Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 28/08/2018

CABINET FLECHNER

22, avenue de Friedland

F-75008 Paris

FRANCIA

Application No:	017491721
Your reference:	46944
Trade mark:	TextMe
Mark type:	Figurative mark
Applicant:	TextMe, Inc. 655 Montgomery Street, # 1400 San Francisco California 94111 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 09/01/2018 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 18/05/2018, which may be summarised as follows.

1. The representation of a phone ringing in a balloon is unusual, as balloons usually depict words. Two balloons, one showing a phone ringing, the other a response, is also unusual, as is the verbal message.

2. The sign is distinctive as a whole, and no less distinctive than EUTM registration No. 16521585.

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.

Speech bubbles or balloons are not limited to use by way of captions only. Here, they are clearly used to describe the communicative characteristics of the goods. The consumer of app(lication)s will immediately grasp the descriptive content of the balloons or bubbles, namely that they enable users to communicate by way of text or call. The semantic content makes it clear that the mobile software applications may be used to permit texting to (or by) the user (me). Viewed as a whole, the sign is not distinctive. The verbal elements clarify the figurative elements and vice versa. They reinforce each other, unlike the registered mark cited by the applicant. The consumer discerns the intended purpose of the goods immediately, and without further thought. The graphics are simple in the context of the goods. The semantic content is clear and none of the elements are capable of distracting the consumer´s attention from the clear meaning inferred.

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 goods or services of one undertaking from those of its competitors.

Furthermore, the Office finds that the figurative mark applied for consists of a combination of elements that are capable of being perceived as simply indicating the content of a program, or is simply a variation thereof. It follows that the pictogram in question cannot be sufficiently distinguished from other images commonly used in respect of like technological goods and applications, and will not enable the relevant public immediately and with certainty to distinguish the applicant’s goods from those of another commercial origin. 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 goods and services for which protection is sought. Consequently, taken as a whole, the sign for which protection is sought is devoid of any distinctive character, and is not capable of distinguishing the goods and services to which an objection has been raised.

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 17 491 721 is hereby rejected for all the goods 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.

Keeva DOHERTY