Refusal of application for a European Union trade mark

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

Alicante, 08/09/2017

Daniel Turner

SIMPLE HISTORY LTD, International House, 776-778 Barking

Road,Barking, London, E13 9PJ

REINO UNIDO

Application No:	017080904
Your reference:
Trade mark:	SIMPLE HISTORY
Mark type:	Word mark
Applicant:	Daniel Turner Unit 11461 PO Box 6945 London London, City of W1A 6US REINO UNIDO

The Office raised an objection on 16/08/2017 pursuant to Article 7(1)(b) and (c) EUTMR 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 16/08/2017, which may be summarised as follows:

1. The mark is not descriptive, but distinctive.

2. There are no competitors offering the same goods and services.

3. The mark has been registered in the United Kingdom and the United States.

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.

Descriptiveness and distinctiveness

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).

The applicant argues that the mark ‘SIMPLE HISTORY’ should be allowed registration. The element ‘SIMPLE’ suggests the ease of understanding of the short animated history telling Youtube videos targeted children, but in combination with ‘HISTORY’ the term is distinctive.

In order to be allowed for registration a mark must not inform the relevant consumers about any characteristics of the goods and services, for which registration is sought. Contrary to the arguments of the applicant, the Office considers the mark ‘SIMPLE HISTORY’ to be descriptive of the applicant’s goods and services namely, books for children and the provision of on-line videos.

The Office considers the mark ‘SIMPLE HISTORY’ as descriptive of the goods and services, namely 1) ‘HISTORY’ refers to the subject matter of the books and videos, i.e. that it is books and videos about history and 2) ‘SIMPLE’ refers to the intended purpose, namely that the history books and videos are easy to understand, as acknowledged by the applicant.

Descriptive words or descriptive combinations must be kept free to use by all, this is because, among other reasons, that if the proprietor of a trade mark obtains a registration of its trade mark, it will have an exclusive right to use this trade mark for all goods and services falling within the terms applied for, and may hinder others from referring to their product(s) as ‘simple history’.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates 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, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347, § 21).

It is the Offices opinion that relevant consumers would not perceive the expression as more than merely the combination of the two descriptive words ‘SIMPLE HISTORY’, in other words the relevant consumers would not perceive the combination fanciful or as meaning something else.

As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The Office, therefore, maintains that the mark ‘SIMPLE HISTORY’ is descriptive and devoid of distinctive character for the goods for which registration is sought.

Previous national registrations

As regards the national decisions referred to by the applicant (only registration number of UK registration provided by the applicant), according to case-law:

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17  080 904 is hereby rejected for all the goods and services claimed.

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