Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 28/11/2018

ORIGIN LIMITED

Twisden Works, Twisden Road

London NW5 1DN

REINO UNIDO

Application No:	017927219
Your reference:	pay-EU-TM
Trade mark:	p@y
Mark type:	Word mark
Applicant:	RedCloud IP Limited Level 39, One Canada Square, Canary Wharf London E14 5AB REINO UNIDO

The Office raised an objection on 27/07/2018 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 17/09/2018, which may be summarised as follows.

1. Applicant claims that the Office has not provided any evidence of its statement that the @ symbol is a rather common misspelling of the letter ‘a’ and that the definitions provided by the examiner do not support this statement. Applicant also attaches supporting documents for his viewpoint that the symbol @ will not be read as the letter “a”. Furthermore the applicant sees as highly unlikely that the relevant public would immediately identify this mark as ‘pay’ without any further mental steps and not as ‘paty’, which has no meaning in the context of the goods and services and therefore isn't descriptive of the goods and services in question.

2. Applicant is convinced that the relevant consumer would most likely understand the sign as the word ‘paty’, which has no meaning in the context of the goods and services in question and therefore it is distinctive and should be allowed for all the goods and services applied for.

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.

The Office’s responses to the applicant’s arguments:

Ad 1)

Applicant claims that the Office findings that the @ symbol is a misspelling letter ‘a’ cannot be supported and as a consequence the Office reference based on the dictionary meaning of the word ‘pay’ does not provide enough evidence to proclaim the sign as being descriptive.

The Office points out that its long-term interpretation of misspellings, is, that ‘a misspelling does not necessarily change the descriptive character of a sign. … Furthermore, consumers will, without further mental steps, understand the ‘@’ as the letter ‘a’. … As a rule, misspellings endow the sign with a sufficient degree of distinctive character when: they are striking, surprising, unusual, arbitrary and/or they are capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the term that they supposedly refer to.’ In the sign in question this threshold was not overcome as there is no such element in the sight at hand. See in this context and in this line the BoA decisions of 06/08/2012, R 716/2012-4 – ‘ACTIVMOTION SENSOR’, or 08/03/2012, R 2297/2011-5 – ‘Xtraordinario’).

Following the applicant’s reference to the Wikipedia the Office draw applicant attention to the following Wikipedia page https://en.wikipedia.org/wiki/A, where it is clearly mentioned that the symbol @ is the descendent of the letter A as well as that the symbol @ is the derived symbol of the letter A.

Moreover, even if the sign had meanings other than that described by the Office, it would still not be accepted for registration (see below). 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).

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).

After the aforementioned analysis of the sign, including the provided evidence, and in line with the objection formulated on 27/07/2018, the Office takes the view that the sign, as the ‘p@y’ or the ‘pay’, ‘serves in normal usage from the point of view of the target public to designate 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) and therefore it is descriptive in compliance with the provision of the Article 7(1)(c).

Ad 2)

Before reacting to the applicant reasoning that the relevant consumer would most likely understand the sign as the word ‘paty’, it is highly relevant how the sign would be seen in the written form, i.e. whether the symbol @ has any distinctive character. The Office per analogy refers to its interpretation of typographical symbols, which can be found in the EUIPO GUIDELINES FOR EXAMINATION OF EUROPEAN UNION TRADE MARKS, PART B, EXAMINATION SECTION 4, ABSOLUTE GROUNDS FOR REFUSAL, CHAPTER 3, NON-DISTINCTIVE TRADE MARKS ARTICLE 7(1)() EUTMR (page 13), states that ‘the typographical symbols will not be considered by the public as an indication of origin. Consumers will perceive them as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin. A similar reasoning applies to common currency symbols, such as the €, £, $ signs;’ and the same is valid for the symbol @ as in the connection with the goods and services in question, such sign will only inform consumers that a specific product or service is related to the IT market sector.

Regarding the claimed understanding of the sign as the word ‘paty’, the Office has to refer to the settled case-law ont the several meanings of the marks mentioned in its reaction to the first argument, as well as has to point out that the application was filed in for the sign ‘p@y’ and not for the sign ‘paty’. Moreover in the context of the services at hand it is by far more likely that the relevant public will read in the sign “p@y” the word “pay” which is a known word and does make perfect sense, rather than the word “paty” which does not have any meaning. 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. The sign ‘p@y’ in its entirety is not a perceptible different from the word ‘pay’ or it is not the unusual nature of the combination in relation to the goods or services, it does not create an impression which is sufficiently far removed from that produced by the word ‘pay’ among the relevant public (for these conditions see 12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32). Therefore the sign ‘p@y’ lacks the quality of newly created neologism. In sum the sign is not distinctive in line with the provision of the Article 7(1)(b) and the Office maintains its objections.

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 17 927 219 is hereby rejected for all the goods and services 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.

Jiri JIRSA