Refusal of application for a European Union trade mark

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

Alicante, 26/07/2017

WALKER MORRIS LLP

Kings Court 12 King Street

Leeds, West Yorkshire LS1 2HL

REINO UNIDO

Application No:	016526121
Your reference:	GUO.6-404
Trade mark:	GLH GREAT LONDON HOSPITALITY
Mark type:	Word mark
Applicant:	GLH IP Holdings Limited 2nd Floor, Stephenson House, 75 Hampstead Road London NW1 2PL REINO UNIDO

The Office raised an objection on 05/04/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 05/06/2017, which may be summarised as follows:

1. The mark is distinctive.

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.

Distinctiveness

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

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).

The applicant agrees with the Office that the services are targeting both the average and the professional consumers. Contrary to the Office, the applicant considers the mark to be distinctive and able to act as an identifier of commercial origin in the eyes of the consumers, who will not perceive it as a promotional laudatory message.

‘GLH’, which the Office claims is an abbreviation of ‘Great London Hospitality’, is derived from the parent company name ‘Guoco Leisure’ and extensively used by the applicant, who is part of the ‘GLH Hotels Group’ – the largest owner-operator hotel company in London. The Office has previously registered the applicant’s figurative mark EUTM 11890373 ‘GLH’ with minimal stylisation, for similar services. Furthermore, the Office has registered the applicant’s word mark - EUTM 016526154 ‘GLH WE'VE GOT LONDON COVERED’ for identical services. The applicant argues that this clearly shows that ‘GLH’ relates to the applicant’s company name and that it has distinctive character.

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’s assessment is based on the impression created by the mark as a whole and not if the mark’s individual elements standing alone are distinctive.

The fact that the applicant’s other marks consisting of the element ‘GLH’ alone and ‘GLH’ as part of the mark ‘GLH WE’RE GOT LONDON COVERED’ has been found to be distinctive, and allowed for registration, does not imply that the mark in question is distinctive. Standing alone ‘GLH’ does not have any meaning in relation to the services, for which registration was sought, neither does it have a meaning in relation to ‘WE’RE GOT LONDON COVERED’. On the contrary, in the present case, ‘GLH’ would be perceived as an acronym of the non-distinctive word combination ‘GREAT LONDON HOSPITALITY’, as the two elements clarifies each other. In this context, the relevant consumer would, therefore, not immediately perceive ‘GLH’ as a reference to the ‘GLH Hotels Group’ and the commercial origin of the services in question.

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).

Furthermore, abbreviations followed by words clarifying its meaning are to be considered non-distinctive; this has also been confirmed by the Board of Appeal in a similar case:

Consequently, the applicant’s arguments in relation to the possible meanings of the acronym ‘ABA’, taken separately, are irrelevant. The trade mark applied for consists of the acronym ‘ABA’, together with the word ‘ENGLISH’ and the expression ‘AMERICAN & BRITISH ACADEMY’. The whole has the shape of a seal or badge. It is unlikely that, on seeing the letters ‘ABA’ beneath the expression ‘AMERICAN & BRITISH ACADEMY’, the consumer will perceive these letters as a reference to ‘Awfully Big Adventure’ or ‘American Bar Association’. On seeing ‘ABA’ in the trade mark as a whole, the consumer will tend to interpret ‘ABA’ as the acronym of ‘AMERICAN AND BRITISH ACADEMY’.

(14/012/2016, R 464/2016-5, ‘American & British Academy ABA ENGLISH’, § 19).

In addition, it is not sufficient to be allowed registration that the applicant have been using the abbreviation ‘GLH’ extensively, the relevant public should also perceive the mark as a whole ‘GLH GREAT LONDON HOSPITALITY’ as an indication of commercial origin of the applicant’s services. This could be shown by providing proof of acquired distinctiveness through use, in other words, evidence showing that the applicant has used the mark so intensively or for such a long period that the relevant public would perceive it as a reference to the commercial origin of the applicant’s services. This has not been done.

The Office, therefore, maintains that the mark ‘GLH GREAT LONDON HOSPITALITY’ would be perceived by the relevant consumers as a promotional laudatory message, indicating that the applicant’s services make the guests and visitors fell welcome in London, where ‘GLH’ merely would be perceived as an abbreviation of the other word elements. In other words, the Office maintains that the mark is devoid of distinctive character.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 526 121 is hereby rejected for all the for the following services:

Class 39 Provision and arrangement of travel for package holidays, weekend breaks, tours, excursions and holidays; itinerary travel advice services; baggage handling; porterage; storage of luggage; provision of advice and information in relation to the aforesaid.

Class 41 Live entertainment and musical entertainment services; nightclub services; health and leisure club services; provision of sport, leisure and recreational facilities; information services relating to sport, leisure and recreation; arranging and conducting of functions, conferences, conventions, exhibitions, seminars and meetings; theatre, opera and concert ticket reservations; organisation and provision of training facilities for sales and hotel staff; provision of advice and information relating to the aforesaid.

Class 43 Rental of temporary accommodation; reservations (temporary accommodation); hotel, motel, café, restaurant, banqueting and catering services; booking services for hotels; booking of hotel accommodation and temporary accommodation; reservation services for booking meals; resort and lodging services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings; provision of information relating to hotels, temporary and holiday accommodation; provision of advice and information relating to the aforesaid.

The application may proceed for the remaining services, namely:

Class 41 Motion picture and video rental services; rental of radio and television receiving sets; provision of advice and information relating to the aforesaid.

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.

Anja Pernille LIGUNA