Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 26/09/2018

BECK GREENER

Fulwood House

12 Fulwood Place

London WC1V 6HR

REINO UNIDO

Application No:	017882001
Your reference:	IB/KS/T82190EM
Trade mark:	MEDIAPORT
Mark type:	Word mark
Applicant:	Wired Broadcast Limited Berol House, 25 Ashley Road London N17 9LJ REINO UNIDO

The Office raised an objection on 16/05/2018 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 14/08/2018, which may be summarised as follows.

1. The word ‘port’ would not be understood in the manner proposed by the Office. It has no meaning for the goods for which registration is sought, because they are not computer or data networks.

2. The word ‘port’ cannot be meaningful when conjoined with the word ‘Media’, which is a word too general to describe a function when combined with ‘port’. The sign is a neologism, invented.

3. The expression is not used in the market; it is used only by the applicant, which does not use it in a descriptive manner.

4. Third parties do not need to use the sign at issue to designate the goods to which the application relates.

5. A number of similar registrations, containing the word ‘PORT’, have been accepted by the EUIPO and by the UK registry.

6. The trade mark in question has been registered by the UK national office.

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 trademarks 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 applicant’s arguments

1. Concerning the applicant’s argument in relation to the meaning of the word ‘port’, the Office’s position is supported by the following dictionary reference:

‘PORT’ ‘the circuit, outlet, etc. which serves as a connection between a computer and its peripheral’

(information extracted from Collins English Dictionary on 22/08/2018 at https://www.collinsdictionary.com/dictionary/english/port).

Therefore, ‘port’ can refer to electronic equipment for connecting an electronic device with a network, for example.

The goods for which registration is sought, electronic equipment for connecting with and providing access to computer and data networks; none of the aforesaid relating to advertising or marketing; none of the aforesaid being computer software, could be ports as defined above, or parts of a port, or could be electronic equipment to be used in relation to a port.

2. Concerning the applicant’s argument in relation to the meaning of the word ‘Media’, the Office’s position is supported by the following dictionary reference:

‘MEDIA’ ‘In the computer world, "media" is also used as a collective noun, but refers to different types of data storage options.

Computer media can be hard drives, removable drives (such as Zip disks), CD-ROM or CD-R discs, DVDs, flash memory, USB drives, and yes, floppy disks. For example, if you want to bring your pictures from your digital camera into a photo processing store, they might ask you what kind of media your pictures are stored on. Are they on the flash memory card inside your camera or are they on a CD or USB drive? For this and many other reasons, it is helpful to have a basic understanding of what the different types of media are.’

(information extracted from TechTerms on 22/08/2018 at https://techterms.com/definition/media).

This definition of the word ‘media’ is not too broad. It defines the type of peripheral that can be connected by a port.

Even if the sign ‘mediaport’ were an invented word, this would not mean that it could not be descriptive.

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

First, the fact that the words are conjoined does not confer distinctiveness on the mark, because the mark will be dissected by the relevant consumers. Consumers are used to seeing conjoined words on the market, and therefore they are also used to dissecting marks as necessary.

Although the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he or she will break it down into elements which, for him or her, suggest a concrete meaning of which resemble words known to him or her (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

Second, the expression does not diverge from English grammar rules.

Consequently, the sign as a whole, would be perceived by the relevant consumer as having the following meaning: the circuit, outlet, etc., that serves as a connection between a computer and other media, that is, external disk drives, storage drives, etc.

It should be noted that data storage can be performed by the bias of networks.

Therefore, the relevant consumers would perceive the sign as providing information, namely that the goods for which registration is sought are types of electronic equipment that serve to connect a computer to other media. So, the sign describes the kind and intended purpose of the goods in question.

The fact that the words ‘port’ and ‘media’ can have other meanings does not change the Office’s opinion.

Given that the examination must focus on the goods specified in the application, arguments concerning other possible meanings of the words making up the trade mark applied for (that are unrelated to the goods/services concerned) are irrelevant.

Furthermore, 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, emphasis added.)

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

3. As regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 88).

In the present case, as demonstrated above, the expression ‘MEDIAPORT’ will be understood immediately and without effort by the relevant public.

The sign will be perceived not as designating the commercial origin of the goods but as conveying information on the nature and intended purpose of the goods in question.

For this reason, the argument that the applicant is the only company to use the sign and uses it in a non-descriptive manner cannot be taken into account by the Office.

4. As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free. (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 39).

5. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 should be noted that the trade marks cited by the applicant contain not only the word ‘PORT’ but also other words. These combinations could be distinctive, which is not the case for the expression ‘MEDIAPORT’.

Some of these trade marks are not registered for goods that could be types of electronic port (e.g. EUTM registration No 4 572 731, ‘music port’, for stereos and speakers), or, in some cases, there is no link between the sign and the type of electronic device for which they are registered (e.g. EUTM registrations No 4 024 782, ‘POWER PORT’, and No 12 321 915, ‘FLEET PORT’).

In addition, some of the trade marks cited by the applicant were filed many years ago, five of them before the case-law cited above was established.

With regard to trade marks filed several years ago, we must keep in mind that the concept of distinctiveness necessarily changes over time, which is why the validity of a mark is assessed at the time of its filing, in specific terms and for each individual case in the light of the sign as filed and the goods and services for which registration is sought.

6. As for the national decisions referred to by the applicant, according to
   case-law:

The European Union trade mark 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 a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 17 882 001 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.

Brice LAUGIER