Refusal of application for a European Union trade mark

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

Alicante, 22/08/2017

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRLANDA

Application No:	16 429 813
Your reference:	TM103052EU00/CJG
Trade mark:	HOUSE HUNTERS
Mark type:	Word mark
Applicant:	Scripps Networks, LLC 9721 Sherrill Boulevard Knoxville, Tennessee 37932 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 21/04/2017 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. Descriptiveness

2. Distinctive character

3. The sign must be considered as a whole and not artificially dissected into its individual components

4. Examination of the mark in relation to the services applied for and distinction between the education and entertainment services

5. Subject matter

6. Similar marks registered by the Office

7. Similar marks registered by international office

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. Descriptiveness

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.

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 sign ‘HOUSE HUNTERS’ is not used in common parlance to designate the services applied for or their characteristic. The applicant contended that, at most, the term ‘HOUSE HUNTERS’ may contain a covert allusion to the nature of the series and therefore concluded that the sign ‘HOUSE HUNTERS’ is inherently registrable.

Office´s remarks

The Office respectfully maintains its position that the sign ‘HOUSE HUNTERS’ is not only alluding to but used in common parlance for people seeking houses or accommodation either to rent or to buy. Therefore, the Office finds that the link between the words ‘HOUSE HUNTERS’ and the services applied for 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. Distinctive character

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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 the sign ‘HOUSE HUNTERS’ is a slogan which certainly possesses distinctive character. Moreover, the applicant strenuously denied that the sign is comprised merely of a promotional formula. Finally, the applicant concluded that the sign is immediately capable of identifying the commercial origin of the services and when seen as a whole is capable of function as a distinctive trade mark.

Office´s remarks

The Office has taken note of the applicant´s interpretation of the sign as a slogan with distinctive character. However, the Office – rather than perceiving the sign as a slogan with distinctive character - finds that the term ‘HOUSE HUNTERS’ is simply a common English term, describing people who house-hunt or in other words: seek a house to buy or rent and live in as defined by the Examiner with reference to Collins Dictionary in the notice of grounds for refusal of 21/04/2017. Therefore, it will be perceived by the relevant public as merely describing the content of the services in question or rather giving information about the subject matter of the services applied for. Given the clear descriptive meaning of the sign in relation to the 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.

Consequently, taken as a whole, the sign ‘HOUSE HUNTERS’ is devoid of any distinctive character and is not capable of distinguishing the services for which registration is sought within the meaning of Art. 7(1)(b) EUTMR and Art. 7(2) EUTMR.

3. The sign must be considered as a whole and not artificially dissected into its individual components

Applicant´s remarks

The applicant contended that a trade mark composed of several elements (a compound mark) for the purposes of assessing its distinctive character, must be considered as a whole and not artificially dissected into its individual components.

Office´s comments

The Office does indeed agree with the applicant in that context. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

The Office contends that the sign ‘HOUSE HUNTERS’ indeed has been considered as a whole, particularly taken into consideration the Examiner´s dictionary reference to Collins Dictionary where the definition or the sign ‘HOUSE HUNTERS’ as a whole is respected and quoted as such.

4. Examination of the mark in relation to the services applied for and distinction between the education and entertainment services

Applicant´s remarks

The applicant contended that in relation to the services applied for, the applicant did not comprehend how the sign ‘HOUSE HUNTERS’ could be considered non-distinctive.

Moreover, the applicant failed to comprehend – on the basis of the Examiner´s dictionary-based understanding of the sign as meaning: people who are searching for houses to buy or to rent – how this understanding relates to the services applied for, namely entertainment and education services in Class 41.

Finally, with reference to decision of 20/10/2013, R203/2003-1, FREE-FLO, §13, the applicant contended that the examiner has not provided a sufficient link between the services in question and the sign ‘HOUSE HUNTER’.

Office´s remarks

Firstly, the Office does agree with the applicant that the distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29).

Secondly, the Office also agrees with the applicant that there is a difference between entertainment services and education services in Class 41. Education services in their nature provide people with knowledge and training in a wide variety of subjects, whereas the purpose of entertainment services is to catch the attention and interest of an audience and to provide pleasure and delight to the same audience.

As the Examiner has stated in the notice of grounds for refusal of 22/04/2017, the services applied for are relating to people who are searching for houses to rent or to buy. Referring to education services, an example of a relevant target public could be university students who need house hunting knowledge, training or instructions – preferably via internet - in their search for finding accommodation. As to entertainment services the relevant public would be any audience who enjoys being entertained by reality programs on TV/via Internet, etc., about house hunting, featuring all kind of people in search of accommodation to rent or to buy.

Therefore, the Office is of the opinion that a sufficient link between the services in question and the sign ‘HOUSE HUNTER’ has been established.

5. Subject matter

Applicant´s remarks

The applicant contended that a trade mark sign - exemplified such as ´PENGUIN´ - does not describe an education or entertainment program about penguins but might only indirectly allude to the content of entertainment or education services. Conclusively, the applicant submitted that this rationale should be applied to the current sign.

Office´s comments

The Office does agree with the applicant that the invented example ‘PENGUIN’ (in singular!) would avoid an objection in relation the education or entertainment services in Class 41. However, the invented example ‘PENGUINS’ (in plurall!) would NOT avoid an objection in relation to the same services as the latter sign would clearly be seen as the subject matter of the same services, namely entertainment and education services with the penguin animals as subject.

6. Similar marks registered by the Office

The applicant contended that at the time of the filing of the current sign, similar

marks of the applicant have already been registered with the Office as follows:

EUTM DENOMINATION

• 4 412 292 GHOST HUNTERS

• 15 075 112 SALVAGE HUNTERS

• 1 176 106 THE CROCODILE HUNTER

• 5 275 839 GEM HUNTER

• 10 034 163 THE BEER HUNTER

• 2 556 124 AIRPORT

• 3 455 938 EXTREME MAKEOVER

• 3 526 308 HOUSE & GARDEN

• 3 743 515 RICH GIRLS

• 7 231 269 A PLACE IN THE SUN HOME OR AWAY

• 8 291 767 TOP DOCTORS

• 9 417 478 AMERICA'S NEXT TOP MODEL

• 11 211 208 TEEN MOM

• 12 276 838 THE RESTAURANT

• 1 864 446 ENGLISH GOLF

• 1 855 998 DANCE STAR

• 10 014 306 TOP CHEF

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

In addition it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during this period. The

Court of Justice is also aware of this market and practice evolution and have stated that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

7. Similar signs registered by international office

The applicant contended that at the time of the filing of the current sign, similar

marks of the applicant have already been registered with an international office as follows:

EUTM DENOMINATION

• IR 1 231 396 PIRATES TREASURE HUNTERS

• IR 1 133 537 FAMILY HEALTH

As regards the national decisions referred to by the applicant, according to case-law: the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 16 429 813 is hereby rejected for all the services applied for.

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