Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 31/07/2018

TRADEMARK EAGLE LIMITED

Unit 4, Valley Court Offices, Lower Road

Croydon, Hertfordshire SG8 0HF

REINO UNIDO

Application No:	017659624
Your reference:	TEU9396TME
Trade mark:	PROMOTIONGIFT
Mark type:	Figurative mark
Applicant:	Business Present Limited 100 Hedley Rise Luton Bedford LU2 8UU REINO UNIDO

The Office raised an objection on 23/02/2018 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 23/04/2018, which may be summarised as follows.

1. The words PROMOTION and GIFT, are conjoined and this style of wording is not a combination used to indicate gifts or goods for promotional reasons. The mark filed is composed of the words PROMOTIONGIFT merged and therefore, the contested statement is not correct. The fact that the word is PROMOTION and not PROMOTIONAL plus the incorporation of a distinctive logo gives the Mark a totally different meaning and connotation.

2. The mark is ambiguous because: (a) It is not directly linked to any specific consumer goods; (b) There is no such thing as a PROMOTIONGIFT because the words together is not the normal way of referring to gifts that are offered for promotional reasons.

3. The logo filed is sufficiently distinctive to enable the relevant public to distinguish the Applicant’s goods and services in the relevant classes from those of a different commercial origin. This led to the acceptance of several similar applications by the UK Registry and the EUIPO, such as PROMOTION TOPS, TREND PROMOTION, POWER OF PROMOTION and YOUNG PROMOTION.

4. The components of the trademark were examined separately, when the examination should be carried out by appraising the trademark as a whole. The mark filed is a combination of the merged words, with a distinctive image that it is fanciful and resembles, amongst other things, a butterfly. The combination of colours included also makes the mark a distinctive brand and therefore, should be seen as a whole, and not broken down in order to arrive at an objection.

5. Several other trade marks which include comparable logos and stylization have been registered, such as the following ones:

6. The applicant searched on-line and is not aware of any organization using the term PROMOTIONGIFT together for any type of service offering.

Preliminarily, the Office acknowledges the amendment of the list of goods. It must be stated that, while the objected items “personal audio accessories”, “lamp starters” and “ceiling roses” have been removed from the list of goods and services, the description “hand-operated tools and devices for use in electrical technology” and “cells and batteries of all types” have been exchanged by “hand operated tools and devices for landscaping, gardening, cutting, personal grooming, manicure, pedicure, cooking” and “electric, solar and high tension batteries and cells”. The Office regards that the scope of the new descriptions still fall under the objection raised previously by the Office, as the descriptive character of the expression “PROMOTION GIFT” would also apply to these goods, as well as the lack of distinctiveness of the said expression.

However, as the items included in the list of goods and services do not extend further than the original scope of the objection, the Office considers that it is not necessary to issue another letter of objection in regard to these items, and will proceed with the examination.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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 Office will now assess, in order, the arguments from the applicant.

1. The combination for the words PROMOTION and GIFT are conjoined and this style of wording is not a combination used to indicate gifts or goods for promotional reasons. The mark filed is composed of the words PROMOTIONGIFT merged and therefore, the contested statement is not correct. The fact that the word is PROMOTION and not PROMOTIONAL plus the incorporation of a distinctive logo gives the Mark a totally different meaning and connotation.

The Office disagrees with this assessment. Since the applicant has agreed with the meanings provided for the words “PROMOTION” and “GIFT”, the Office will solely discuss the alleged distinctiveness of the aforementioned juxtaposition.

First of all, 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).

As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) EUTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; similarly 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29). In the present case, the meaning conveyed by the word ‘PROMOTION’ and “GIFT” is the same meaning conveyed by combination of those two separate elements. There is nothing vague or unusual for the combination ‘PROMOTIONGIFT’ as to syntax or meaning considering the words alone.

As for the use of the word PROMOTION and not PROMOTIONAL, the Office would like to point out that, even in the case that the expression on question would not be entirely in compliance to English-grammar rules, as confirmed by the General Court in various decisions, a supposedly grammatically incorrect structure of a sign does not affect the assessment of the contested sign (12/01/2000, T-19/99, Companyline, ECLI:EU:T:2000:4, § 26; 26/10/2000, T-360/99, Investorworld, ECLI:EU:T:2000:247, § 23). Whether the correct way to write the word combination would be to write the words together, or as separate words is, therefore, irrelevant.

The Office reiterates that the sign ‘PROMOTIONGIFT’ is an expression that will be immediately understood by the relevant English-speaking consumers in the European Union as conveying obvious and direct information regarding the nature and intended purpose of the goods and commercial services in question. The mark cannot be understood in any way other than the manner provided by the Office, when applied to the goods and services in question. There are no additional verbal elements that would make the expression fanciful or imaginative, and nothing original in itself that would require a level of interpretation or mental effort on the part of the relevant public to understand its meaning. Moreover, a grammatical error or inaccuracy will not make a mark distinctive or non-descriptive if the meaning of the expression remains clear and easily understandable. Even an expression that is not grammatically correct in written English can be considered usual and easily understandable in commercial, advertising or everyday language, since in the language used in these contexts the rules of grammar are often disregarded by, for example, making statements shorter, or replacing or omitting some words.

The incorporation of the bow device on the figurative element of the sign in question does not alter in any form the pronunciation or the meaning of the verbal element of the mark. Consequently, it cannot alter its meaning or connotation.

Therefore, the Office dismisses this argument.

2. The mark is ambiguous because: (a) It is not directly linked to any specific consumer goods; (b) There is no such thing as a PROMOTIONGIFT because the words together are not the normal way of referring to gifts that are offered for promotional reasons

The Office also disagrees with this argument.

Promotional giveaways come in a significant variety of types, shapes and forms. The objection letter has provided the applicant with a significant number of images extracted from the webpage of online retailers of these goods, which range from the most simplistic key-chain to household items such as toasters. All these goods, while differing in size, material and intended purpose, are made to be given as promotion(al) gifts. Consequently, the Office holds that the mark is question, while not specifically describing any of the goods objected, describes their purpose, as stated by the objection letter, quoted below (emphasis added).

“Therefore, despite the presence of figurative elements, the relevant consumer would perceive the mark as only providing information about the purpose of the goods in question, i.e., to serve as a gift or giveaway for promotional reasons”.

As for the second part of the argument, the Office would like to point out that case law clearly states that, 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).

As such, due to the fact the expression ‘PROMOTIONGIFT’ clearly describes items that can be used as gifts for promotional purposes, the argument proposed by the applicant has to be disregarded.

3. The logo filed is sufficiently distinctive to enable the relevant public to distinguish the Applicant’s goods and services in the relevant classes from those of a different commercial origin. This led to the acceptance of several similar applications by the UK Registry and the EU IPO, such as PROMOTION TOPS, TREND PROMOTION, POWER OF PROMOTION and YOUNG PROMOTION.

As for this argument, the Office states that 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).

‘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).

It is also important to none of the trade marks cited combines the word ‘PROMOTION’ with a descriptive word for any type of retailed goods. Therefore, the Office considers that the cited cases cannot be regarded as similar to the one in examination, and also dismisses this argument.

4. The components of the trademark were examined separately, when the examination should be carried out by appraising the trademark as a whole. The mark filed is a combination of the merged words, with a distinctive image that it is fanciful and resembles, amongst other things, a butterfly. The combination of colours included also makes the mark a distinctive brand and therefore, should be seen as a whole, and not broken down in order to arrive at an objection.

As already argued, the analysis of the distinctiveness of a particular compound sign can be performed as an examination of each of the mark’s individual components.

While the applicant argues that the device present on the mark is fanciful and resembles, among other things, a butterfly, the Office is of the opinion that the use of the word ‘GIFT’ in the mark will influence consumers to regard it as a simple and unremarkable representation of a bow.

As for the use of the colours blue and white on the figurative device, and the colours blue and black on the typeface, it must be stated that the Guidelines For Examination Of European Union Trade Marks, Part B Section 4 Chapter 4 item 4.2 establish that only a particular arrangement of colours, which is unusual and can be easily remembered by the relevant consumer, could render a mark distinctive, as the use of colours is common in trade and would not be seen as a badge of origin. The Office regards that the aforementioned colour combinations are commonplace, and cannot add any degree of distinctiveness to the sign.

Consequently, the Office cannot find merit in this argument.

5. Several other trade marks which include comparable logos and stylization have been registered, such as the following ones:

Again, we refer to settled case law, which, as previously stated, dictates that the registrability of each sign must be assessed solely on the basis of the EUTMR, and not previous Office practice.

Regardless of that, it must be also noted that the signs brought to attention by the applicant have different verbal elements, which do not have clear and immediate meanings, contrary to the sign in appraisal. Therefore, the Office considers that the cited cases cannot be regarded as similar to the one in examination, and also dismisses this argument.

6. The applicant searched on-line and is not aware of any organization using the term PROMOTIONGIFT together for any type of service offering.

The Office would like to state once more that 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.

Acording to case law (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32), it is sufficient that the sign in question could be used for such purposes.

Consequently, the Office cannot find merit in this argument.

In closing, the Office states that, despite the applicant’s arguments, it has been found that the sign ‘ ’ will be regarded as a descriptive sign, readily informing the relevant consumer that the goods at hand are intended to serve a gifts or giveaways for promotional reasons. The retail services in question are intended to support the sale of the aforementioned goods, and as such, will be seen as only an ancillary to the main purpose in question. Moreover, the visual components present on the sign consist of and ordinary typeface displayed in two different colours, and stylized image of a white ribbon tied in a bow inside a blue square, which 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.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTMA No 17 659 624 is hereby rejected for all the goods and 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.

Christiano DOS SANTOS TIMBO