Refusal of application for a European Union trade mark

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

Alicante, 08/08/2017

EDWIN COE LLP

2 Stone Buildings

Lincoln's Inn

London WC2A 3TH

REINO UNIDO

Application No:	016516321
Your reference:	INS.25.2/EU16049/MAR
Trade mark:	CHARTERED TRADE MARK ATTORNEY
Mark type:	Word mark
Applicant:	The Chartered Institute of Trade Mark Attorneys 5th Floor, Outer Temple, 222-225 Strand London WC2R 1BA REINO UNIDO

The Office raised an objection on 13/04/2017 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 03/05/2017, which may be summarised as follows:

1. The term “chartered” can only be used by a very select number of companies in the UK that hold a Royal Charter. A copy of the Royal Charter is enclosed. The institute was founded in 1934 but only got the chartered status in 2016.

2. The application was accepted by the UKPO in class 42.

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 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).

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).

As previously stated, the expression Chartered Trade Mark Attorneys indicates to the consumer that the services in question are produced and/or provided by, or otherwise related to trade mark attorneys who are acknowledged by the institute of chartered trade mark attorneys this applies to all the services claimed in class 45.

In order to come to the finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark indicates to the consumer a desirable feature of the services which, whilst not specific, comes from information designed to promote or advertise which the relevant public will perceive first and foremost as such rather than as an indication of the commercial origin of the services (Judgment of 30 June 2004, Case T-281/02, Norma Lebensmittelfilialbetrieb GmbH & Co. KG v OHIM (“Mehr für Ihr Geld”), ECR II-1915, paragraph 31).

In the present case the mark merely informs the public that the goods and services are connected to competent efficient trade mark attorneys who are members of a chartered organisation. However, the mark does not designate a single source for the goods and services at issue. It incorporates a laudatory promotional statement in that it refers to competent efficient trade mark attorneys. The mark does not convey any trade mark message and cannot serve as a badge of origin.

The fact that the term “chartered “ can only be used by a very small number of companies in the UK does not render the mark distinctive. See in this regard thefollowing Board of Appeal Decisions R0822/2008-5 CHARTERED DIRECTOR, R0229/2006-4 CHARTERED MANAGEMENT ACCOUNTANT and R0099/2008-2 CHARTERED IT PROFESSIONAL.

As regards the national decision 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).

Additionally, the Office finds worthy mentioning that the UKPO accepted the application in class 42, showing also differences at classification stage.

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 16 516 321 is hereby rejected for the following services

Class 45 Professional institute services, namely, professional, legal and research services relating to industrial and intellectual property; searching services; trade mark and design filing and prosecution services; advisory, consultancy and information services in the field of industrial and intellectual property; maintenance and renewal services; trade mark and domain watch services; trade mark and design services; on-line social networking services accessible by means of downloadable mobile applications.

The application may proceed for the remaining goods and services.

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.

Agueda MAS PASTOR