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

(Article 7 EUTMR)

Alicante, 28/08/2018

APPLEYARD LEES IP LLP

15 Clare Road

Halifax, West Yorkshire HX1 2HY

REINO UNIDO

Application No:	017886022
Your reference:	T36577EMM/DXM
Trade mark:	BRAND GUARDIANSHIP
Mark type:	Word mark
Applicant:	Brand Equity Partners Limited Unit 5, Drakes Courtyard, Kilburn High Road London NW6 7JR REINO UNIDO

The Office raised an objection on 11/05/2018 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 11/07/2018, which may be summarised as follows:

1. The word ‘guardianship’ is not descriptive, as it would most likely be understood by the public to refer to the act of protecting or defending a tangible object, such as a person, rather than an intangible entity, such as a brand or branding.

2. The mark is not the most apt expression for describing the services for which registration is sought.

3. The unusual juxtaposition of the word ‘guardianship’ with a word referring to an intangible entity (‘BRAND’) ensures that the overall expression ‘BRAND GUARDIANSHIP’ is not devoid of distinctive character. The unusual juxtaposition gives the mark a degree of lexical inventiveness.

4. The applicant has applied for an almost identical trade mark, which has recently been registered for services in Classes 35, 36 and 42 without any objection. The UK trade mark office has also accepted a similar sign for services in Class 35 without any objection.

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:

Class 35 Business management; Business administration.

Class 36 Financial affairs; monetary affairs; financial management; financial analysis; financing services.

Class 42 Design and development of computer software; computer software design; technological services and design relating thereto; computer technology services.

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).

In the present case, the relevant consumers would perceive the sign as providing information that the services for which registration is sought are for ensuring protection against damage or loss; the services are related to brand development and protection. Therefore, the sign describes the kind and intended purpose of the services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of its competitors.

As regards the applicant’s observations, the Office replies as follows:

1. The word ‘guardianship’ is not descriptive, as it would most likely be understood by the public to refer to the act of protecting or defending a tangible object, such as a person, rather than an intangible entity, such as a brand or branding.

The Office explains that even if the word ‘guardianship’ is more often used to refer to the act of protecting tangible objects than intangible entities it suffices for refusal under Article 7(1)(c) EUTMR that at least one of the possible meanings of the sign is descriptive in relation to the relevant services (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32; confirmed by 12/02/2004, C 363/99, Postkantoor, EU:C:2004:86, § 97). The Office has to analyse the sign as a whole to decide how the words it consists of will be understood in this overall context. The services are, in the present case, various kinds of brand development and protection services, or services that are related to brand development and protection, and the mark ‘BRAND GUARDIANSHIP’ indicates directly that the applicant offers brand protection services. There is no need for an additional mental step to understand the connection between the mark and these services. Therefore, the Office cannot agree with the applicant that there is no obvious or direct link between the trade mark and the services to which an objection has been raised. The relevant consumer will understand the word combination in the context of the services in the way the Office has claimed.

2. The mark is not the most apt expression for describing the services for which registration is sought.

As regards the applicant’s argument that there are some expressions that are used more often to describe the services in question or 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 the 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).

3. The unusual juxtaposition of the word ‘guardianship’ with a word referring to an intangible entity (‘BRAND’) ensures that the overall expression ‘BRAND GUARDIANSHIP’ is not devoid of distinctive character. The unusual juxtaposition gives the mark a degree of lexical inventiveness.

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).

In the present case, there is no real difference between the word combination ‘BRAND GUARDIANSHIP’ and the mere sum of the words ‘BRAND’ and ‘GUARDIANSHIP’. The overall impression conveyed by the mark is not different from the mere combination of the individual meanings of each of the words composing it. The applicant did not submit any arguments, evidence or explanations about another meaning of or any different overall impression that could be created by the word combination in question. Therefore, the Office maintains its view that the sign is descriptive and non-distinctive.

4. The applicant has applied for an almost identical trade mark, which has recently been registered for services in Classes 35, 36 and 42 without any objection. The UK trade mark office has also accepted a similar sign for services in Class 35 without any objection.

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 not appropriate to compare the mark applied for with the registrations cited by the applicant. This is mainly because any given mark should be assessed as a whole, taking into account the relevant goods and services. In the present case, one of the trade marks referred to by the applicant was filed more than 17 years ago; it is obvious that the market situation has changed and that Office practice and case-law are now more developed than they were 17 years ago. All these circumstances may lead to a different conclusion in the present trade mark examination proceedings.

Moreover, ‘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).

As regards the similar UK registration 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 17 886 022 is hereby rejected for the following services:

Class 35 Advertising, marketing and promotional services; advertising services to create corporate and brand identity; brand creation; brand evaluation; brand positioning; brand strategy; brand testing; brand development; brand concept and brand development services for corporate and individual clients; branding services, namely, consulting, development, management and marketing of brands for businesses and/or individuals; brand imagery consulting services; marketing and consulting services in the field of promoting and tracking the goods, services, and brands of others through all public communication means; advertising and publicity services, namely, promoting the goods, services, brand identity and commercial information and news of third parties through print, audio, video, digital and on-line medium; advertising services, namely, creating corporate and brand identity for others; public relations, public relations services; publicity services; business consultancy; business networking services; production of marketing, promotional and advertising material; business consultancy services in the nature of corporate/business identity creation, development, evaluation, and management; consultancy, advisory and information services for or in relation to any or all of the aforementioned services in this Class.

Class 36 Financing services; financial services in relation to brands and brand identity; financial consulting; financial services in relation to corporate/business identity creation, development, evaluation, and management; consultancy, advisory and information services for or in relation to any or all of the aforementioned services in this Class.

Class 42 Design services; brand design services; design of brand names; website design services; design services in relation to corporate/business identity creation, development, evaluation, and management; consultancy, advisory and information services for or in relation to any or all of the aforementioned services in this Class.

The application may proceed for the remaining services.

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.

Liina PUU