Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/05/2019

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	018011807
Your reference:	21.6.M114511
Trade mark:	BLACK CARD
Mark type:	Word mark
Applicant:	Black Card LLC 250 Veronica Lane, Suite 206 Jackson, Wyoming 83001 ESTADOS UNIDOS (DE AMÉRICA)

Please disregard the previous Refusal of application for a European Union trade mark sent on 29/05/2019. We apologize for any inconvenience caused.

The Office raised an objection on 08/02/2019 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 03/04/2019, which may be summarised as follows.

1. The applicant argues that the Office has made reference to the website which is clearly targeted at US consumers. Therefore, the references located by the Office are not relevant to any assessment of how the trade mark BLACK CARD would be perceived by consumers in the European Union.

2. Notwithstanding the apparent irrelevance of the referenced article (www.bankrate.com/credit-cards/black-card-offer/ ) to the present matter, said article does, in fact, direct the reader to the Applicant’s credit card services in the section listing famous/well-known cards. None of the other providers of credit card services listed in that article uses the mark BLACK CARD. This supports the conclusion that the word mark BLACK CARD is, in fact, used as an indication of trade origin, referring to services provided specifically by the Applicant.

3. The Applicant has successfully registered the word mark BLACK CARD in the United States of America in respect of services in Class 36.

4. European consumer would not perceive the mark BLACK CARD as providing information about the characteristics of the services for which protection is sought, but rather, as a trade mark, in relation to the claimed services in Classes 35 and 36. The word “BLACK” has connotations of elegance and sleekness: it certainly does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question.

5. The Office has failed to carry out an assessment of how a consumer would perceive the mark BLACK CARD in relation to each of the services claimed in Classes 39, 41, 43 and 45. There is nothing in the mark itself that conveys any information about the class/category of users to whom the services are/shall be made available, or on what basis these services are offered. Even with substantial amounts of imagination and mental analysis, it is inconceivable that consumers could perceive the mark BLACK CARD as describing the services in question.

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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301; 09/07/2008, T-58/07, ‘Substance for Success’, EU:T:2008:269; and consistent case-law on absolute grounds for refusal).

The marks referred to in Article 7(1)(b) are, in particular, those which 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).

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The Office will now respond to applicant’s observations as follows:

1. The applicant argues that the Office has made reference to the website which is clearly targeted at US consumers. Therefore, the references located by the Office are not relevant to any assessment of how the trade mark BLACK CARD would be perceived by consumers in the European Union.

The Office acknowledges that the reference has been made to the US website, but it should be noted that the major credit card service providers are American, like the applicant, but they operate worldwide and are obviously very active in the European Union market. Moreover, regarding the source of the evidence, it is not of much significance that it originate from a website outside of the Member States, as long as they are English-speaking jurisdictions, as despite possible spelling variations, because there is only one English language (Decision of the Board of Appeal of 5 July 1998 in Case R 179/1998-1 – ASCOT, at paragraph 17).

For purely illustrative purposes, the results of an internet search on 29/05/2019 revealed that the expression “black card” is used on the relevant market in the European Union to describe similar credit cards offered by other undertakings:

• https://www.finder.com/uk/the-most-exclusive-credit-cards-in-the-world

In above mentioned article some of the cards are as well recognised as being “black cards”, such as American Express Centurion, or Eurasian Diamond Card (Visa Infinite).

• https://www.independent.co.uk/money/loans-credit/black-cards-frankly-theyre-just-so-last-year-61621.html

In above mentioned article it is indicated that “The one colour that still manages to hold people in thrall is black. A black card gives the impression you are seriously loaded”.

• https://www.telegraph.co.uk/finance/personalfinance/borrowing/creditcards/2766925/Do-black-cards-deliver.html

In above mentioned article it is indicated that “In the 21st century, the snazziest card to flash is the "black" card - at least that's what the high street banks hope”.

It should be noted that the results of an internet search are in line with the facts and arguments that were previously addressed in the notification of 08/02/2019.

2. Notwithstanding the apparent irrelevance of the referenced article (www.bankrate.com/credit-cards/black-card-offer/ ) to the present matter, said article does, in fact, direct the reader to the Applicant’s credit card services in the section listing famous/well-known cards. None of the other providers of credit card services listed in that article uses the mark BLACK CARD. This supports the conclusion that the word mark BLACK CARD is, in fact, used as an indication of trade origin, referring to services provided specifically by the Applicant.

Contrarily to the Applicant, the Office considers that the fact that the referenced article directs reader to the Applicant’s credit card services is not sufficient proof. It is clearly stated in the referenced article: “A black card is a type of extremely exclusive credit card that is almost solely reserved for the ultra-wealthy. Typically, the cards are available on an invitation-only basis.” From this is obvious that the author is referring to special type of credit card, and not solely to the credit card of particular undertaking.

Furthermore, the Office would like to recall the case law which establishes that as regards the applicant’s argument that no other competitors make use of the same combination, ‘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).

3. The Applicant has successfully registered the word mark BLACK CARD in the United States of America in respect of services in Class 36.

In this respect it must be clarified that each country applies different criteria for the registration of trade marks. The mark for which protection is sought has been assessed on its own merits and according to the European Union Trade Mark Regulations and EUIPO practice and the fact that is registered or enjoys protection in the United States of America does not affect an independent examination. Registrations made in third countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(b) and (c) in combination with Article 7(2) EUTMR were met in those countries.

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).

Moreover, an Internet search on 29/05/2019 revealed that Black Card LLC successfully registered "Black Card" as a U.S. trademark in 2009, but the trademark has been cancelled on grounds that it was merely descriptive. (American Express Marketing and Development Corp, et al. v. Black Card, LLC, 2011 U.S. Dist. LEXIS 133151 (S.D.N.Y. November 17, 2011. https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2010cv01605/359155/102/ ).

4. European consumer would not perceive the mark BLACK CARD as providing information about the characteristics of the services for which protection is sought, but rather, as a trade mark, in relation to the claimed services in Classes 35 and 36. The word “BLACK” has connotations of elegance and sleekness: it certainly does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question.

When taken as a whole, the sign BLACK CARD consists exclusively of a meaningful expression that will be easily understood by the relevant public, who will perceive it not as a trade mark but as a non-distinctive indication that does not function as a trade mark for the claimed services.

The interpretation of the sign will not trigger any mental process or require any interpretation in order to arrive at its meaning. On the contrary, it conveys a straightforward and meaningful message that the services applied for concern extremely exclusive credit card.

The applicant raises an argument that the word “BLACK” has connotations of elegance and sleekness. The Office respectfully disagrees with the applicant’s argument and asserts that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 84).

Furthermore, with regard to applicant’s argument that the expression “BLACK CARD” does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question it must be advised 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).

In addition, the sign applied for is a word mark and lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, the sign will not be seen as a badge of origin and does not fulfil the role of a trade mark.

5. The Office has failed to carry out an assessment of how a consumer would perceive the mark BLACK CARD in relation to each of the services claimed in Classes 39, 41, 43 and 45. There is nothing in the mark itself that conveys any information about the class/category of users to whom the services are/shall be made available, or on what basis these services are offered. Even with substantial amounts of imagination and mental analysis, it is inconceivable that consumers could perceive the mark BLACK CARD as describing the services in question.

As already explained in in the notice of grounds for refusal of 08/02/2019 the word combination ‘BLACK CARD’ immediately informs consumers without further reflection that the services objected to are being offered exclusively to the cardholder of the black card (in Classes 39, 41, 43, 45). Black cards are the most prestigious credit cards currently available. They have high credit limits and have a range of benefits as standard. When it comes to the services objected to in Class 39, 41, 43 and 45, the benefits of the black card are personal concierge services, such as making travel arrangements, arranging for ticket reservations for entertainment, sporting and cultural events, making restaurant reservations, personal shopping services etc.

Concierge services cover wide range of assistance services which can be related to making car rental and limousine reservations for others, arranging travel tours for others, making travel arrangements, arranging for ticket reservations for entertainment, sporting and cultural events, the reservation and booking of tickets for shows, theatre, concerts, festivals, sporting events, or other events or activities for cultural or entertainment purposes, making reservations for travel, namely, booking accommodations for travellers, making requested personal and social arrangements and reservations, personal shopping services etc. The fact that these services are classified in different classes is not sufficient to consider these services separately. Therefore, contrarily to the applicant the Office considers that the services covered by the application in Classes 39, 41, 43, 45 are interlinked in a sufficiently direct and specific way.

According to settled case-law, it is sufficient for a ground for refusal to apply to a single homogenous category of goods and/or services. A homogenous category is considered to be a group of goods and/or services which have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T‑118/06, ‘ULTIMATE FIGHTING CHAMPIONSHIP’, paragraph 28). The Office provided an example of why it considers the mark descriptive for each Class of goods for which protection was sought.

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 18 011 807 is hereby rejected for the following services claimed:

Class 35	Promoting the sale of goods and services of others by awarding incentives to consumers for credit card use; providing information about and making referrals in the field of consumer products and services for retail services concerning products, services, events, activities, attractions and facilities in particular geographic locations; providing concierge services for travelers, namely, making business meeting arrangements.
Class 36	Financial services, namely, charge, credit card and debit card services; bill payment processing services; computerised credit authorisation and financial risk management services.
Class 39	Providing travel information; providing flight arrival and departure information; arranging for travel visas, passports and travel documents for persons traveling abroad; making car rental and limousine reservations for others; arranging travel tours for others; providing concierge services for travelers, namely, making travel arrangements; providing customer specific information to meet individual needs, relating to travel, all rendered in business establishments, office buildings, airports, hotels, residential complexes and homes; personal concierge services for others comprised of making requested personal and social arrangements and reservations to meet the needs of individuals, namely providing travel and transport reservation services.
Class 41	Arranging for ticket reservations for entertainment, sporting and cultural events; providing advice to travelers on entertainment, cultural and sporting events; providing customer specific information to meet individual needs, relating to entertainment, events, concerts and theatre, all rendered in business establishments, office buildings, airports, hotels, residential complexes and homes; personal concierge services for others comprised of making requested personal and social arrangements and reservations to meet the needs of individuals, namely the reservation and booking of tickets for shows, theatre, concerts, festivals, sporting events, or other events or activities for cultural or entertainment purposes.
Class 43	Providing advice to travelers on hotels and restaurants; making reservations for travel, namely, booking accommodations for travelers; providing concierge services for travelers, namely, making restaurant reservations; making reservations and bookings for others for accommodations and meals at health spas; providing customer specific information to meet individual needs, relating to lodging and restaurants, all rendered in business establishments, office buildings, airports, hotels, residential complexes and homes; personal concierge services for others comprised of making requested personal and social arrangements and reservations to meet the needs of individuals, namely providing accommodation and restaurant reservation services.
Class 45	Personal concierge services for others comprised of making requested personal and social arrangements and reservations, personal shopping services, personal gift selection and gift reminder services for others, and providing customer specific information to meet individual needs, relating to personal shopping services, all rendered in business establishments, office buildings, airports, hotels, residential complexes and homes.

The application may proceed for “Language translation services” (Class 41).

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.

Marina TOMIĆ