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

(Article 7 EUTMR)

Alicante, 21/12/2018

UK EDUCATION CONSULTANCY SERVICES LTD

55 Smithy Lane Lower Kingswood

Tadworth Surrey KT20 6UA

REINO UNIDO

Application No:	017937009
Your reference:
Trade mark:	European Journal of Social Sciences (EJSS)
Mark type:	Word mark
Applicant:	UK EDUCATION CONSULTANCY SERVICES LTD 55 Smithy Lane Lower Kingswood Tadworth Surrey KT20 6UA REINO UNIDO

The Office raised an objection on 29/08/2018 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 04/11/2018 and on 05/11/2018, which may be summarised as follows.

1. According to the applicant the components of the sign ‘’European Journal of Social Sciences (EJSS)’’ may have meanings as found in the objection of the Office however the sign as a ‘whole’ is different from the sum of the parts hence the mark in entirety should have distinctiveness.

2. The applicant claims that the sign ‘’European Journal of Social Sciences (EJSS)’’ is in use since September 2017 and has since acquired distinctive character and provides evidence thereof in the form of printed information from the search engines Google, Yahoo and Bing..

3. The sign ‘’European Journal of Social Sciences (EJSS)’’ is a registered trademark in the UK.

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.

With regards to the arguments of the applicant:

ad 1)

The Office in its objection letter sent on 29/08/2018 examined the sign in its entirety, not only its individual components, but also the sign as a whole, and concluded its descriptive and non-distinctive character. It is compatible with an examination to examine each of the mark’s individual components (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). When composed elements of the sign are descriptive of characteristics of the goods or services in respect of which registration is sought the sign is itself descriptive in the meaning of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the sign as a whole from the mere sum of its parts: that assumes that, there is unusual nature of the combination in relation to the goods or services, the sign 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 (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In this case neither a neologism nor a sign distant from the sum of its parts was created. The sign describes a publication (Journal) in the field of Social Sciences specifically relevant for or linked to the European continent and/or originates from a European-based undertaking. Beyond its obvious semantic purely informative meaning, the sign does not enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark (i.e. as an indication of the commercial origin) for the goods and services in question. The abbreviation ‘EJSS’ obviously stands for ‘European Journal of Social Sciences’.

ad 2)

The Office points out that for the examination of absolute grounds it is irrelevant whether the sign is in use by third parties (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39) or whether it is not in use in the market at all (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19), the only matter relevant is whether the sign acquired distinctiveness through use by the applicant. However as the applicant indicates its claim of acquired distinctiveness through use as subsidiary, the Office cannot examine this issue at this moment, when it concludes whether the sign has inherent distinctiveness or not. Therefore the Office will examine the subsidiary claim of the applicant at later stage according to the relevant EU legislation.

ad 3)

As far as the acceptance of the sign ‘’European Journal of Social Sciences (EJSS)” by the UK Intellectual Property Office (UKIPO) is concerned, the Office points out that this has been taken into account. However, the Office does not consider that it should follow the UK example, for the reasons stated bellow. It must be recalled that national decisions cannot relieve the Office of its duty to arrive at its own reasoned decision and, furthermore, the Office is not bound by national office decisions (e.g. judgment of 27/02/2002, T-106/00, ‘Streamserve’). It follows that it is the trade mark law of the U.K. which determines whether the sign was validly acquired and what scope of protection it has.

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 EUTM No 17 937 009 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) for all the goods and services claimed. The absolute grounds for refusal under Article 7(1)(b) and (c) precludes the registration of the sign ‘’European Journal of Social Sciences (EJSS)’’ as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Jiri JIRSA