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

(Article 7 EUTMR)

Alicante, 09/10/2019

TRADE MARK DIRECT

4 The Mews, Bridge Road,

Twickenham, London Richmond upon Thames TW1 1RF

REINO UNIDO

Application No:	018014015
Your reference:	20207
Trade mark:	Thai Music Circle
Mark type:	Word mark
Applicant:	The Thai Music Circle in the UK Limited 20-22 Wenlock Road London N1 7GU REINO UNIDO

The Office raised an objection on 15/03/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 28/03/2019, which may be summarised as follows:

1. The meaning indicated by the Examiner does not apply to goods in class 15.

2. The sign is not grammatically correct; a ‘music circle’ does not exist. The meaning given to each separate word in the objection letter does not fit into a meaningful phrase.

3. It is not clear from the phrase whether the term ‘THAI’ relates to the music or to the members of a group or company. This leads to a fanciful and ambiguous sign unable to establish the exact nature of the goods and services.

4. It is not correct that the mark would ‘inform consumers without further reflection’ of the purpose or nature of the goods or services.

5. Due to the ambiguous character, the consumer would not interpret the sign in any literal sense but would only see it as a catchy allusive phrase.

6. The sign is, at the most, allusive and vague. Trade marks are not required to possess certain original elements but can be suggestive.

7. Similarly structured signs have been registered in the UK or at EUIPO (examples submitted).

8. The sign has unusual construction and is therefore distinctive enough to function as a trade mark for the goods and services in question.

Furthermore the applicant made a claim of acquired distinctiveness through use of the mark. Since the nature of the claim was not clear, on 05/04/2019 the Office sent a letter asking for clarification. Through correspondence dated 08/04/2019, the applicant clarified that the claim under Article 7(3) is a subsidiary claim which will be dealt with once the refusal for lack of inherent distinctive character is final.

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.

General remarks:

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

The Office’s reply to the applicant’s observations:

1. The meaning of the sign has strong connotations to the goods in class 15. Music instruments and their parts and accessories are related to the expression ‘Thai Music Circle’ and the sign will therefore be perceived as a non-distinctive element. The objection has been raised due to lack of distinctive character and not for being descriptive. The sign does not describe the goods in class 15 but has a meaning which is closely related to them. The term ‘Thai Music Circle’ is not distinctive for musical instrument since it would merely be perceived by the relevant consumer as an indication referring to a circle for Thai music or, expressed in a different way, as people grouping together for the purpose of Thai music. Therefore, the sign must be refused in accordance with Article 7(1)(b) EUTMR.

2. The composition of a noun together with the word ‘CIRCLE’ is commonly used when referring to a group or company of people that join for the purpose of performing or enjoying a certain activity. Besides ‘Music Circle’, other examples are ‘Art Circle’, ‘Literature Circle’ or ‘Book Circle’. The sign as a whole therefore makes sense to the relevant consumer who simply would not analyse whether the sign is grammatically correct or not. Furthermore, the consumer would not analyse the meaning of each individual word but would merely see a term which relates to the goods or services in question, although not in a directly descriptive way. The sign ‘Thai Music Circle’ would be perceived as a non-distinctive term and not as a trade mark in relation to goods such as music instruments or educational, cultural, entertainment, publishing and recreational services that relate to music.

3. The Office does not agree that the word ‘Thai’ would be perceived with certain ambiguity in the context of the applicant’s sign. Whether it is interpreted as ‘a circle for Thai music’ or as ‘a Thai circle for music’ the sign would still have a meaning with clear connotations that relate to the goods and services. Being a meaningful sign, the relevant consumer is not likely to stop and think about which of the two meanings is the correct one. The sign would not be perceived as fanciful or undefined but as a simple and non-distinctive term for the goods and services in question.

4. It was never stated in the objection notice that the sign would inform without further reflection of the purpose or nature of the goods or services in question. An objection was raised under Article 7(1)(b) EUTMR because the sign is devoid of any distinctive character. It has a meaning that the relevant consumer will link directly to the goods and services and therefore not see the sign as an indication of a commercial origin.

5. As explained above, the sign is not ambiguous but its meaning will stand out as quite clear to the consumers. The sign would also not be subject to any interpretation in a literal sense since it relates to a concept, ‘Thai Music Circle’, that is understandable as it is and makes sense in relation to the goods and services. It is therefore not merely an allusive sign, catchy or not, but will clearly be perceived as a non-distinctive term for the goods and services in question.

6. The sign is not vague and will be understood by the relevant public as making a clear reference to a ‘Thai music circle’. While it is true that signs do not necessarily need originality in order to function as trade marks, the sign at stake here, ‘Thai Music Circle’ would be seen merely as a message consisting of non-distinctive term for the goods and services in question. The sign is not allusive but consists of a term that the consumer can put in relation to the goods and services. The objection letter offered examples on how it would be perceived by the relevant consumer in respect of the different groups of goods and services. Since the sign gives certain information, it is not likely to be perceived prima facie as a trade mark for the goods and services in question. It follows that it has to be refused in accordance with Article 7(1)(b) EUTMR.

7. As regards the applicant’s argument that a number of similar registrations exist both at EU and national level (UK), 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).

‘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).

Furthermore, the examples provided by the applicant have features (word elements) different from the applicant’s sign or refer to different goods and services. It is therefore not possible to draw any decisive conclusion from the fact that these signs have been registered.

8. The sign does not have any unusual construction but consists of a term that consumers will perceive simply as referring to a group or company joined through and by Thai music. The goods and services relate to Thai music and music circles, some of them in a very direct way (“music instruments” and “education and training in relation to Thai music and culture”, for example) whereas other can involve music or music circles in the way they have been specified (for example publishing services that publish items related to Thai music circles and library services for books regarding Thai music circles). It would not be perceived as a trade mark in relation to the goods and services for which protection is being sought.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 014 015 ‘Thai Music Circle’ is declared to be non-distinctive pursuant to Article 7(1)(b) in the English-speaking territory for all the goods and services claimed.

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.

Elna ISAKSSON