Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2017

BRABNERS LLP

Horton House, Exchange Flags

Liverpool, Merseyside L2 3YL

REINO UNIDO

Application No:	016521221
Your reference:	CBE/EJM/40281.69
Trade mark:	Rentalcars.com
Mark type:	Figurative mark
Applicant:	TRAVELJIGSAW LIMITED 100 New Bridge Street London EC4V 6JA UNITED KINGDOM

The Office raised an objection on 10/04/2017 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 devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 08/09/2017, which may be summarised as follows:

1. The applicant does not agree with the statement, that the sign is directly descriptive for the services in question.

2. Further, the applicant explains that the mark should be considered as a whole than the sum of its parts.

3. The applicant argues that although the ‘.com’ component may not have distinctiveness per se, the suffix does lend distinctiveness to the trade mark as a whole.

4. Furthermore, the applicant explains that the figurative elements are not descriptive in any manner.

5. Furthermore, the applicant refers to previous decisions of the Office.

Pursuant to Article 94 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 waive the objection for the following services:

Class 39 Ticket and booking services for travel; arranging and/or booking of holidays, travel, tours, cruises, including arranging and/or booking of holidays, travel, tours, cruises via the Internet; arranging and/or booking of seats for travel, including arranging and/or booking of seats for travel via the Internet; travel agency services, including travel agency services via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services.

The objection is maintained for the remaining services.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C-329/02 P, SAT.2, EU:C: 2004:532, § 25).

Under Article 7(1)(c) EUTMR, ‘trademarks 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 trademarks 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).

The mark applied for, ─ ‘Rentalcars’, ─ consists of two words, ‘Rental’ and ‘cars’, which are simply joined together, rather than forming a neologism. A neologism is a new word or expression in a language, or a new meaning for an existing word or expression (information extracted from Collins English Dictionary on 03/03/2017 at https://www.collinsdictionary.com/dictionary/english/neologism). As such, it must create ‘an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts’ (12/01/2005, T-367/02 & T-369/02, SnPUR & SnMIX, EU:T:2005:3, § 32), which is not the case in the present application, since the semantic meaning of the mark ‘Rentalcars’ is nothing more than the mere combination of the meanings of the words ‘Rental’ and ‘cars’, namely ‘a car that can be hired for a short period of time’.

The applicant argues that the mark ‘Rentalcars’ cannot be descriptive of the services to which the objection was raised, which are ‘all in the nature of hire of cars’. In response to this argument, the Office, first, reiterates that the mark was found descriptive for transport services, travel services, arranging holiday transport car hire services, vehicle rental and leasing services, rental and leasing of passenger vehicles etc., including associated information services. All these services can include car rental.

What must be borne in mind by the applicant, however, is that top-level domain endings, such as ‘.com’, only indicate the place where information can be found on the internet, or where goods such as books, cosmetics, items of clothing, etc., can be purchased or viewed online.

The applicant argues that the fanciful writing adds further originality to the sign as a whole. It should be noted that slightly stylised script are unable to convey any message that can be remembered by consumers and will not be seen by them as having trade mark significance. The writing does not possess any feature regarding the way in which it is combined that allows the mark to fulfil its essential function in relation to the services for which protection is sought.

Therefore, the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

The combination of both words as well as the figurative elements of the sign (the type of writing), when applied to the services objected to will be seen by the English-speaking consumers as a meaningful, descriptive indication of the kind and intended purpose of rendering of the services in question.

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 registration 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) and Article 7(2) EUTMR, the application for European Union trade mark No 16 521 221 is hereby rejected for the following services:

Class 39 Transport services; travel services; arranging holiday transport car hire services; vehicle rental and leasing services; rental and leasing of passenger vehicles, commercial and industrial vehicles; rental and leasing of cars, bicycles, motorcycles, camping cars, trucks, lorries, vans, coaches, buses, caravans; rental and leasing of vehicle equipment and apparatus; rental and leasing of vehicle accessories, including, luggage carriers, car seats, child safety seats, vehicle trailers, luggage racks, bike racks; arranging for transportation of persons; travel arrangement services; travel reservation services; electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental; arranging and/or booking of vehicle hire, including of arranging and/or booking of vehicle hire via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services.

The application may proceed for the remaining 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.

Zuzana KAUFMANNOVA