Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/12/2018

AgreementsDesk Ltd.

Cumberland Place 23A Greenways Drive

Ascot Windsor and Maidenhead SL5 9QS

REINO UNIDO

Application No:	017950509
Your reference:
Trade mark:	legalcounsel.tech
Mark type:	Word mark
Applicant:	AgreementsDesk Ltd. Cumberland Place 23A Greenways Drive Ascot Windsor and Maidenhead SL5 9QS REINO UNIDO

The Office raised an objection on 07/03/2018 pursuant to Article 7(1) EUTMR because it found that the trade mark applied for is not eligible for registration under Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, for the reasons set out in the attached letter, which forms an integral part of this decision.

The Office maintains that, taken as a whole, the sign ‘legalcounsel.tech’ will be regarded by the relevant English-speaking consumers as merely informative of the nature of the services concerned: providing legal counsel in technological legal matters. Therefore, the mark conveys obvious and direct information regarding the nature of the services in question.

Moreover, the sign in question do not possess any feature that allows the mark to fulfil its essential function for the goods for which protection is sought. The aforementioned combination will immediately inform the relevant consumer that the legal services objected concern the provision of legal counsel in the field of technology.

The merging of two common words as ‘LEGAL and ‘COUNSEL’ by simply removing the space that would normally separate them in written language or combining them in a grammatically correct expression does not necessarily give rise to an invented word that is fanciful or arbitrary. Additionally, the element ‘.tech’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the services covered by the trade mark application can be obtained or viewed online, or are internet related.

The applicant failed to submit observations within the time limit. For the reasons set out in the letter of objection, and pursuant to Article 7(1) EUTMR, the application for European Union trade mark No 17 950 509 is hereby rejected for all the 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.

Christiano DOS SANTOS TIMBO