Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 14/12/2018

RITE Education Associates

Flat 39 199 Old Marylebone Road

London NW1 5QR

REINO UNIDO

Application No:	17 939 104
Your reference:
Trade mark:	The Change Leader Awards
Mark type:	Word mark
Applicant:	RITE Education Associates Flat 39 199 Old Marylebone Road London NW1 5QR REINO UNIDO

The Office raised a partial objection on 21/08/2018 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 21/08/2018, which may be summarised as follows:

1. Descriptiveness/distinctive character

2. Similar marks registered by national office

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.

1. Descriptiveness/distinctive character

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 ºserve 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 applicant does not agree with the Office on its’ grounds for refusal. The sign 'The Change Leader Awards' is not descriptive. It is specific as it refers to the awards associated with the 'International Society of Change Leaders' (the trading name of the applicant´s organisation). 'The Change Leader Awards' is therefore distinctive and not descriptive.

Office’s comments

The Office still maintains its position that the sign ‘The Change Leader Awards’ in relation to the services at issue in Class 41 which for the sake of good order are:

Class 41 Organising competitions; organization of competitions; organisation of competitions; competitions (organising of education -); organising of education competitions; organization of education competitions; arranging and conducting competitions; organisation of competitions and awards; organising of competitions for education; competitions (organization of -) [education]; organisation of competitions (education); organization of competitions [education]; competitions (organisation of -) [education]; arranging of competitions for training purposes; arranging of competitions for educational purposes; services for the organisation of competitions; organisation of conferences, exhibitions and competitions; arranging of competitions for education; organisation of competitions for education; organization of competitions for education; organisation of competitions [education]; arranging and conducting of competitions [education].

would be perceived by the relevant public as giving straightforward and direct information about these services, namely that these services are the organisation of award competitions for educational purposes, awarded in order to recognize leaders who know how to be in the forefront, how to build a solid platform for change and who know how to bring about innovation and drive, thus enthusing other people.

Therefore, given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable also 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 other undertakings.

2. Similar marks registered by national office

Applicant´s remarks

The applicant has already the sign 'The Change Leaders'¹ registered by UK Intellectual Property Office/UKIPO and the same office has accepted the application for the sign 'The Change Leader Awards'² and published it.

Office´s comments

As regards the national decisions 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  17 939 104 is hereby rejected in part for the following services:

Class 41 Organising competitions; organization of competitions; organisation of competitions; competitions (organising of education -); organising of education competitions; organization of education competitions; arranging and conducting competitions; organisation of competitions and awards; organising of competitions for education; competitions (organization of -) [education]; organisation of competitions (education); organization of competitions [education]; competitions (organisation of -) [education]; arranging of competitions for training purposes; arranging of competitions for educational purposes; services for the organisation of competitions; organisation of conferences, exhibitions and competitions; arranging of competitions for education; organisation of competitions for education; organization of competitions for education; organisation of competitions [education]; arranging and conducting of competitions [education].

The application may proceed for the remaining services, namely:

Class 41 Entertainment services relating to competitions; organising of competitions for entertainment; competitions (organization of -) [entertainment]; organisation of competitions (entertainment); organization of competitions [entertainment]; arranging of competitions for entertainment purposes; competitions (organisation of -) [entertainment]; organising of competitions [entertainment] by telephone; arranging of competitions for cultural purposes; arranging of competitions for entertainment; organisation of competitions for entertainment; organization of competitions for entertainment; organisation of competitions [entertainment]; entertainment services in the nature of competitions; arranging and conducting of competitions [entertainment].

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.

Finn PEDERSEN