Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/08/2018

CMS CAMERON MCKENNA NABARRO OLSWANG LLP

Cannon Place

78 Cannon St.

London London EC4N 6AF

REINO UNIDO

Application No:	17 883 318
Your reference:	158426.00004
Trade mark:	TicketTrade
Mark type:	Word mark
Applicant:	Bait Holdings Limited Suite 101, First Floor, Nicolas Court, 7 Kitiou Street, Anavargos CY-CY8025 Paphos CHIPRE

The Office raised an objection on 25/04/2018 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 submitted its observations on 17/05/2018, which may be summarised as follows:

1. The applicant owns UK trade mark application No 3 286 606 for the mark ‘TicketTrade’, which has been accepted and published by the UK IPO, and also EUTM No 6 360 697 ‘TICKET TRADE’, which has been registered since 2008.

2. The mark ‘TicketTrade’ is distinctive for all or at least some of the services for which registration is sought. ‘TicketTrade’ does not describe the precise nature of the services specified in the application. The phrase ‘TicketTrade’ is not used in common parlance in any EU language to describe the services for which registration is sought.

3. Even if it were the case that the individual elements ‘TICKET’ and ‘TRADE’ were generic and/or descriptive, the mark would need to be considered as a whole, and the combination of the two words is so meaningless that it cannot be considered to inform the public of any characteristics of the goods and services. ‘TicketTrade’ has no specific meaning in relation to the services for which registration is sought. Consumers would remember the sign in relation to any services marked with the words ‘TicketTrade’. The sign ‘TicketTrade’ is therefore capable of functioning as a trade mark.

4. An objection under Article 7(1)(c) EUTMR may be properly raised if the mark in question is capable of being used to describe the goods and/or services for which registration is sought; however, the applicant cannot see any meaning that could be ascribed to ‘TicketTrade’ in the context of the services in question, and the notice of grounds for refusal provides no evidence or information to support the argument that the mark is descriptive. Furthermore, the applicant claims that the meaning ascribed to the mark by the Office is inaccurate and unsupported by evidence. Moreover, even if the EUIPO maintains its argument that the mark can be used to describe certain characteristics of the services, this cannot apply to all of the services, in particular to those in Classes 35, 36, 38, 39 and 42 listed in the applicant’s reply. Should the objection be maintained, the applicant requests that the EUIPO provide a greater level of detail regarding the nature of the objection in relation to these services.

5. There are a number of registered marks of a similar nature to ‘TicketTrade’, in that they comprise one or more ordinary words of a low to average degree of distinctiveness that are identical to or have identical or similar meanings to elements included in the applicant’s mark ‘TicketTrade’, including EUTM No 6 360 697 ‘TICKET TRADE’, EUTM No 8 987 745 ‘TOLL-TICKET’S’ and EUTM No 9 414 442 ‘TRADESHIFT’. Given that these marks have been deemed registrable by the EUIPO, to ensure consistency and to maintain natural justice, the mark applied for should also be registered; it would be unreasonable to refuse the applicant’s mark in such an inconsistent manner.

6. In the event that the EUIPO rejects the arguments submitted in this letter, the applicant reserves the right to submit further arguments.

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 waive the objection for the following services:

EN-35	Advertising; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers.
EN-36	Insurance; providing purchase protection insurance services in the field of on-line trading of goods and services by others via a global computer network.
EN-38	Providing user access to search engines; telecommunications services; electronic messaging; providing an online, interactive bulletin board for the transmission of messages among computer users via a global computer network.
EN-39	Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilising wireless application protocol technology; provision of information relating to travel and travel destinations.
EN-42	Operating search engines.

The objection is maintained for the remaining services:

EN-35	On-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; on-line trading services, namely, operating on-line marketplaces for sellers and buyers of goods and services; online trading services in which sellers post products or services to be offered for sale and purchasing or bidding is done via the Internet in order to facilitate the sale of goods and services by others via a computer network.
EN-39	Ticket reservation and booking agency services relating to travel.
EN-42	Providing temporary use of online, non-downloadable e-commerce software to allow users to conduct electronic business transactions in online marketplaces via a global computer network.

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).

The applicant argues that it is the owner of UK trade mark application No 3 286 606 for the mark ‘TicketTrade’, which has been accepted and published by the UK IPO. and also of EUTM No 6 360 697 ‘TICKET TRADE’, which has been registered since 2008.

As regards the UK application 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).

With regard to EUTM No 6 360 697 ‘TICKET TRADE,’ which has been registered since 2008, it must be pointed out that, although the mark is similar to the mark applied for, the only services for which the objection is maintained (for which that earlier mark is registered) are on-line trading services in which seller posts products to be auctioned and bidding is done via the internet. The other goods and services of the previously registered mark have nothing in common with the goods and services specified in the present application, nor do they have a direct link with the meaning of the trade mark. Furthermore, the application was registered 10 years ago and the Office’s practice has changed in recent years, as the relevant case-law and the needs of the market have evolved.

Furthermore, after giving due consideration to the applicant’s arguments, the Office has decided to waive its objection to some of the services for which the applicant argued that the objection cannot apply. Consequently, the objection and the counter-arguments relate only to the remaining services mentioned above.

For the remaining services in Classes 35, 39 and 42, the Office cannot agree with the applicant’s argument that ‘TicketTrade’ is distinctive and that it does not describe the precise nature of the services.

Firstly, it should be pointed out that it is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

With regard to the applicant’s argument that ‘TicketTrade’ is not used in common parlance in any EU language to describe the services for which registration is sought, 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).

In its submissions, the applicant points out that an objection under Article 7(1)(c) EUTMR may be properly raised if the mark in question is capable of being used to describe the goods and services for which registration is sought, but the applicant cannot see what meaning could be ascribed to ‘TicketTrade’ in the context of the services in question. Furthermore, the applicant claims that the meaning ascribed to the mark by the Office is inaccurate and unsupported by evidence. It also argues that even if it were the case that the individual elements ‘TICKET’ and ‘TRADE’ were deemed generic and/or descriptive, the mark would need to be considered as a whole, and the combination of the two words is so meaningless that it cannot be considered to inform the public of any characteristics of the goods and services. Finally, it claims that ‘TicketTrade’ has no specific meaning in relation to the services for which registration is sought; and that consumers would remember the sign in relation to any services marked with the words ‘TicketTrade’.

Indeed, trade marks composed of more than one word, such as the sign applied for, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole that they form (e.g. 12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive elements remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Although the sign applied for consists of two conjoined English words, when assessing a trade mark, the Office must consider it not in its strictest grammatical sense but in terms of how it would appear to the public at large, who would encounter it in relation to the goods and services for which registration is sought and form an opinion on what it connotes.

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).

The sign applied for consists of a combination of two words, ‘Ticket’ and ‘Trade’, both of which are readily identifiable and ordinary English words. According to the definitions from Collins English Dictionary provided in the notice of grounds for refusal, the word ‘Ticket’ will be understood as meaning ‘a small, official piece of paper or card which shows that you have paid to enter a place such as a theatre or a sports ground, or shows that you have paid for a journey’ and the word ‘Trade’ as meaning ‘the activity of buying, selling, or exchanging goods or services between people, firms, or countries; when people, firms, or countries trade, they buy, sell, or exchange goods or services between themselves’. Therefore, there is no doubt that English-speaking consumers will perceive the mark not as unusual but, rather, as a meaningful expression, namely indicating that the goods and service relate to commerce in tickets.

It is acknowledged that the trade mark applied for is ‘TicketTrade’, not ‘Ticket Trade’; however, the Office maintains its opinion, communicated in the notification of 25/04/2018, that in this instance the conjoining of two descriptive words does not render the mark distinctive, as the lack of a space between the words fails to sufficiently disguise the obvious meaning conveyed by the mark. The message expressed by the sign will be clear, direct and immediately obvious to the relevant English-speaking public and, in relation to the services objected to, it is not vague or ambiguous in any way, it does not lend itself to different interpretations and it will not be perceived as unusual or as an allusive, fanciful sign.

The Office considers that ‘TicketTrade’ is sufficiently descriptive to enable the relevant consumer to immediately understand the expression as referring to services through which tickets are bought, sold or exchanged, or similar services, such as those in Classes 35, 39 and 42 in relation to which the objection is maintained. Consequently, there is no doubt that the trade mark applied for informs consumers of the intended purpose of these services.

Each of the grounds for refusal listed in Article 7(1) EUTMR is independent of the others and calls for a separate examination (21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 39; 15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 29). Furthermore, the various grounds for refusal must be interpreted in the light of the public interest underlying each of them. The public interest taken into account in the examination of each of those grounds for refusal may, or even must, reflect different considerations, depending upon which ground for refusal is at issue (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 45-46; 02/07/2002, T‑323/00, SAT.2, EU:T:2002:172, § 25).

As outlined above, the trade mark applied for consists of a combination that merely describe the characteristics of the services objected to.

According to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. Due to its descriptiveness, the trade mark applied for is not capable of distinguishing the services objected to, and thus it is devoid of any distinctive character. It follows that the trade mark applied for cannot be registered on the basis of the ground for refusal under Article 7(1)(b) EUTMR, in conjunction with Article 7(2) EUTMR, in respect of the services to which an objection has been raised.

The applicant argues that a number of marks similar to ‘TicketTrade’, which include identical words or words that have identical or similar meanings to elements included in the applicant’s mark, have been deemed registrable by the EUIPO, including EUTM No 6 360 697 ‘TICKET TRADE’, EUTM No 8 987 745 ‘TOLL-TICKET’S’ and EUTM No 9 414 442 ‘TRADESHIFT’. Furthermore, the applicant submits that, since those marks have been deemed registrable by the EUIPO, to ensure consistency and to maintain natural justice, the mark applied for should also be registered and that it would be unreasonable to refuse the applicant’s mark in such an inconsistent manner.

Although the applicant argues that identical and comparable trade marks have been registered in analogous cases and must be taken into consideration (cf. 12/02/2009, C‑39/08 & C‑43/08, Volks.Handy, EU:C:2009:91), 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 European Union judicature, and not on the basis of previous Office practice, even in relation to the previous registration of an identical trade mark (25/09/2015, T‑707/14, DetergentOptimiser, ECLI:EU:T:2015:696, § 32; 05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 31; 03/07/2003, T‑129/01, Budmen, EU:T:2003:184, § 61).

Prior registrations merely constitute a circumstance that can be taken into consideration without, however, being decisive. The argument regarding the registrability of other ‘similar’ trade marks would be relevant only if the decisions on those marks were based on grounds that called into question the examiner’s assessment, which is not the case here.

Furthermore, it should be pointed out that two of the previous trade marks invoked by the applicant were accepted for registration 8-10 years ago (EUTM No 6 360 697 ‘TICKET TRADE’ and EUTM No 9 414 442 ‘TRADESHIFT’). As regards EUTM No 8 987 745 ‘TOLL-TICKET’S’, the mark was registered in 2012 after a notice of grounds for refusal of had been issued and following a limitation.

The applicant submits that, in the event that the EUIPO rejects the arguments submitted, it reserves the right to submit further arguments. However, the applicant’s request for an extension to submit further arguments is not acceptable and should be dismissed, because it cannot be considered an explicit request for an extension of the time limit. In addition, the Office has already raised all relevant arguments in its previous communication and the applicant has had the opportunity to submit its observations on them. The Office considers that the applicant has failed to explain why it was unable to submit all the relevant arguments and evidence in its previous correspondence, and therefore further opportunity to comment is considered unnecessary. In addition, please be informed that, according to Article 67 EUTMR, you have a right to appeal against this decision.

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 17 883 318 ‘TicketTrade’ is hereby rejected for the following services:

EN-35	On-line trading services in which seller posts products to be auctioned and bidding is done via the Internet; on-line trading services, namely, operating on-line marketplaces for sellers and buyers of goods and services; online trading services in which sellers post products or services to be offered for sale and purchasing or bidding is done via the Internet in order to facilitate the sale of goods and services by others via a computer network.
EN-39	Ticket reservation and booking agency services relating to travel.
EN-42	Providing temporary use of online, non-downloadable e-commerce software to allow users to conduct electronic business transactions in online marketplaces via a global computer network.

The application may proceed for the remaining services, namely for:

EN-35	Advertising; providing a searchable online advertising guide featuring the goods and services of online vendors; providing a searchable online evaluation database for buyers and sellers.
EN-36	Insurance; providing purchase protection insurance services in the field of on-line trading of goods and services by others via a global computer network.
EN-38	Providing user access to search engines; telecommunications services; electronic messaging; providing an online, interactive bulletin board for the transmission of messages among computer users via a global computer network.
EN-39	Travel information and arrangement services provided from an Internet website providing information via means of a global computer network; travel information provided online from a computer database; travel information accessible via a mobile phone utilising wireless application protocol technology; provision of information relating to travel and travel destinations.
EN-42	Operating search engines.

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.

Roxana PISLARU