; ROM cartridges, cards and discs, radio and television signal antennae; pre-recorded CDs; pre-recorded CD-Is; DVD discs; pre-recorded DVDs; pre-recorded CD Roms; integrated circuit cards, memory carriers, recording media; encoded cards; downloadable music and image files; downloadable musical sound recordings; digital downloadable music from the Internet; electronic publications; downloadable electronic publications, newsletters, brochures, books and graphics; downloadable podcasts; sunglasses; cases for sunglasses or glasses; cases for mobile devices; parts and fittings for all the aforesaid goods.

Class 16 Books; programmes; publications; newspapers; newsletters; magazines; periodicals; decalcomanias; stickers; pictures; photographs; postcards; posters; stationery; calendars; erasers; notepads; notebooks; rulers; pamphlets; maps; travel guides; brochures; scrap books; book covers; autograph books; picture books; plastic materials for packaging (not included in other classes); packaging materials; printed publications; greeting cards; musical greeting cards; Christmas cards; tickets; instructional and teaching material (except apparatus); gift vouchers; address books; diaries; book marks; pens; pencils; napkins; flyers; leaflets; advertising and promotional materials; paper bags; parts and fittings for all the aforesaid goods.

Class 38 Broadcasting services, namely, uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; transmission of sound and/or pictures; news agency services; webcasting services; providing digital program distribution of audio and video broadcasts over a global computer network; providing access to a video sharing portal for entertainment and education purposes; electronic transmission of streamed and downloadable audio and video files via electronic and communications networks as well as by means of a global computer network; electronic mail services; providing of access to on-line chat rooms and bulletin boards; telecommunication of information including web pages, computer programs, text and any other data; transmission of messages, data and content via the Internet and other computer and communications networks; online forums, chat rooms, journals, blogs, and list servers for the transmission of messages, comments and multimedia content among users; providing on-line chat rooms for social networking; chat room services for social networking; providing access to digital music websites on the Internet or other computer network; delivery of digital music by telecommunications; video, audio and television streaming services; web streaming being the transmission of data, information and audio-visual data via the Internet or other computer network; transmission of written and digital communications; operation of chat rooms; provision of on-line forums; advisory, consultancy and information services relating to the aforesaid.

Class 44 Beauty treatments; facial beauty treatments; beauty counselling; beauty therapy services; hygienic and beauty care; salon services; consultancy, advisory and information services in relation to the aforementioned services.

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.

Finn PEDERSEN