Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 13/07/2018

POTTER CLARKSON LLP

The Belgrave Centre

Talbot Street

Nottingham NG1 5GG

REINO UNIDO

Application No:	017622416
Your reference:	CNH3P/T80821EM
Trade mark:	CAP M PREMIUM
Mark type:	Word mark
Applicant:	CNH Industrial N.V. 25 St. James's Street London SW1A 1HA REINO UNIDO

The Office raised an objection on 15/01/2018 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 which is an integral part of this decision.

The applicant submitted its observations on 14/05/2018 which may be summarised as follows.

1. A limitation is requested to eliminate finacial services: financing services.

2. Capital Asset Pricing Models are not related to the remaining services relating to insurance.

3. The average consumer would not be familiar with Capital Asset Pricing Models or the acronym. The highly informed specialist consumer will know that the acronym is CAPM and not CAP M (with a space) and that CAPM is not related to the services in question.

4. The applicant has numerous earlier EUTM registrations for marks with the CAP prefix.

5. The inclusion of PREMIUM further removes the sign from being perceived as the acronym for Capital Asset Pricing Model.

6. Given the above the mark is not descriptive (Article 7(1)(c) EUTMR). It follows it is also not non-distinctive (Article 7(1)(b) EUTMR).

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.

General remarks on Article 7(1)(c) EUTMR

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).

Observations of the applicant

1. A limitation is requested to eliminate financial services: financing services.

The request for limitation is clear and unconditional and is therefore acceptable. The limitation has been applied to the list of services of the application which now reads as follows:

Class 36

Insurance services; advice, information and consultancy services relating to all of the aforesaid services.

2. Capital Asset Pricing Models are not related to the remaining services relating to insurance.

As explained in the attached letter. CAP M is descriptive for financial services that may use the Capital Asset Pricing Model. Insurance services are, in fact, financial services that may use the CAPM. The capital asset pricing model (CAPM) is a model that describes the relationship between systematic risk and expected return for assets. The higher the risk related to an investment, the greater the need for insurance and the higher the premium to be paid.

There is, in fact, a CAP model referred to as the ‘insurance CAPM’. ‘The insurance CAPM yields important insights into the operation of insurance markets by introducing the concept of an equilibrium price for insurance and distinguishing between different types of risk.’

https://www.casact.org/library/astin/vol20no2/125.pdf

Therefore, there is no doubt that CAP M PREMIUM on the relevant insurance services will be immediately perceived by the relevant public as relating to premiums based on the Capital Asset Pricing Model or premium services that use the Capital Asset Pricing Model.

3. The average consumer would not be familiar with Capital Asset Pricing Model or the acronym. The highly informed specialist consumer will know that the acronym is CAPM and NOT CAP M (with a space) and that CAPM is not related to the services in question.

The ‘average consumer’ is a concept that includes the general public on the one hand and the professional on the other hand. In this case, the average English speaking consumer, as the applicant points out will include the highly informed and specialist consumers, who will be familiar with the CAPM acronym and will know that it relates to the ‘Capital Asset Pricing Model'. Therefore, although some consumers may not have heard of the abbreviation or the model in question, a relevant part of the public will know exactly what the acronym means.

The fact that there is a separation between CAP and M may not go unnoticed, perhaps, by the professional consumer with a high degree of attention in financial matters. Nevertheless CAP M will be immediately recognised are referring to Capital Asset Pricing Model. Therefore, CAP M PREMIUM will be perceived immediately and without further reflection as describing a characteristic of the services in question, for example that the premium insurance services use or refer to this model in some way. CAP M PREMIUM will not be given any trademark significance and will not be perceived as a badge of commercial origin. Such descriptive terminology should be kept free to be used by all competitors in the field of finance/insurance.

4. The applicant has numerous earlier EUTM registrations for marks with the CAP prefix.

The fact that the applicant has other EUTMs with the CAP prefix does not imply that the trade mark CAP M PREMIUM is distinctive. The Office points out that the other EUTMs are not acronyms in the field of finance and are distinctive because they are meaningless. In the present case, the mark is made up of a known acronym with a specific meaning relating to finance/insurance and the laudatory/descriptive word PREMIUM. The combination leads to nothing more than the sum of the parts and is descriptive for the services in question.

5. The inclusion of PREMIUM further removes the sign from being perceived as the acronym for Capital Asset Pricing Model.

According to the Oxford English dictionary PREMIUM means

• ‘An amount to be paid for an insurance policy’ and

• ‘Relating to or denoting a commodity or product of superior quality and therefore a higher price’

(Information extracted on 12/07/2018 at https://en.oxforddictionaries.com ).

Given these above dictionary definitions, the word PREMIUM, however it is interpreted, does not add any distinctive character to the descriptive CAP M. It is a word that is commonly used in the insurance sector and will not be given any trade mark significance.

CAP M PREMIUM in relation to the insurance services in question may be interpreted as meaning premium services that use or relate to CAPM or it may be interpreted as meaning that the premium to be paid for the related insurance policies will be calculated with the help of the CAP model.

Either way, CAP M PREMIUM is descriptive of the services in question. The word PREMIUM does not further remove the sign from being perceived as the acronym CAPM, as claimed by the applicant, but rather brings it closer to the realm of insurance (considering the above meaning of PREMIUM as the amount to be paid for an insurance policy).

6. Given the above the mark is not descriptive (Article 7(1)(c) EUTMR). It follows it is also not non-distinctive (Article 7(1)(b) EUTMR).

As has been explained above, the mark is descriptive and so objectionable under Article 7(1)(c) EUTMR. It follows that it is also devoid of any distinctive character and also objectionable under Article 7(1)(b) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and/or (c) and Article 7(2) EUTMR, the application for EUTM No 17 622 366 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) at least in the English-speaking countries of the European Union for all the services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Lynn BURTCHAELL