Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/05/2018

REED SMITH LLP

Von-der-Tann-Straße 2

D-80539 München

ALEMANIA

Application No:	017414301
Your reference:
Trade mark:	THE MARKETING STORE
Mark type:	Word mark
Applicant:	The Marketing Store Worldwide L.P. Suite 1400, 55 West Monroe Street Chicago Illinois 60603 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 16/11/2017 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.

Following an extension of two months, the applicant submitted its observations on 21/03/2018, which may be summarised as follows:

1. The distinctiveness of a trade mark composed of three words must be assessed with respect to the trade mark as a whole. The mere fact that each word separately is devoid of distinctive character does not mean that the combination of words is not distinctive. ‘Marketing’ and ‘store’ have different meanings; therefore, the public will understand ‘THE MARKETING STORE’ as a creative play on words, which creates an overall impression of a distinct, identifiable meaning. The sign ‘THE MARKETING STORE’, taken as a whole, does not immediately inform the relevant public about the services in Class 35 for which registration is sought or their characteristics.

2. A minimal degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR.

3. The Office has registered EUTM No 17 414 269 ‘THE MARKETING STORE WORLDWIDE’ for the same services in Class 35 for the same applicant.

4. ‘THE MARKETING STORE’ has been registered in various countries, such as Mexico, the United States of America and the UK (an EU Member State).

5. The Office has registered a significant number of trade marks that include the word ‘marketing’ or ‘store’ for services in Class 35, such as EUTMs No 16 988 784 ‘MARKETING MERENDA’, No 15 764 087 ‘HEADZ MARKETING PARTNER’, No 15 989 197 ‘CITADEL ENERGY MARKETING’, No 17 382 961 ‘a2 Store’, No 17 374 571 ‘BERGGREN STORE’ and No 17 302 811 ‘HOME STORE AND MORE’.

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 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 EUTMR states that trade marks that consist exclusively of ‘descriptive’ signs and indications shall not be registered. This does not mean that the mark must consist of only elements that designate a characteristic of the goods/services. Rather, this means that the mark as a whole must be regarded as descriptive. This can still be the case when the mark includes other matter, the influence of which is lost when the mark is considered as a whole.

1. 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).

The contested sign is the word mark ‘THE MARKETING STORE’, which the relevant consumers will perceive as consisting of three elements, namely ‘THE’, ‘MARKETING’, meaning the action or business of promoting and selling products or services, including market research and advertising (information extracted from Oxford Living Dictionaries on 16/11/2017 at https://en.oxforddictionaries.com/definition/marketing), and ‘STORE’, meaning an establishment for the retail sale of goods and services (information extracted from Collins Dictionary on 16/11/2017 at https://www.collinsdictionary.com/dictionary/english/store). Therefore, the relevant English-speaking consumer will understand the sign as having the following meaning, as stated in the notification of 16/11/2017: a business aimed at promoting and selling products or services, including market research and advertising. The sign ‘THE MARKETING STORE’ indicates that the business is a company or agency (‘store’) specialised in marketing services (i.e. sales promotion or building brands). Therefore, the meaning of the mark will be clear to all English-speaking consumers (average and specialist), who will immediately and without any difficulty establish a direct and specific link between the mark and the characteristics of the services to which an objection has been raised and for which registration is sought.

In this respect, the question of whether or not any of the grounds for refusal set out in Article 7(1) EUTMR apply to the mark must be assessed not in the abstract but by reference, first, to those goods or services, and, second, by reference to the perception of the trade mark on the part of the average consumer of the goods or services in question, who is reasonably well informed and reasonably observant and circumspect, taking account of all the relevant facts and circumstances.

The applicant states that ‘marketing’ and ‘store’ have several meanings and the consumer will understand the sign ‘THE MARKETING STORE’ as a creative play on words; however, 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). Therefore, the sign applied for does not constitute a play on words but is an ordinary sign that lacks distinctiveness. In the expression ‘THE MARKETING STORE’ there is no creative play on words; the relevant consumer will perceive the sign as a grammatically and syntactically correct combination of the words ‘THE’, ‘MARKETING’ and ‘STORE’ with the understandable meaning stated above.

For a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 40). Given that the mark has a clear descriptive meaning in relation to the services applied for, 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.

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.)

This is not applicable in the present case, as explained above.

2. As a result, when considered as a whole, the mark ‘THE MARKETING STORE’ is not distinctive, even to the minimal degree required for registrability, since it is not able to indicate the commercial origin of the goods in question.

3. The Office has taken into account EUTM registration No 17 414 269 ‘THE MARKETING STORE WORLWIDE’; however, prior registered EUTMs do not constitute binding precedents. In addition, it must be considered that this EUTM has an additional verbal element (‘WORLWIDE’); therefore, it is possible that, at the moment of its examination, the mark, when taken as a whole, was considered distinctive. Nevertheless, if a mark has been registered when it ought not to have been, the Office should not compound that error by allowing a second trade mark to remain in the register. Under this assumption, such a mark may be challenged within the framework of cancellation proceedings and need not stay on the register contrary to the public interest.

‘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).

4. Regarding the registration of the trade mark applied for in different countries, including the UK, an EU Member State, 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/international system. Consequently, the registrability of a sign as a European Union trade mark must be assessed only on the basis of the relevant EU legislation. 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; therefore, the abovementioned registration cannot lead to a different result.

5. As regards the applicant’s argument that a number of similar registrations including the word element ‘marketing’ or ‘store’ 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; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

The Office has taken note of the previously accepted marks containing the word ‘MARKETING’ or ‘STORE’. However, these cases concern signs that convey messages that are less direct and therefore non-descriptive and that contain different elements, either verbal or figurative, so that, as a whole, they are distinctive and cannot under any circumstances be considered identical to the sign for which registration is sought. Furthermore, EUTM applications with a similar structure to the sign applied for have been refused, for instance EUTMA No 17 061 128 , EUTMA No 14 036 371 ‘SPANISH SOCCER INTERNATIONAL MARKETING’, EUTMA No 13 687 942 ‘ENTERPRISE EVENT MARKETING’ and EUTMA No 17 237 447 ‘StoreKeeper’. Therefore, it is clearly Office practice to refuse descriptive marks that have a structure similar to that of the sign applied for.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the services of one undertaking from those of its competitors.

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 17 414 301 ‘THE MARKETING STORE’ 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.

Moises Paulo ROMERO CABRERA