Partial refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 02/10/2019

MARKS & US, marcas y patentes

Apdo de Correos nº 938

48080 Bilbao (Vizcaya)

Spain

Application No:	017454018
Your reference:
Trade mark:	My Guide
Mark type:	Figurative mark
Applicant:	My Guide Network Limited 71-75 Shelton Street Covent Garden London, City of WC2H 9JQ United Kingdom

The Office raised an objection on 15/04/2019 pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for is partially descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

With the above notice the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations (inc. exhibits) on 30/05/2019, which may be summarised as follows.

1. The sign “MY GUIDE” refers to a professional public in the world of travel and tourism. The degree of attention of the relevant specialist public is higher than that of the average consumer and they are used to the combination of terms in the products they use for the relevant market.

2. The goods and services applied for are restricted to address only the professional public (Exhibit 5). The mark “MY GUIDE” is a website network aimed at professional in the world of tourist and travel (Exhibits 1-4).

3. The sign, considered as a whole, is vague, allusive and fanciful and it does not describe the products and services under examination.

4. The figurative logo gives distinctiveness to the mark. The figurative element is not a location symbol but it is a letter “G” that is fundamental as it forms part of the word “GUIDE”. As already stated in opposition proceedings (B 352.189), the distinctiveness of the mark falls within the figurative elements that accompany the mark.

5. The Office has formerly accepted a large number of marks including the word “GUIDE” (Exhibits 6-10).

In further defence of the mark, the applicant relies on established trade mark principles and on the case-law, judgments C-104/00 “Companyline”, C-299/99 “Remington” among others).

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. The reasons are as follows.

Descriptiveness (1, 2 and 3)

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).

It is settled case-law that the descriptive character of a trade mark must be assessed by taking into account first, the goods or services in respect of which registration has been applied for and, second, the perception on the part of the relevant public, which consists of average consumers of the goods or services in question, who are sufficiently well informed and reasonably observant and rational (21/01/2010, C- 398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 67; 29/04/2004, C-473/01 P; C-474/01 P, Tabs, EU:C:2004:260, § 33).

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.

In the present case, the applicant limits the specification of goods and services restricting them to the professional public in the field of tourism and travel business.

By letter dated 28/05/2019 the applicant restricts the list of goods and services as follows:

Class 9: Computer software programs; Computer games software; Screensavers; Electronic publications; Databases; Computer software for accessing, browsing and searching online databases; Electronic notice boards; all these goods to be used through a network of professionals in the tourist and travel businesses.

Class 16: Printed publications; Printed matter; Coupons; Vouchers; Paper; Cardboard; Books; Periodicals; Brochures; Magazines; Newspapers; Photographs; Stationery; Pens; Pencils; Binders; Notebooks; Postcards; all these goods to be used through a network of professionals in the tourist and travel businesses.

Class 39: Travel information services; Providing online information relating to travel; Provision of information relating to travel; Computerised information services relating to travel; Provision of tourist travel information; Providing tourist travel information, via the Internet; Travel guide services; Tourist guide services; Travel agency services, namely, making reservations and bookings for transportation; Transport; Packaging and storage of goods; Travel arrangement; Agency services for arranging cruises; Agency services for arranging the transportation of travellers; Agency services for arranging the transportation of travellers' luggage; Agency services for arranging tours; Agents for arranging travel; Arrangement of excursions; Arrangement of sightseeing tours; Arrangement of taxi transport; Arrangement of transportation of travellers; Arrangement of travel; Arrangement of travel to and from hotels; Arrangement of vehicle rental; Arranging escorts for travellers; Arranging excursions for tourists; Arranging for travel visas, passports and travel documents for persons traveling abroad; Travel agents services for arranging travel; Arranging of baggage transfer; Arranging of car hire; Arranging of city sight-seeing tours; Arranging of coach tours; Arranging of coach travel; Arranging of cruises; Arrangement for the transportation of passengers by air; Arranging of tours by coach; Arranging of travel by coach; Arranging of expeditions; Booking agency services relating to travel; Personal tour guide services; Holiday travel reservation services; Tour operating; Travel consultancy; Travel reservation services; Provision of computerised travel information; all these services to be used through a network of professionals in the tourist and travel businesses.

Class 41: Publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; Information services relating to entertainment; Ticket information services for shows; Ticket information services for entertainment events; Ticket reservation and booking services for entertainment events; Training services; Coaching services; all these services to be used through a network of professionals in the tourist and travel businesses.

Class 43: Hotel reservation services; Restaurant reservation services; Accommodation reservation services; Restaurant and bar services; Providing reviews of restaurants and bars; all these services to be used through a network of professionals in the tourist and travel businesses.

Accordingly, the relevant public will have a sufficient degree of attention to be able to distinguish the sign from others in the market. The applicant provides material to show that the goods and services refer to a professional public.

The amendment of the specification of goods and services in classes 9, 16, 39, 41 and 43 does not affect the assessment and cannot overcome the objection. The mark continues to be objectionable on the grounds of Article 7(1)(b) and (c) EUTMR.

The Office believes that the goods and services are intended for the public at large also.

The applicant submitted some online extracts that describe the My Guide Network as “travel guide websites that help millions of travellers every year to research, plan and book the most exciting trips”. Thus, the Office believes that the average consumer (public at large) will use the applicant’s goods and services to organise their own trips. This view is reinforced by the fact that the applicant is affiliated to the company booking.com that is a well-known platform, used by individuals, to organise their holidays. Therefore, it is most likely that the sign will be employed by the professional public (travel agents who provide accommodation services and alike) to assist the public at large (the end consumers) who will perceive the sign as indicating that the goods and services constitute a personal guide provided to help them to organise their trips.

In any case, even if the sign would refer only to a professional public with a higher level of attention, the word elements “My Guide” is a word combination which is grammatically correct and common in English linguistic usage. Further, it is composed of two words, each of which is itself also common in English everyday usage. The meaning of that word combination is, immediately and without further thought, intelligible not only in English-speaking countries, but to all consumers in the European Union who have certain knowledge of the English language.

As the structure of the term “My Guide” does not diverge from English grammar rules, but is well defined and in compliance with them, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression indicating that the goods and services constitute a customised guide for the users. The expression contains obvious and direct information on the kind of the goods and services in question, and due to the general and inclusive nature of the term thereby renders it descriptive and non-distinctive, cf. Article 7(1)(b) and (c) assessed with respect to the objected categories of goods and services.

The applicant submitted material to show that the sign for which protection is sought refers to goods and services in the professional business of online travel-related activities. The Office notes that the presented extracts show the sign with other elements, e.g. ‘’My Guide NETWORK”. “My Guide Algarve”.

The applicant has not claimed that the sign has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

As for the claim that the sign for which protection is sought is vague, allusive and fanciful and it does not describe the products and services under examination. The Office is aware of the difference between a descriptive and an allusive trade mark. In the opinion of the Office, a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way (22/09/1998, R 36/98-2, “OILGEAR”, § 10), or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation. This is clearly not so, in the present case, since, contrary to the applicant’s opinion, the message conveyed by the sign “My Guide” is not merely a skilful and covered allusion, but a clear, simple and direct message addressed to the users of travel-related goods and services to convey the message that the latter constitute in a customised guide to organise trips.

In addition, in the field of advertising, in fact, ‘my’ is frequently used together with other verbal elements for the purpose of addressing the consumer directly and indicating that the goods or services being promoted can be customised (e.g. 15/05/2018, T-860/16, “mycard2go” (fig.), EU:T:2018:265). In the present case the expression “My Guide” clearly conveys a laudatory and descriptive message that the services can be tailor-made or adapted to the individual needs of the consumer. These characteristics are evident also from the examples provided by the applicant in the submitted material.

Distinctiveness (4)

Article 7(1)(b) EUTMR provides that trade marks which are devoid of any distinctive character are not to be registered.

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, ‘Tablette carrée blanche, achetée de vert, and vert pâle’, § 59, EU:T:2001:226).

The applicant claims that the letter “G” in the word “GUIDE” does not constitute a location symbol and it is not a negligible element in the sign as it is essential to understand the meaning of the word “GUIDE”.

The Office notices that the shape of the letter “G” in the sign for which protection is sought clearly refers to the common location symbol that is nowadays used for digital or physical maps and guides. The Office has corroborated this view providing in the former objection examples of the same sign used in relation to travel-related matters and along with the word “guide”.

Further, the applicant argues that the letter “G” is not a negligible element in the sign as it forms part of the word “Guide”. In the objection dated 15/04/2019 the Office stated that “the sign for which protection is sought contains certain figurative 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”. Accordingly, it was indicated that the stylisation of the letter “G”, namely, its representation as a location symbol, does not confer any additional level of memorability and distinctiveness to the sign. The Office agrees with the applicant that the letter “G” is essential for the understanding of the word “Guide”, nevertheless, the stylisation of the letter “G” itself not only lacks of distinctiveness, but it also reinforces the message that the goods and services relate to travel-related matters given by the representation of the location symbol as explained above [23/10/2015, R 10/2015-2, “DOG GPS” (fig.)].

Accordingly, the whole design of the sign is so unspectacular and unremarkable that it is unable to eclipse the central word message. Visually, the average consumer (public at large and professional) targeted will therefore focus on the word and not on the figurative elements that are considered to be a merely minor addition.

The graphical presentation of the word using capitals, underlining and the shape of the letter “G” is too insignificant to give the applied for sign an indication of business origin as not every pictorial presentation justifies the assumption of an indication of origin. The average member of the public is used to the fact that even purely descriptive indications are often contained not in exclusively functional, plain representational form but rather, for the purposes of better recognisability and more attractive, up-to-date appearance, are made graphically unusual for advertising purposes.

In addition, the more clearly a direct link exists between the represented term and the goods and services claimed, the less inclined the trade circles are to regard the graphical context of a relevant message as an indication of origin. The stylisation of “My Guide” is a simple means of visual emphasis frequently used in advertising and product description: the specific graphics claimed with their location symbol, the underling and the blue frame give no reason for a different assessment.

Unlike the applicant, the Office does not see in the sign striking design dynamics beyond a simple location symbol and a clear underlined wording in a blue frame that could lead to a relevant recognition effect.

Therefore, the English-speaking trade circles targeted, when confronted by the goods and services claimed, will only attach the above meaning to the application and will not consider a second meaning of this word as a trade mark. It must therefore be held that the sign claimed does not enable the trade circles targeted to distinguish the goods and services in question from those of a different business origin when making their choice.

Bearing in mind the above considerations, the Office finds that, considered as a whole, the mark applied for, which is dominated by its word elements, is not more distinctive as regards the goods in question than the sum of the elements of which it is composed.

Registration of former similar marks (5)

The applicant submitted a list of European trademarks registered by the Office since 1997 that contain the word “GUIDE” (Exhibits 6-10). The list includes different types of marks (verbal and figurative) and combinations of the word “GUIDE” along with other verbal or figurative elements. Moreover, the applicant claims that the mark “YOURGUIDE” for classes 35, 41 and 45 has been recently registered.

Regarding the most recent registrations the Office points out that the majority of the listed marks are registered for goods and services in different classes from the ones under examination. Similarly, the mark “YOURGUIDE” has been registered for services different from those concerning travel advising or organisation. Thus, the Office fails in recognising any effective similarity between the sign for which registration is sought and the marks listed by the applicant and the applicant even so.

In any event, it is has become well-established case-law by now that earlier Office decisions cannot give rise to legitimate expectations (28/06/2017, T-479/16, AROMASENSATIONS (fig.), EU:T:2017:441, § 41 and the case-law cited therein).

It is true that the Office should attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Office must consider whether it should be followed. The Office must nonetheless decide in each case whether, on the basis of a correct interpretation of the legislation, the mark applied for is eligible for registration. If the Office concludes that the mark is barred from registration by the terms of Article 7(1)(b) and/or Article 7(1)(c) EUTMR, it cannot decide otherwise simply because an seemingly equally non-distinctive mark has been registered in the past, e.g. EUTM 012495347 “Guide” (fig.), EUTM 016243545 “GUIDE” (fig.).

In fact, the Courts have consistently held that decisions concerning the registration of a sign as a European Union trade mark which the Office, including the Boards of Appeal, are called on to take under the EUTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 73-75 and 16/07/2009, C-202/08 P and C-208/08 P, RW feuille d’érable, EU:C:2009:477, § 57 and the case-law cited therein).

The Office also notes that, insofar as a certain inconsistency might have occurred with a mark, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76 and case-law cited therein).

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘MY GUIDE’ will be perceived by the consumers as pointing to the commercial origin of the goods and services at issue.

For the abovementioned reasons, and those in the previous notification, pursuant to Article 7(1)(b),(c) and Article 7(2) EUTMR, the application is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) for the contested goods and services. The absolute grounds for refusal under Article 7(1)(b) and (c) EUTMR precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

Since the sign lacks an inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b), (c) and 7(2) EUTMR for the following goods and services:

Class 9: Computer software programs; Computer games software; Electronic publications; Databases; Computer software for accessing, browsing and searching online databases; Electronic notice boards; all these goods to be used through a network of professionals in the tourist and travel businesses.

Class 16: Printed publications; Printed matter; Books; Periodicals; Brochures; Magazines; Newspapers; Photographs; all these goods to be used through a network of professionals in the tourist and travel businesses.

Class 39: Travel information services; Providing online information relating to travel; Provision of information relating to travel; Computerised information services relating to travel; Provision of tourist travel information; Providing tourist travel information, via the Internet; Travel guide services; Tourist guide services; Travel agency services, namely, making reservations and bookings for transportation; Transport; Travel arrangement; Agency services for arranging cruises; Agency services for arranging the transportation of travellers; Agency services for arranging the transportation of travellers' luggage; Agency services for arranging tours; Agents for arranging travel; Arrangement of excursions; Arrangement of sightseeing tours; Arrangement of taxi transport; Arrangement of transportation of travellers; Arrangement of travel; Arrangement of travel to and from hotels; Arrangement of vehicle rental; Arranging escorts for travellers; Arranging excursions for tourists; Arranging for travel visas, passports and travel documents for persons traveling abroad; Travel agents services for arranging travel; Arranging of baggage transfer; Arranging of car hire; Arranging of city sight-seeing tours; Arranging of coach tours; Arranging of coach travel; Arranging of cruises; Arrangement for the transportation of passengers by air; Arranging of tours by coach; Arranging of travel by coach; Arranging of expeditions; Booking agency services relating to travel; Personal tour guide services; Holiday travel reservation services; Tour operating; Travel consultancy; Travel reservation services; Provision of computerised travel information; all these services to be used through a network of professionals in the tourist and travel businesses.

Class 41: Publication of online guide books, travel maps, city directories and listings for use by travellers, not downloadable; Information services relating to entertainment; Ticket information services for shows; Ticket information services for entertainment events; Ticket reservation and booking services for entertainment events; Training services; Coaching services; all these services to be used through a network of professionals in the tourist and travel businesses.

Class 43: Hotel reservation services; Restaurant reservation services; Accommodation reservation services; Restaurant and bar services; Providing reviews of restaurants and bars; all these services to be used through a network of professionals in the tourist and travel businesses.

The application may be published for the remaining goods and services:

Class 9 Screensavers; all these goods to be used through a network of professionals in the tourist and travel businesses”.

Class 16 Coupons; Vouchers; Paper; Cardboard, Stationery; Pens; Pencils; Binders; Notebooks; Postcards; all these goods to be used through a network of professionals in the tourist and travel businesses”.

Class 39 Packaging and storage of goods; all these services to be used through a network of professionals in the tourist and travel businesses”.

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.

Peter SCHYDLOWSKI