Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/11/2017

A2 ESTUDIO LEGAL

Calle Hermosilla, 59 Bajo izquierda

E-28001 Madrid

ESPAÑA

Application No:	016840721
Your reference:	4480
Trade mark:	VILLA CLUB
Mark type:	Figurative mark
Applicant:	SPAIN SELECT PROPERTY MANAGEMENT, SL. Francisco de Goya, 6 Bajo 1 E-28016 Madrid ESPAÑA

The Office raised an objection on 17/07/2017 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 15/09/2017, which may be summarised as follows.

1. The mark applied for, , is composed by two words which, combined, form a new concept which is ingenious and unconventional, rendering the mark distinctive.

The targeted consumer for the services claimed is a qualified professional, not a general public, whose level of attention will be high.

There is no direct connection between the mark applied for and the services claimed, of which the mark in question is only evocative.

2. The Office has in the past accepted other similarly denominated applicant’s trademarks which could represent a “family trademark. The search for the term “CLUB” among registered trademarks gives more than 2200 search results in the EUIPO eSearch tool which shows that the term “CLUB” is registrable in the EUIPO without describing any activity or service. Moreover, the applicant in its arguments relies heavily on the previous case-law.

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.

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).

Furthermore, ‘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 regards trade marks composed of words, such as the sign here at issue, descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole which they form (e.g. 12/02/2004, C-265/00, ‘Biomild’, EU:C:2004:87).

As a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the complete word is more than the sum of its parts (‘Biomild’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (e.g. 19/05/2010, T-108/09, ‘Memory’, EU:T:2010:213, § 35).

A word mark which is descriptive of characteristics of the 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.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (e.g. 16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (see, to that effect, judgment ‘Biomild’).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant argues that the mark applied for, , is composed by two words which, combined, form a new concept which is ingenious and unconventional, rendering the mark distinctive.

The Office has noted the applicant’s comments. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

Moreover, the Office asserts that 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).

In the case at hand, the sign applied for consists of the combination of two readily identifiable and ordinary words from the English language, namely the word ‘VILLA’ which informs the consumer that the services at issue relate to large and usually luxurious country residences, and the word ‘CLUB’ which refers to a group or association of people with common aims or interests. There is nothing unusual about the structure of that expression. The words are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer, being the English-language speaking public, will not perceive it as unusual but rather as a meaningful expression.

The applicant does not argue that these two terms may be descriptive but argues that, in their combination, they form a new concept which is ingenious and unconventional.

However, the arguments of the applicant must still be dismissed. The Office must reiterate that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Moreover, even though the sign applied for contains certain figurative elements that confer upon it a degree of stylisation, consisting of the use of the colour green, with the word ‘CLUB’ written in bold, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Therefore, the sign cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

Therefore, as in its initial notification of 17/07/2017, the Office asserts its opinion that, taken as a whole, the words ‘VILLA CLUB’ immediately inform consumers without further reflection that the services at issue are rendered for and/or on behalf of the owners of large and usually luxurious country residences for their common aims or interests, for example in relation to renting of their temporarily available private villas on their behalf. As such, the expression ‘VILLA CLUB’ conveys obvious and direct information regarding the kind and subject matter of the services in question.

As regards the applicant’s argument that the targeted consumer for the services claimed is a qualified professional, not a general public, whose level of attention will be high, the Office has noted the applicant’s submissions.

However, the Office considers that the high level of attention alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods or in relation to services they are confronted with and will perceive the sign in question, , only as a meaningful term referring to a group or association of the owners of large and usually luxurious country residences (villas) with common aims or interests.

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, EU:C:2012:460, § 48).

As mentioned above, although the sign for which protection is sought contains certain stylised elements that confer upon it a degree of stylisation, the nature of these elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the services for which protection is sought.

Further in its submissions, the applicant argues that there is no direct connection between the mark applied for and the services claimed, of which the mark in question is only evocative.

The Office has noted the applicant’s comments. However, with regard to applicant’s arguments that there is no direct link between the contested goods and services and the mark applied for, it must also be advised that ‘It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 102).

In addition, the Office asserts that for a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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, emphasis added).

Moreover, the Office has to reiterate that according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21). This, as stated in the Office’s arguments above, is clearly applicable to the present case.

It is, therefore, the Office’s view that the expression ‘VILLA CLUB’ is readily intelligible when taken in conjunction with the services applied for and viewed by the relevant consumer. Given that the mark has a clear descriptive meaning in relation to the services claimed, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

The Office has in the past accepted other similarly denominated applicant’s trademarks which could represent a “family trademark”. Furthermore, the search for the term ‘CLUB’ among registered trademarks gives more than 2200 search results in the EUIPO eSearch tool which shows that the term ‘CLUB’ is registrable in the EUIPO without describing any activity or service. Overall, the applicant in its arguments relies heavily on the previous case-law.

The Office has noted applicant’s comments. However, the above findings do not contradict the relevant case-law on which the applicant relies. Neither can the applicant successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances which led to the acceptance of these marks cannot be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

As regards the numerous but only in general referred-to trademarks containing the word ‘CLUB’ and registered by the Office, it seems that their vast majority apply to different concepts and/or to different goods and services. As such, they have little or nothing in common with the application mark and have been found to be distinctive in their own right.

Concerning other similarly denominated trademarks of the applicant, namely the EUTM registration No. 016840738 , No. 014584445 and No. 005455829 ‘SPAIN SELECT’, which, together with the sign at hand could represent a “family trademark”, the Office considers the applicant’s comments as rather irrelevant. The case-law in this respect relates to Article 8 EUTMR and in particular the likelihood of confusion, and not to Article 7 EUTMR. Moreover, even if an applicant were to prove the existence of a ‘family’ of marks, distinctive character falls to be determined by the perception of the relevant public in relation to the sign at hand in conjunction with the relevant goods and services, that distinctive character being either intrinsic or as a result of the use which has been made of the said sign (and not of others) in accordance with Article 7(3) EUTMR, which, as the Office notes has not been provided, nor claimed by the applicant.

Furthermore, the respective applicant’s trademarks cited all contain different verbal and/or figurative elements that affect the overall impression created by the sign; therefore, they are not comparable, for the purposes of examination, to the subject mark.

More specifically, as regards the EUTM registration No. 016840738 , the Office does not consider that it should follow this example, for the reasons stated above. Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. 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 (‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210). Accordingly, if in previous cases the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

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 derives from all the foregoing that the applicant has not succeeded in convincing the Office that the mark applied for. , will be perceived by the consumers as pointing to the commercial origin of the services claimed. For the reasons mentioned above, the sign at hand does not possess any actual distinctive character for the services claimed, pursuant to Article 7(1)(b) and (c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the services of the applicant from those of other undertakings.

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 16 840 721 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.

Robert KLECUN