Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 01/02/2018

DURÁN - CORRETJER, S.L.P.

Còrsega, 329 (Pº de Gracia/Diagonal)

E-08037 Barcelona

ESPAÑA

Application No:	016543712
Your reference:
Trade mark:	INTELLIGENT REAL ESTATE SOLUTIONS
Mark type:	Word mark
Applicant:	AVISON YOUNG COMMERCIAL REAL ESTATE (ONTARIO) INC. SUITE 400, 18 YORK STREET TORONTO M5J2T8 CANADÁ

The Office raised an objection on 12/05/2017 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 30/08/2017, which may be summarised as follows.

1. The Office has not proven descriptiveness or the lack of distinctive character of the sign but has limited the objection to a personal opinion which is not founded on any objective facts.

2. A number of similar registrations and applications before the EUIPO should be taken into account as they are signs that contain the word element ‘INTELLIGENT’ and additional word elements that could have been objected to on the same ground.

3. The sign applied for is capable of being a valid trade mark because it does not have a descriptive meaning and has sufficient distinctive character. The argument that the relevant consumer will understand the words as a meaningful expression is unfounded.

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 maintain the objection.

General remarks on Article 7(1)(c) EUTMR

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).

Specific remarks concerning the observations of the applicant

1. The Office has not proven descriptiveness or the lack of distinctive character of the sign but has limited the objection to a personal opinion which is not founded on any objective facts.

A sign must be refused as descriptive if it has a meaning which is immediately perceived by the relevant public as providing information about the goods and services applied for. This is the case where the sign provides information about, among other things, the quantity, quality, characteristics, purpose, kind and/or size of the goods or services. The relationship between the term and the goods and services must be sufficiently direct and specific (judgments of 20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (judgment of 26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35). If a mark is descriptive, it is also non-distinctive.

Article 7(1)(c) EUTMR does not apply to those terms that are only suggestive or allusive as regards certain characteristics of the goods and/or services. Sometimes this is also referred to as vague or indirect references to the goods and/or services (judgment 31/01/2001, T-135/99, Cine Action, EU:T:2001:30, § 29).

The public interest underlying Article 7(1)(c) EUTMR is that exclusive rights should not exist for purely descriptive terms that other traders might wish to use as well. However, it is not necessary for the Office to show that there is already a descriptive use by the applicant or its competitors. Consequently, the number of competitors that could be affected is totally irrelevant. Therefore, if a word is descriptive in its ordinary and plain meaning, this ground for refusal cannot be overcome by showing that the applicant is the only person who produces, or is capable of producing, the goods in question.

In the case of the subject mark it is the conclusion of the Office that the mark is more descriptive than allusive and as such fails under Article 7(1)(c) EUTMR.

The core of the mark is the term ‘REAL ESTATE’, an easily understood noun defined as ‘property in building and land’ (https://www.merriam-webster.com/dictionary/real%20estate ). This directly references the claimed services which include such terms as ‘market research in the field of real estate’ (Class 35), ‘real estate services’ (Class 36) and ‘management of real estate projects’ (Class 37).

The mark concludes with the noun ‘SOLUTIONS’, plural of ‘solution’, with the definition ‘an action or process of solving a problem’ (https://www.merriam-webster.com/dictionary/solutions ). Following ‘REAL ESTATE’, this indicates an action or process of solving a problem in relation to property in building and land. It is clear from this combination that the aforementioned services would be offering solutions to the consumer in respect of real estate issues.

The word ‘INTELLIGENT’ forms the first part of the mark and is defined as ‘having or indicating a high or satisfactory degree of intelligence and mental capacity; revealing or reflecting good judgment or sound thought’ (https://www.merriam-webster.com/dictionary/intelligent ). This adjective comes to bear on the following combination ‘REAL ESTATE SOLUTIONS’, the message from which is defined above. Therefore, adding ‘INTELLIGENT’ to open and complete the mark ‘INTELLIGENT REAL ESTATE SOLUTIONS’, it frames the whole with a characteristic of quality; solutions to real estate issues delivered with a high degree of intelligence and mental capacity and revealing good judgement and sound thought.

The combination of the four words in the mark serves to compress and deliver this message in a way that is clear and unambiguous to the consumer, who will understand the meaning with very little intellectual effort. In relation to real estate, the mark indicates directly the kind of services offered and the quality of how those services are delivered; both characteristics that are clear from the mark directly and specifically. Therefore, under the guidelines given above, the mark must be refused.

2. A number of similar registrations and applications before the EUIPO should be taken into account as they are signs that contain the word element ‘INTELLIGENT’ and additional word elements that could have been objected to on the same ground.

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).

‘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).

3. The sign applied for is capable of being a valid trade mark because it does not have a descriptive meaning and has sufficient distinctive character. The argument that the relevant consumer will understand the words as a meaningful expression is unfounded.

The Office asserts that the sign applied for is descriptive for the services as outlined in point 1 above. It follows then that, as laid down in the trade mark guidelines, it also must be deemed as non-distinctive.

The relevant consumer being well-informed, circumspect and observant will require very little effort to understand the message conveyed by the sign. They will know exactly what real estate is and the addition of ‘INTELLIGENT’ and ‘SOLUTIONS’ to the beginning and end of the sign respectively clearly indicates the characteristics of the services in terms of kind and quality. As such, they will not regard the sign as indicating any kind of trade mark significance.

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 016543712 is hereby rejected for all the services claimed.

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.

Lance EGGLETON