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

(Article 7 EUTMR)

Alicante, 26/05/2020

PatentEnter s.r.o.

Koliště 13a

CZ-602 00 Brno

REPÚBLICA CHECA

Application No:	017796806
Your reference:	Z18041_CTM
Trade mark:	MapTiler
Mark type:	Word mark
Applicant:	Petr Pridal Halkova 34 CZ-61400 Brno REPÚBLICA CHECA

The Office raised an objection on 28/02/2018 and on 11/06/2019 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 letters.

The applicant submitted its observations on 02/07/2018 and on 16/10/2019, which may be summarised as follows:

1. According to the applicant the applied sign is not descriptive and distinctive. It is at most suggestive. The mark does not cover commonly used goods and services and they relate to the field of digital cartography. The professional public would understand the meaning of ‘map tiling’ but not ‘MapTiler’. Therefore, the relevant professional consumer will not immediately understand the descriptive message. The term ‘tiler’ does not evoke ‘displaying a map’.

2. The general public is a visitor websites and is not familiar with the techniques used in cartography. According to Cambride Dicticionary the word ‘tiler’ refers to ‘a person who fixes tiles to a surface’ and, therefore, the general public will not perceive the term ‘tiler’ as something related to displaying of anything.

3. The applicant refers to previous trade mark registration for ‘MapTiler’ in the United States.

4. The sign ‘MapTiler’ is used on the market by nearly only by the (co-)applicant. The applicant’s software has been cracked. Therefore, search results for ‘MapTiler’ were available through other channels and search results could be found offered by other manufacturers or providers than the applicant.

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.

With regard to 1. and 2. the applicant’s main argument is that ‘MapTiler’ is not descriptive. As already mentioned in the Office’s objection letter of 11/06/2019, the term ‘tiled maps’ has been used in a descriptive way. Even the applicant agrees with that ‘map tiling’ will be understood as descriptive in relation to digital cartography. It is obvious that the public will understand the meaning of ‘MapTiler’ by using the noun ‘tiler’ instead of the verb ‘tiling’. The relevant public does not need to make a particular effort as regards the interpretation of the sign in order to understand the meaning of the sign applied for Therefore, the relevant public will make a direct link between the mark and the characteristics of the goods and services applied for.

In addition, ‘since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market’ (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48). Therefore the verbal elements of which the mark applied for consists are closely connected with the goods and services at issue. The goods and services at issue all concern maps or map-related products or services. The applicant puts forward neither argument nor evidence that the mark applied for departs by its structure from the rules of syntax, grammar, phonetics or semantics of the English language. In any event, the fact that that term does not appear in any dictionary does not show that that public will not understand directly and without any effort of interpretation the descriptive character of the sign applied for.

3. As regards the cited national trade mark registration referred to by the applicant, according to case-law, the EUTMR 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 system … Consequently, the registrability of a sign as an EUTM must be assessed by reference only to the relevant EUTMR rules. Accordingly, the Office and, if appropriate, the EU 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. In the case at issue this is aggravated by the fact that the cited decision originate not even from a national office in a Member State but from outside the European Union with different conditions for registration of trade marks.

Finally (4.), according to the applicant the sign is used on the market nearly only by the applicant. However, the fact that the combination of the verbal elements in question were not used by competitors in a descriptive manner does not mean that the sign is not descriptive or is distinctive. In order for the Office to refuse to register a trade mark under Article 7(1) (c) EUTMR it is not necessary that the sign at issue has already been used for descriptive purposes of goods or services such as those covered by the trade mark application but that it can be used for that purpose (30/09/2015, GREASECUTTER, T-610/13, EU:T:2015:737, § 34). Furthermore, proof of the actual use of the sign applied is not a relevant criterion in the context of the application of Article 7(1)(b) and (c) EUTMR. It is only in the context of the application of Article 7(3) EUTMR that it is necessary to assess the actual use of a sign for which registration is sought (13/12/2018, T‑ 98/18, MULTIFIT, EU:T:2018:936, § 47 and 48). In the present case, the applicant did rely on Article 7(3) EUTMR as a subsidiary claim.

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 17 796 806 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.

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

Martin EBERL