Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/12/2017

Maria Alicia Izquierdo Blanco

General Salazar, 10

E-48012 Bilbao

ESPAÑA

Application No:	017187601
Your reference:	EX-3814
Trade mark:	DonateMyBirthday
Mark type:	Word mark
Applicant:	Breakthrough Innovation Limited Room 1606-7, 16/F., Kin Sang Commercial Centre, 49 King Yip Street, Kwun Tong Kowloon REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 15/09/2017 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 13/11/2017, which may be summarised as follows:

1. Consumers will focus their attention not only on the trade mark, but also on the goods and services to be purchased and the description of them. The mark ‘DonateMyBirthday’ is not descriptive of the goods and services for which registration is sought in Classes 9 and 36. It could be used for any kind of software. The applicant makes reference to the ‘BRAVO’ case 04/10/2009, C-517/99, BRAVO, EU:C:2001:510 and to the Guidelines for Examination in the Office about signs not liable to objection to argue that there is no relation between the trade mark and the goods in Class 9.

2. The trade mark is distinctive for the goods and services for which registration is sought. Its single-word composition and the use of upper and lower case letters are unusual.

3. The expression cannot be found in dictionaries. It is new, original and of fantasy.

4. Similar marks, No 1 248 054, ‘SNAPDONATE’, and No 13 422 233,

have already been registered by the EUIPO for the goods and services in Classes 9 and 36.

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).

The Office will now reply to the applicant’s arguments:

1. Consumers will focus their attention not only on the trade mark, but also on the goods and services to be purchased and the description of them. The mark ‘DonateMyBirthday’ is not descriptive of the goods and services for which registration is sought in Classes 9 and 36. It could be used for any kind of software. The applicant makes reference to the ‘BRAVO’ case 04/10/2009, C-517/99, BRAVO, EU:C:2001:510 and to the Guidelines for Examination in the Office about signs not liable to objection to argue that there is no relation between the trade mark and the goods in Class 9.

In addition, the relevant consumers are well informed and sufficiently circumspect and are aware of the reality of the market.

As shown by the Office in its communication of 15/09/2017:

Taken as a whole the sign immediately informs consumers without further reflection that the goods applied for in Class 9 (downloadable computer software applications) are software applications aimed at providing and supporting services in Class 36 (charitable fund raising), which object is the donating, giving or collecting (money, time, etc.) to the charity related to one’s birthday anniversary. A birthday person raises funds for charity, instead of for her/himself. She or he, or the people involved, donate money for a charitable purpose, instead of buying gifts, spending money on the birthday celebration.

In view of the above and as argued by the Office in its communication, the relevant consumers will immediately link the services for which registration is sought with the trade mark ‘DonateMyBirthday’.

The goods in Class 9 include all types of downloadable computer software applications for all possible purposes. Therefore, it will be easy for the relevant public to establish a direct and logical link between the trade mark and the goods and services for which registration is sought within the framework of the pertinent market.

Therefore, the Office has demonstrated that the target consumers will perceive the sign as providing information about the kind and intended purpose of the goods and services in question.

Consequently, the references to the ‘BRAVO’ case and to the Guidelines about cases where there is no relation between the sign and the subject matter or content cannot be taken into consideration.

The sign ‘DonateMyBirthday’ is therefore descriptive of the goods and services for which for registration is sought and the applicant’s argument is not valid.

2. The trade mark is distinctive for the goods and services for which registration is sought. Its single-word composition and the use of upper and lower case letters are unusual.

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).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

It should be emphasised that the precise grammatical use of the elements of a trade mark is not decisive in determining whether or not a mark is descriptive. The use of three words together, without spaces, or adding or removing a hyphen does not make a substantive difference, and the mark remains non-distinctive.

The meaning of the expression ‘DonateMyBirthday’ is clear to the relevant English-speaking public, who will immediately and without any difficulty establish a direct and specific link between the trade mark and the goods and services for which registration is sought.

Moreover, 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).

Therefore, in the Office’s view, ‘DonateMyBirthday’ is intelligible to the relevant consumer in connection with the goods and services for which registration is sought.

3. The expression cannot be found in dictionaries. It is new, original and of fantasy.

The applicant’s argument that the word combination is an invented term is not sufficient to prove that the sign is distinctive as a trade mark. English uses many words that cannot be found in dictionaries but whose meanings are clear and unambiguous, as in the present case. The novelty of a particular expression is not a factor that can, per se, overcome the absolute grounds objections raised.

English dictionaries generally provide definitions not of combined expressions, but rather of single words and common expressions and proverbs. One cannot expect to find every possible combination of words resulting in a grammatically correct expression in the dictionary. Therefore, it is not necessary for the Office to prove that the word or expression is the subject of a dictionary entry to refuse a sign. What matters is the ordinary and plain meaning of the expression, which was properly explained in the Office’s letter of 15/09/2017.

Furthermore, the fact that that the combination of words used is unusual does not mean that such a juxtaposition is a violation of English grammar rules or that an expression thus created will be not understandable by the relevant public. It must be held that an objection under Article 7(1)(b) and (c) EUTMR also applies in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered common in the commercial context at issue. This is the case of the word combination ‘DonateMyBirthday’, which would be perceived by the relevant public as an indication that the designated goods and services are related to donating, giving or collecting (money, time, etc.) to charity in relation to one’s birthday, as already proven in the Office’s communication of 15/09/2017.

Finally, the ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (05/04/2001, T‑87/00, Easybank, EU:T:2001:119, § 39).

The trade mark applied for is not sufficiently original and fanciful to prevent the relevant consumers creating a direct link, without further reflection, with the goods and services for which registration is sought. Therefore, the mark is descriptive. In consequence, the argument is rejected.

4. Similar marks, No 1 248 054, ‘SNAPDONATE’, and No 13 422 233,

have already been registered by the EUIPO for the goods and services in Classes 9 and 36.

As regards the applicant’s argument that 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).

In the present case, the trade mark ‘DonateMyBirthday’ has different verbal elements and is different from, for example, the international registration for the mark ‘SNAPDONATE’; therefore, they are not comparable, even though they are related to very similar goods and services.

In the same way, it is pointless to compare figurative marks, such as , with word marks, such as the mark at issue, as the figurative element may result in a sufficient degree of distinctiveness, quite apart from the fact that the verbal elements are different.

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 017 187 601, ‘DonateMyBirthday’, is hereby rejected for all the goods and services for which registration is sought:

Class 9 Computer software applications, downloadable.

Class 36 Charitable fund raising.

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.

Monika TOMCZYNSKA