Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 08/10/2018

JEFFREY PARKER AND COMPANY

The Grange, Hinderclay

Suffolk IP22 1HX

REINO UNIDO

Application No:	017882711
Your reference:	TM7951
Trade mark:	LOS ANGELES
Mark type:	Figurative mark
Applicant:	Los Angeles Tourism & Convention Board 333 South Hope Street, 18th Floor Los Angeles California 90071 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/04/2018 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, after an extension which was requested and granted by the Office, submitted its observations on 18/08/2018, which may be summarised as follows.

1. The Office was filled insufficient evidence to demonstrate why the mark is descriptive for goods in Class 25, namely articles of clothing; footwear; headgear; hats, T-shirts.

2. The applicant argues that Applicant’s goods are likely to be made in China, and if marked as such, consumers will have the conundrum of seeing LOS ANGELES and also CHINA on the goods, so they will not be induced into thinking that the goods are actually produced in LOS ANGELES.

3. The applicant argues that Los Angeles in not famous for the production clothing. The applicant argues that the Office must prove that the geographical term is known by the relevant public as designating a place (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 51). And secondly, the Office did not show that the geographical term applied for designates a place that is currently associated with the claimed goods or services in the mind of the relevant public or whether it is reasonable to assume that it will be associated with those goods or services in the future (judgment of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 31).

4. Given that the Applicant is Los Angeles Tourism & Convention Board it is clear that there is some connection with the city of Los Angeles, but there is no reason at all for the public to assume from that that the goods are actually made there.

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)(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).

It is in the public interest that signs that may serve to designate the geographical origin of goods or services remain available, not least because they may be an indication of the quality and other characteristics of the categories of goods concerned, and may also, in various ways, influence consumer preferences by, for instance, associating the goods or services with a place that may elicit a favourable response (judgments of 15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47; 25/10/2005, T-379/03, Cloppenburg, EU:T:2005:373, § 33).

The applicant argues that the Office has to prove that Los Angeles is a known geographical term. The Office notes that the first step in assessing a geographical term is to determine whether it is understood as such by the relevant public. Article 7(1)(c) EUTMR does not in principle preclude the registration of geographical names that are unknown to the relevant public — or at least unknown as the designation of a geographical location (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 49; T-379/03, Cloppenburg, EU:T:2005:373, § 36). In the present case, Los Angeles is the second most famous US city, after New York, and this information was communicated in the objection letter. There is no room for doubt that the relevant European consumer knows this US city which is the centre of the nation’s film and television industry and which has four million inhabitants and millions of tourists every year.

The Office also notes assessment must be made with reference to the goods and services for which protection is sought and with reference to the perception by the relevant public. The descriptive character of the geographical term may relate to: the place of production of the goods or the subject matter of a good (e.g. the city or region a travel guide is about) or the place that influences consumer preferences (e.g. lifestyle) by eliciting a favourable response (15/01/2015, T-197/13, MONACO, EU:T:2015:16, § 47 and Cloppenburg, EU:T:2005:373, § 33. In the present case, the relevant consumer’s preference would be influenced if the cloths that were buying were coming from Los Angeles known for places such as Beverly Hill with the fashionable boutiques.

In terms of the applicant’s arguments that its goods are likely to be made in China so consumers will not be induced into thinking that the goods are actually produced in LOS ANGELES. The Office notes that it is not necessary to establish that the name actually designates the true geographical origin of the goods. It is enough to demonstrate that the connection between the name of the place and the goods may enable the relevant public to perceive the contested sign as an indication of the origin of those goods (judgment of 15/10/2003, T-295/01, Oldenburger, EU:T:2003:267, § 43).

Finally, the Office would like to draw the applicant’s attention to its practice, according to relevant case law, that some geographical terms, such as major geographical places or regions as well as countries, may be refused merely because of their widespread recognition and fame. In such cases no detailed assessment of the association between the place and the goods and services is necessary (judgment of 15/12/2011, T-377/09, Passionately Swiss, EU:T:2011:753, § 43--45). This is clearly the case with Los Angeles.

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 17 882 711 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.

Aliki SPANDAGOU