Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 30/04/2019

MISHCON DE REYA LLP

Africa House

70 Kingsway

London, London WC2B 6AH

REINO UNIDO

Application No:	17 938 517
Your reference:	47686-195
Trade mark:	WEGROW
Mark type:	Word mark
Applicant:	WeWork Companies Inc. 115 West 18th Street New York New York 10011 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial 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.

Upon request of 25/10/2019 from the applicant, the Office extended on 26/10/2018 the time limit for submitting observations with two months till 29/12/2018.

On 25/10/2018, the Office confirmed finally the amendments made to the specification of services, and for the sake of good order, the list of goods and services now reads as follows:

Class 35 Business strategy development and management services for emerging, start-up and existing companies; providing office equipment for business meetings and business events; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities; providing coworking facilities; the bringing together, for the benefit of others, of a variety of office sharing services, namely, lease, hire or rental of office equipment, office functions provided by a receptionist, rental of office machinery and equipment, business office services, office administration services for others, procurement service for others relating to office requisites, enabling customers to conveniently compare and purchase those services.

Class 36 Real estate services; real estate services, namely, leasing of real buildings; real estate brokerage; rental of office space; rental of offices for co-working; Incubation services, namely, providing work space to emerging, start-up and existing companies; Providing office sharing facilities equipped with private offices.

Class 43 Providing food and beverage services; providing meeting room services providing space for business meetings and business events.

The applicant submitted its observations on 29/10/2018, which may be summarised as follows.

1. Descriptiveness

• (No evidence provided by the Office that the sign is used to describe or provide information about the objected services. Fundamental misinterpretation and misunderstanding by the Office of the nature of the objected services).

Distinctive character

• (The sign is inherently distinctive).

2. Reservation of the right to submit evidence that the sign has acquired distinctiveness in relation to the objected services.

On 23/11/2018 the Office invited the applicant to submit clarification of the supposed claim under art. 7(3) EUTMR received with the applicant´s observations whether the claim is intended to be a principal or a subsidiary on pursuant to art. 2(2) EUTMIR.

On 04/12/2018 the applicant replied with the request for having the sign reviewed based on inherent distinctiveness.

Based on this reply from the applicant which does not clarify the nature of the claim, the Office considers that no claim under art. 7(3) EUTMR has been made and will accordingly issue a decision on inherent distinctiveness only.

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.

The applicant reserved the right to submit further observations if the objection is maintained by the Office. However, the Office´s decision is based on the arguments raised in its notice of grounds for refusal of 29/08/2018 on which the applicant has had the opportunity to present its observations [made on 29/10/2018]. Moreover, the applicant has already been granted one extension of the time limit with a view to submitting observations. Therefore, based on the above reasoning, the Office cannot comply with the applicant´s request for a new opportunity to submit further observations.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

1. Descriptiveness

• (No evidence provided by the Office that the sign is used to describe or provide information about the objected services. Fundamental misinterpretation and misunderstanding by the Office of the nature of the objected services).

Distinctive character

• (The sign is inherently distinctive).

General remarks

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).

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Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Applicant’s remarks

The Office cannot refer to any evidence that the sign is used, needs to be used or is intended to be used by others in relation to the objected services because there is no such evidence. The Office resorts to contrived and contorted reasoning to the effect that users of the provision of the objected services would understand WEGROW to be describing a characteristic of such services. It can be argued (wrongly in our submission) that WEGROW describes a characteristic of most services of the Nice classification (incl. the provision of legal services, financial services, accountancy services, licensing services, management services, etc.) because such service providers - both for themselves and their customers - are in the business of creating competitive advantage, maximising profit and engaging in other growth focused behaviours consistent with the capitalist model. The Office has not been able to contrive an example of how the sign as a single word is descriptive; the best the Office can do is to put the two words together in the same sentence. This is a deeply unsound and unprincipled basis on which to support an objection under art. 7. The term is not a natural or obvious one which a provider or user of the objected services would use to describe such services or a characteristic thereof and, therefore, the Office's failure to identify any use of the sign is not surprising. The average consumer will clearly perceive the mark WEWGROW as a badge of origin.

The Office´s assertions about the objected services are without any foundation. There is no basis for asserting that shared work spaces are being provided exclusively by business incubators only in order for new and start up companies to develop and grow. It can be disproved simply by considering the applicant which is typical of the major players in the sector. It is a myth to suggest that services such as work and office spaces, shared office space and co-working facilities are provided only in order for "new and start-up companies and entrepreneurs to develop and grow”. The applicant´s services are made available to and used by business of all sizes and types, including some of the world's largest companies. Therefore, the Office has made fundamentally incorrect and unsafe assumptions about the objected services which lack any empirical underpinning and which - as demonstrated from publically available sources/ from an article of 23/03/2018 from UK daily newspaper, The Guardian - is wrong.

The applicant submits that in light of its submissions above in relation to art. 7(1)(c), the objection under art. 7(1)(b) falls away. The sign is inherently distinctive in relation to the objected services and fulfils the essential function of guaranteeing origin to the average consumer. A trade mark like the current sign should not be refused for a lack of originality if it is capable of distinguishing the relevant goods and services.

Office´s comments

As a general rule, the mere combination of two descriptive terms 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 complete word is more than the sum of its parts (‘Biomild’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

The applicant contends that the term ‘WEGROW’ is not a natural or obvious one which provider or user of the objected services would use to describe the services at issue or a characteristic hereof.

The applicant’s submissions are not convincing. Contrary to the applicant’s allegations, the connection between the indication given in the expression ‘WEGROW’ and the services concerned is sufficiently direct for the relevant consumers to perceive the message contained in the sign and for that message to override the sign’s ability to indicate the commercial origin of the services. The interpretation of the mark by the applicant does not affect its recognizable descriptive meaning.

The term ‘WEGROW’ does not create an impression on the part of the relevant public sufficiently removed from that produced by the mere juxtaposition of the words to change their meaning or scope. Thus, despite the interpretations of the applicant, when perceiving the expression ‘WEGROW’ in relation to the services at issue which for the sake of good order are:

Class 35 Business strategy development and management services for emerging, start-up and existing companies; providing office equipment for business meetings and business events; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities; providing coworking facilities; the bringing together, for the benefit of others, of a variety of office sharing services, namely, lease, hire or rental of office equipment, office functions provided by a receptionist, rental of office machinery and equipment, business office services, office administration services for others, procurement service for others relating to office requisites, enabling customers to conveniently compare and purchase those services.

Class 36 Leasing of office space; rental of office space; rental of offices for co-working; Incubation services, namely, providing work space to emerging, start-up and existing companies; providing office sharing facilities equipped with private offices.

Class 43 Providing meeting room services; providing space for business meetings and business events.

it can be assumed that the relevant and reasonably attentive relevant public addressed would immediately think that these services contribute for new and startup companies apart from existing companies to thrive, to build and accelerate business growth, etc.. Therefore, the term ‘WEGROW’ is a straightforward message informing the relevant public about the intended purpose of the services at issue. Moreover, the term will also be seen as a term with a laudatory connotation since it evokes abstract notions which an undertaking seeks to confer on its services for marketing and advertising purposes, namely that the services such as the provision of office space, office equipment and machinery, etc., help the emerging, start-up and existing companies to grow or to consolidate growth.

Moreover, the Office would like to point 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).

As to the applicant´s allegations that there is no evidence that the sign is used, ‘the distinctive character of a trade mark is determined on the basis of the fact that that 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).

As regards the applicant´s argument that the mark may not be in use, 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).

As regards the applicant´s argument that it is up to the Office to show that other similar signs are used in the market, the Court has confirmed that: where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods. In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T 129/04, Plastikflaschenform, EU:T:2006:84, § 19).

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the services to which the application relates, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T 106/00, Streamserve, EU:T:2002:43, § 39).

Lastly, for the sake of clarity it can be pointed out that when the Office in its notice of grounds for refusal asserts that the services at issue are being provided to new and start-up companies and entrepreneurs to develop and grow, existing and grounded enterprises are also included in the definition of ‘entrepreneurs’. The latter term can mean persons who set up businesses and business deals as well as the owners or managers of business enterprises who attempt to make profits.

2. Reservation of the right to submit evidence that the sign has acquired distinctiveness in relation to the objected services.

In its observations, the applicant reserved the right to submit evidence that the sign has acquired distinctiveness in relation to the objected services.

On 23/11/2018 the Office invited the applicant to submit clarification of the supposed claim under art. 7(3) EUTMR received with the applicant´s observations whether the claim is intended to be a principal or a subsidiary on pursuant to art. 2(2) EUTMIR.

On 04/12/2018 the applicant replied with the request for having the sign reviewed based on inherent distinctiveness.

Based on this reply from the applicant which does not clarify the nature of the claim, the Office considers that no claim under art. 7(3) EUTMR has been made and will accordingly issue a decision on inherent distinctiveness only.

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 17 938 517 is hereby rejected in part for the following services:

Class 35 Business strategy development and management services for emerging, start-up and existing companies; providing office equipment for business meetings and business events; business operation of commercial real estate, offices and office space, business operation of commercial real estate, offices and office space, namely, shared office venues with conference facilities; providing coworking facilities; the bringing together, for the benefit of others, of a variety of office sharing services, namely, lease, hire or rental of office equipment, office functions provided by a receptionist, rental of office machinery and equipment, business office services, office administration services for others, procurement service for others relating to office requisites, enabling customers to conveniently compare and purchase those services.

Class 36 Leasing of office space; rental of office space; rental of offices for co-working; Incubation services, namely, providing work space to emerging, start-up and existing companies; providing office sharing facilities equipped with private offices.

Class 43 Providing meeting room services; providing space for business meetings and business events.

The application may proceed for the remaining services, namely:

Class 36 Real estate services; real estate services, namely, leasing of real property and apartments; leasing or renting of buildings; real estate brokerage.

Class 43 Providing food and beverage 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.

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