Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 18/01/2019

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	017950800
Your reference:	T48892EU/ARG/asm
Trade mark:	Computer Services Solutions
Mark type:	Figurative mark
Applicant:	Computer Services, Inc. 3901 Technology Drive Paducah Kentucky 42001 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/10/2018 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 09/11/2018, which may be summarised as follows.

1. The figurative element is a distinctive sign, being registrable in its own right. It does not even allude to the nature of the goods or services. Having regard to the distinctive character of the figurative element, it is clear that the mark at issue does not consist “exclusively” of such signs.

2. Regard must be had to the overall impression created by the mark. Whilst appearing at the end of the mark, the figurative element is of greater height than the word element and would not be overlooked in the overall consideration of the mark. Indeed, the figurative element forms a striking and memorable element of the mark.

3. The Applicant provides examples of marks that should be considered non-distinctive. Further examples of registered EUTMs that are comparable to the mark of the present application.

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.

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).

1. The figurative element is a distinctive sign, being registrable in its own right. It does not even allude to the nature of the goods or services. Having regard to the distinctive character of the figurative element, it is clear that the mark at issue does not consist “exclusively” of such signs.

Terms or signs that are non-distinctive, descriptive or generic may be brought out of the scope of a refusal based on Article 7(1)(b), (c) or (d) EUTMR if combined with other elements that make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(b), (c) and/or (d) EUTMR may not apply to signs consisting of a nondistinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.

In practice this means that one of the main questions that the Office must answer is whether the mark is figurative enough to reach the minimum degree of distinctive character that is required for registration.

To allow registration of a descriptive expression, the stylisation or graphics of the sign must be sufficiently important to require the relevant public to make a mental effort to perceive the link between the word components and the goods and services applied for.

In the present case, the figurative element, is not sufficient to confer the minimum distinctive character on the sign that is required for the latter to be registered (11.07.2012, T-559/10, Natural beauty, EU:T:2012:362, § 25 to 27 ). In fact, the rhomboid device at the end of the words, will not readily lead the consumer to perceive the sign overall as having a meaning as a trade mark in the sense of making it possible to assign, in isolation or jointly, a commercial origin to the goods or services. Consumers will perceive this figurative element simply as a decorative element, and therefore the sense of the generic, descriptive expression will not be changed by this figurative element and it will likewise not confer the minimum degree of distinctive character on the whole.

The figurative component of the sign, incorporated after the word elements does not include characteristics that might immediately attract the consumer’s attention as indicating the commercial origin of the goods and services in question. The central and foremost important element of the trade mark is composed by the words, which have a clear meaning for the relevant consumer in relation to the goods and services in question. The rhomboid form is not at all predominant in the mark and is a banal element. The relevant consumer would anyway perceive the sign as providing information about the kind and intended purpose of the goods and services in question, that is, that they relate to problems solving in the IT commercial sector.

The sign is clearly descriptive for the goods and services claimed. For a consumer to develop brand loyalty, firstly the consumer has to identify the sign as a source of origin for the goods being sold with respect to other companies trading in the same sector. In the present case, the clear descriptiveness of the sign would only inform the relevant consumer that the goods and services provide customers with computing solutions, that is, solutions and services for their IT needs.

2. Regard must be had to the overall impression created by the mark. Whilst appearing at the end of the mark, the figurative element is of greater height than the word element and would not be overlooked in the overall consideration of the mark. Indeed, the figurative element forms a striking and memorable element of the mark.

The most obvious idea that comes to mind with the expression in relation to the goods claimed is that of services which provide computer solutions. Adding a small indefinite rhomboid figurative element to the word elements like the one in the sign, does not bestow upon it with any additional characteristic such as to render the trade mark, taken as a whole, arbitrary (see Judgment of 26/10/2000, T-345/99, TRUSTEDLINK, EU:T:2000:246, § 37; Judgment of 31/01/2001, T-331/99, EU:T:2001:33, GIROFORM, § 25; and Judgment of 12.01.2000 in case T-19/99, COMPANYLINE, EU:T:2000:4, § 26).

The Office considers that there is no element of fancifulness or any unusual combination of words with the figurative element that taking the sign as a whole, might require something of consumers or may be striking and memorable enough to provide distinctive character to the sign as a whole in relation to the goods and services in question. Despite the figurative element, which is a small indefinite rhomboid hardly bigger than the letters, the mark is considered to be devoid of any features which would validate it for registration.

The nature of the figurative element is so negligible that it does not endow the trade mark as a whole with any distinctive character. The expression would be clearly understood by the relevant public and would not be perceived as a designation for the goods of a particular undertaking. The trade mark is not considered without logic or meaning as consumers would understand that the goods and services are for computer services solutions. Consequently, it would be difficult to conceive that the English-speaking average consumer in the European Union would regard such a simple, meaningful expression as a trade mark rather than a word combination that describes the goods and services at issue.

As explained above the Office considers that the mark applied for taken as a whole is descriptive of the characteristics of the goods and services for which protection is sought, and therefore, it is also devoid of any distinctive character.

3. The Applicant provides examples of marks that should be considered non-distinctive. Further examples of registered EUTMs that are comparable to the mark of the present application.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

However, the Office would like to comment on the registered EUTMs presented by the applicant that they were either not found or refused. As regards the mentioned EUTM 01 719 939 ‘TAILORED FINANCIAL SOLUTIONS’, it is worth noting that it was registered in 2001 and the practice of the Office since then has notably evolved. In effect, through the years the Office has become much stricter as regards the validation of figurative trade mark applications.

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 17 950 800, , 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.

Jesús ROMERO FERNÁNDEZ