Refusal of application for a European Union trade mark

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

Alicante, 24/08/2017

APPLEYARD LEES IP LLP

15 Clare Road

Halifax, West Yorkshire HX1 2HY

REINO UNIDO

Application No:	016460511
Your reference:	TEU8121TME
Trade mark:
Mark type:	Figurative mark
Applicant:	Product Focus Ltd Sheridan House, Penwood Heights, Berkshire Newbury RG20 9EP REINO UNIDO

The Office raised an objection on 25/04/2017 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 20/06/2017, which may be summarised as follows:

1. The notice of 25/04/2017 does not contain any reference to the content of the graphic part of the mark. There is only a general allegation that its elements are so minimal in nature that they do not endow the mark with any distinctiveness. The graphic elements have been misjudged.

2. There is no evidence of the mark already acting as a descriptor of the goods or services for which registration is sough, particularly training and education.

3. The combination of words ‘PRODUCT FOCUS’ and the logo/stylization is more than the sum of its parts. The meanings of the words ‘PRODUCT’ and ‘FOCUS’ within a colourful logo do not combine to produce a meaningful expression which can immediately be linked to the goods and services applied for. How can a consumer, when seeing ‘PRODUCT FOCUS’ immediately connect this to for example to CDs or training and education or instructional material?

4. The mark may at best convey generalized and vague connotations of something that focusses on products which cannot be attributed to the goods and services in question.

5. The Office did not provide reasoning nor did demonstrate at any point that ‘PRODUCT FOCUS’ has a sufficiently direct and specific relationship with any of the goods and services applied for in Classes 9, 35 and 41. The Office has allowed the field of use to influence analysis of the mark.

6. The Office stated that the goods and services applied for are mass consumption goods and services. The applicant is of the opinion that the goods and services covered by the application are rather specialized and directed to a professional public.

7. The logo is already acting as an indicator of origin. The mark has been in use for more than 10 years. Sample evidence of use of the mark confirming that the mark is already acting as a badge of origin is following:

1. Print out of power point presentation showing how the brand has developed from start, use, turnover figures and amount spent on marketing.

2. Sample invoices (customers come from Nederland, Belgium, France, Switzerland, Germany, the United Kingdom and Italy)

8. The applicant is not aware of any organization using the term ‘PRODUCT FOCUS’ descriptively to identify or describe the services for which registration is sought.

9. The applicant referred to similar registered trade marks (EUTMs and IRs).

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)(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).

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.

‘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).

1. Regarding the applicant’s first argument, the Office states that it claimed, in its notice of 25/04/2017, that the mark applied for contains certain figurative elements that are so minimal in nature that they do not endow the trade mark as a whole with any distinctive character. The Office maintains its opinion. The font that was used is a common one. The turquoise square contained in the mark is a simple geometric shape that is not able to endow the mark with distinctive character. Even a combination of white and turquoise colour is not original and would not be perceived as a badge of commercial origin. Therefore, the figurative elements contained in the mark are so minimal that they do not endow the mark with any distinctive character.

2. As regards the applicant’s second argument, the Office states, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

3. As regards the applicant’s third argument, the Office provided, in its notice of 25/04/2017, dictionary definitions of both words contained in the mark and then interpreted the mark as a whole. The Office is of the opinion that the relevant consumers will understand the meaning of the mark with no additional mental effort. Regarding the stylization of the mark the Office reiterates its response to point 1. Furthermore the Office states that the relevant consumers will not perceive the mark separately but in relation to the goods and services for which registration is sought. Therefore they will connect the mark to CDs or training and education or instructional material because they will perceive the mark in relation to these goods and will interpret it against them.

4. Regarding the applicant’s fourth argument, the Office notes that the distinctive character and descriptiveness of a mark must be assessed in relation to the goods and services applied for and in relation to the perception of the relevant public. Also the relevant consumers will perceive the mark in relation to the goods and services in question. The mark applied for is made up of two common words. The mark is a combination which has a clear meaning. In relation to the stylization of the mark the Office reiterates its response to point 1. The Office maintains its opinion that when the relevant consumers will perceive the mark in relation to the goods and services applied for they will understand that it conveys obvious and direct information that the goods and services are business services and closely related services including advertising, accounting, analysis services, retail services etc. that are related to a business model that is focused on products instead of customers and education services whose subject matter is abovementioned business model and that the goods downloadable publications, education software etc. will be used for providing abovementioned educational services.

5. As regards the applicant’s fifth argument, the Office disagrees. The Office provided, in its notice of 25/04/2017, dictionary definitions of both words contained in the mark. Then the Office examined the mark as a whole against the goods and services for which registration is sought and came to the conclusion that the relevant consumers will perceive the mark as obvious and direct information regarding the intended purpose and subject matter of the goods and services, notwithstanding certain stylised elements that are consider to be so minimal in nature that they do not endow the mark as a whole with any distinctive character. The Office considers this finding sufficient to conclude that there is sufficiently direct and specific relationship with the goods and services applied for.

6. Regarding the applicant’s sixth argument, the Office claimed, in its notice of 25/04/2017, that the goods and services for which registration is sought are everyday consumption/mass consumption goods and services or specialised goods and services and are mainly aimed at both average consumers and a professional public. The Office maintains its opinion that some of the goods and services are mass consumption goods since they are used by the general public and furthermore their relevant consumers do not need any special knowledge or background to purchase them or order them (e.g. downloadable publications; pre-recorded CDs; computer software; educational and teaching services etc.).

7. The applicant submitted sample evidence of the use of the mark. The Office states that if the applicant is of the opinion that the mark has acquired distinctive character through the use of the mark on the market it is necessary to submit sufficient amount of relevant evidence to prove this fact. However the applicant did not claim that the mark has acquired distinctive character but merely that the mark is able to work as a trade mark because the mark has been in use for more than 10 years. Regarding the documents submitted by the applicant the Office claims that they show that the applicant is using the mark, however, this finding is not sufficient to alter the Office’s opinion that the mark is descriptive and devoid of any distinctive character. The applicant did not claim that the mark has acquired distinctive character through the use on the market. However the Office states that even if the applicant would claims it, the documents submitted would not be sufficient to come to this conclusion.

8. As regards the applicant’s argument that no other organization make use of the same combination descriptively, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

9. Regarding the applicant’s final argument, the Office states that 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).

‘It is clear from the case-law of the Court of Justice 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).

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 16 460 511 is hereby rejected for all the goods and 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.

Klara BOUSKOVA