Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 21/11/2017

HGF LIMITED

1 City Walk

Leeds, Leeds LS11 9DX

UNITED KINGDOM

Application No:	16 825 201
Your reference:	DPO/T244681EP
Trade mark:	TrueCourse
Mark type:	Word mark
Applicant:	Marine Canada Acquisition Inc. 3831 No. 6 Road Richmond, British Columbia V6V 1P6 CANADA

The Office raised an objection on 13/06/2017, 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 in relation to all the goods for which registration is sought, for the reasons set out in the attached notice of provisional refusal.

The applicant submitted its observations within the extended time limit, on 10/10/2017, which may be summarised as follows:

1. The mark applied for, ‑ ‘TrueCourse’ ‑, is not descriptive, because there is not a sufficiently direct and specific relationship between the mark and the goods for which registration is sought, to enable the relevant public to perceive the mark, immediately and without further thought, as a mere description of the type or subject matter of the goods in question.

2. The word ‘TrueCourse’ does not exist in English, it is not in common use in English or in the marine vessels industry and it has no dictionary definition; consequently, it has no meaning in relation to the goods for which registration is sought.

3. The mark is composed of the words ‘true’ and ‘course’, which have multiple meanings (Exhibits 1 and 2).

4. The mark requires a cognitive process on the part of the relevant public.

5. Article 7(1)(c) EUTMR does not apply to terms that are only suggestive or allusive of certain characteristics of the goods and services in question.

6. The words ‘true’ and ‘course’ are combined in an unusual way, which is itself enough for the consumer to memorise and recognise the mark as a badge of commercial origin.

7. Registration of the mark is sought for highly specialised goods and therefore an extremely high degree of attention would be paid by the consumer when considering the goods. This will result in the consumer being able to easily and readily identify ‘TrueCourse’ as a trade mark and thus as an indicator of origin.

8. The Office has already accepted for registration similar trade marks for goods that are identical or highly similar to the applicant’s goods, and a selection of those trade marks are listed in Exhibit 3.

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.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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).

It is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32.)

A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

The Office has re-considered the mark applied for in accordance with the abovementioned case-law, and, after giving due consideration to all the applicant’s arguments, maintains that it is not capable of functioning as a badge of commercial origin for the goods for which registration is sought. Accordingly, the Office reiterates that the mark conveys the obvious and direct information that the goods in question, namely controls for marine vessels; graphical user interfaces for marine vessels, allow a vehicle designed for transportation on water, such as a ship, boat or submarine, to exactly or accurately plot / flow along the route it is travelling.

Regarding the applicant’s first argument, it suffices to reiterate that the mark was is descriptive of the quality of the goods in question, as expressly stated in the notice of provisional refusal, and not of their type or subject matter.

In response to the applicant’s second argument, the Office reiterates that the mark consists of two words, ‘true’ and ‘course’, both of which are found in the dictionary, as demonstrated in the notice of provisional refusal. These words are simply joined together with the result that the semantic meaning of the mark is the mere combination of the meanings lent by the individual composite words, that is, the true, exact, or accurate route along which a marine vessel is travelling.

Regarding the use of the expression ‘True Course’ in the sector of marine vessels, it is submitted, first, that ‘marine vessel’ is ‘a nautical term for all kinds of craft designed for transportation on water, such as ships, boats or submarines’ (information extracted from Wikipedia at https://en.wikipedia.org/wiki/Watercraft , and from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/vessel ; and https://www.collinsdictionary.com/dictionary/english/marine on 20/11/2017).

Second, a ‘true course’ is a basic term in navigation and marine traffic, which is, as such, well- defined and described in details in dictionaries, including Dictionary.com which provides the following additional information about the expression:

TRUE COURSE noun, Navigation.

‘a course whose bearing is given relative to the geographical meridian’

‘Remember, however, that this will be the true course to sail.’

(information extracted from Dictionary.com on 20/11/2017 at http://www.dictionary.com/browse/true-course )

Additional information on the meaning of ‘true course', namely on how a ship's true course is determined can also be found in Encyclopedia Titanica:

‘A ship's true course is determined by the direction from the ship to the geographic north pole (also called true north). Navigation charts and the compass are labeled with true north, but setting a ship's course is not merely a matter of steering in relation to the north pole’ (information extracted from Encyclopedia Titanica on 20/11/2017 at https://www.encyclopedia-titanica.org/true-course.html ).

Concerning the applicant’s third argument, it suffices to state that a mark must be refused registration under Article 7(1)(c) EUTMR, if at least one of its possible meanings designates a characteristic of the goods and services concerned. In the present case, the Office found that the mark, taken as a whole, has a semantic meaning that clearly denotes that the goods in question allow a vehicle designed for transport on water, such as a ship, boat or submarine, to exactly or accurately plot / flow along the route it is travelling.

Contrary to the applicant’s fourth argument, the Office maintains that the message conveyed by the slogan ‘TrueCourse’ is, per se, simple and clear and, therefore, easily understandable. As such, it does not require any effort of interpretation on the part of the potential consumers of the goods for which registration is sought, or set off a cognitive process in the mind of those consumers.

The applicant is correct in stating that Article 7(1)(c) EUTMR does not apply to marks that are only suggestive or allusive. However, the mark applied for, ‘TrueCourse’, was found to be exclusively descriptive of the goods in question, rather than suggestive or allusive.

While the applicant argues that the mark ‘TrueCourse’ is distinctive on account of the unusual juxtaposition of the words, the Office does not find the mark to be anything other than an ordinary combination of two words, namely of the adjective ‘true’ and the noun ‘course’, which are simply joined together. In other words, the Office does not consider the lack of space between the words in question sufficient to results in the mark being perceived as unusual or as a badge of commercial origin.

The applicant is also correct in stating that the goods for which registration is sought are highly specialised and that the degree of attention of the relevant public, will therefore be higher than average. What must be borne in mind by the applicant, however, is that this is not sufficient to make a descriptive mark distinctive. As the Court of Justice has stated ‘it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign.

Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist’ (12/07/2012, C‑311/11 P, Smart Technologies, § 48).

The applicant points out that the Office has already registered similar trade marks, and refers specifically to the following registrations: ‘TRUESIGHT’ (EUTM No 13 081 054, 14/07/2014), ‘TRUESENSE’ (EUTM No 15 702 351, 28/07/2016), ‘TrueTemp’ (EUTM No 728 345, 22/01/1998), ‘TRUECRAFT’ (EUTM No 6 470 777, 15/11/2007) ‘TRUE MOTION’ (EUTM No 15 090 632), ‘DIGICOURSE’ (EUTM No 2 804 458, 22/07/2002), ‘TRUETUNE’ (EUTM No 16 018 335, 09/11/2016), ‘TRUE LINK’ (EUTM No148098, 01/04/1996) and ‘TRUEDOC’ (EUTM No 317 578, 01/08/1996).

The Office does not find any of the registrations cited persuasive, for the reasons briefly indicated below:

It is settled case‑law that 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 that regulation, as interpreted by the Union judicature, and not on the basis of a previous practice of the Office (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 09/10/2002, T-36/01, Glaverbel, EU:T:2002:245, § 35).

In addition, it is also well established that descriptiveness and non-distinctiveness under Article 7(1)(b) and (c) EUTMR must be assessed in the light of the circumstances of each case. In this regard, the Office points out that the trade marks to which the applicant refers have quite different semantic meanings from the mark ‘TrueCourse’ and, taken as a whole, convey concepts quite different from that conveyed by the applicant’s mark. Furthermore, none of those trade marks is registered for goods that are identical to the goods for which registration of the mark at issue is sought. Therefore, the considerations under absolute grounds in the cases cited were different from those in the present application.

Furthermore, a trade mark composed of several elements must, for the purpose of assessing its distinctive character, be considered as a whole (15/09/2005, T‑320/03, Live richly, EU:T:2005:325 § 81; 09/07/2003, T‑234/01, Orange und Grau, EU:T:2003:202, § 32; 20/11/2002, T‑79/01 & T‑86/01, Kit Pro / Kit Super Pro, EU:T:2002:279, § 22). Accordingly, previously registered trade marks that contain, inter alia, a part of the mark applied for, namely the word ‘true’, or the word ‘course’, cannot be considered relevant.

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 825 201 is hereby refused for all the goods for which registration is sought.

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. 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.

Mirjana PUSKARIC