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

(Article 7 EUTMR)

Alicante, 18/06/2020

TENNANT IP LIMITED

10 Llanthewy Road

Newport Newport [Casnewydd GB-CNW] NP20 4JR

REINO UNIDO

Application No:	018008906
Your reference:	TIP1024
Trade mark:	Rightmove
Mark type:	Word mark
Applicant:	Rightmove Group Limited Building Number 2, Caldecotte Lake Business Park, Milton Keynes Milton Keynes MK7 8LE REINO UNIDO

The Office raised an objection on 20/03/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is partially devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 16/09/2019, which may be summarised as follows:

1. The unusual combination of the two words ‘right’ and ‘move’ together serves as giving the mark a minimum level of inherent distinctiveness. In its assessment of the sign the Office has overlooked that the different meanings of the two words making up the mark provide it with a certain degree of ambiguity and allusive content. This is especially the case for the word ‘move’ which does not only mean action but also refers to changing places in the sense of a removal or relocation, which in connection with the real estate related services offers the consumer a non-literal suggestion as to the impact of the services on him.

Further it needs to be taken into account that several mental steps are required to see the meaning on which the Office based its objection in the sign. In detail the sign needs to be split up in two different words, both words individually need to be analysed for their meaning and then the understanding of these elements needs to be combined.

Last it needs to be taken into account that, according to jurisdiction, ‘the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details’. Applied to the sign at hand the consumer will therefore see the one word ‘Rightmove’. The Office has in its analysis split up the mark in an artificial way. The applicant does not seek protection for the combination ‘right move’ but for the single sign ‘Rightmove’ and does not intend to prohibit the use of the combination of the words separated by a space to third parties.

2. The applicant uses the sign ‘Rightmove’ since 2001 and is the proprietor of a prior UK registration number UK00002432055 for “Rightmove”, that has been registered since September 2006 for the same goods and services.

3. The mark ‘Rightmove’ has acquired distinctive character through its use within the European Union. This claim is made as a subsidiary claim.

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. As regards the argument that the word (combination) constituting the sign at hand is to be understood as a neologism and even if analysed can have several meanings it is to be noted that

‘a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word 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, with the result that the word is more than the sum of its parts …(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

Further, 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).

The reasoning of the Doublemint decision is to be applied analogously for signs that in one of their meanings are promotional and laudatory and therefore devoid of distinctive character.

Thus the fact that the term elements of the mark ‘right’ and ‘move’ have more than one dictionary meaning does not alter the non distinctive character of the word combination.

The Office further maintains its position that the public will perceive the mark as meaning ‘correct action’ without any mental analysis. Indeed it is true that ‘the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details’. However, that does not mean that the consumer perceives only the literal meaning of a sign. To the contrary the consumer tends to see the sign as it makes the most sense or is best known to him from previous experience. So while the legal explanation does give the impression of a complicated analysis the perception of the consumer is automatic and without mental steps involved. For the current sign the consumer does not know a word ‘Rightmove’ but is well aware of the existing term ‘right move’ with the meaning ‘correct action’. Any other combination of dictionary meanings of the words is odd and does not make any sense or even less distinctive than the understanding laid out in the objection (e.g. ‘fair relocation’ would be even descriptive for part of the services).

Last it needs to be pointed to the fact that the Office evaluates the registrability of a mark based on the sign and the goods and services as they appear on the register, taking into account the legal rights deferred to the applicant by its registration. Therefore any intentions of the applicant as to how it intends to use a mark or any assurances as to that it will not or only in part exercise its rights out of the registration can not be taken into account.

2. As regards the national registrations 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).

In the present case the Office has taken note of the UKIPO registration, however does not know any details as to why the UKIPO has decided to register the mark and maintains its position that the mark is falling foul under Article 7(1) b EUTMR.

3. The Office has taken note of the subsidiary claim of acquired distinctiveness according to Article 7(3) EUTMR. The claim is reflected in the present decision.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 008 906 is declared to be non-distinctive in the English speaking part of the European Union for the following services:

Class 36 Estate agents; real estate property services, including over a global computer network or the Internet; real estate mortgage brokers; valuation services; valuation services relating to the surveying of buildings and properties; property managers and letting agents; general property dealers and managing agents in all types of properties and developments; property leasing services; financial services; arranging of loans and lending services; re-financing services; financial, mortgage and loan brokering and loan advice; financial evaluations; leasing and lease financing; investment services; insurance services; credit services including issuance of credit cards; financial services associated with promotional incentive schemes and loyalty schemes; advice, information and consultancy services relating to all the aforesaid services.

Class 42 advice and support of information provided from computer systems and the Internet.

Class 45 Property conveyancing and legal services; surveillance of chattels.

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.

Volker Timo MENSING