Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/07/2019

FIELDFISHER LLP

IP Protection Department

8th Floor

Riverbank House

2 Swan Lane

London EC4R 3TT

REINO UNIDO

Application No:	018018321
Your reference:	TIC.033-0035
Trade mark:	E-TICKET Print it!
Mark type:	Figurative mark
Applicant:	Ticketmaster Česká republika, a.s. Jungmannova 26/15 CZ-110 00 Nové Mesto, Praha 1 REPÚBLICA CHECA

The Office raised an objection on 05/03/2019 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. Following applicant request on 03/05/2019, extension of time limit has been granted on 08/05/2019.

The applicant submitted its observations on 10/07/2019, which may be summarised as follows:

1. Descriptiveness and lack of distinctiveness must be determined not only in relation to each element of the mark taken separately but also in relation to the mark as a whole.

2. The Office failed to conduct proper analysis of the nature or characteristics of the goods and services in question.

3. There is no direct, specific and unequivocal descriptive meaning of the mark for any of the goods and services at issue.

4. It has not been shown by the Office that the mark lacks distinctive character.

5. The same mark was already accepted by the Office for registration as well as other figurative marks containing the word element ‘TICKET’.

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 waive the objection for the following goods:

Class 9 Covers for sound data mediums.

Class 16 Paper covers for hardware, software and technical data mediums.

The objection is maintained for the remaining goods and services.

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.

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).

First, the applicant argues that descriptiveness and lack of distinctiveness must be determined not only in relation to each element of the mark taken separately but also in relation to the mark as a whole.

In reply, the Office notes that all separate elements of the mark in question are descriptive and/or non-distinctive for the goods and services in respect of which the objection is maintained. The word element ‘E-TICKET’ which will be understood as electronic ticket describes the kind and purpose of the goods and services concerned whereas the word element ‘Print it!’ merely provides that electronic tickets that the goods and services relate to can be printed. The decoration at the beginning of the letter ‘E’ will be immediately perceived by the average member of the public as a part of QR code, which nowadays is commonly used for product tracking, item identification, document management, general marketing, and thus is non-distinctive.

Merely putting the aforementioned elements together does not endow the mark with sufficient distinctive character in order to be accepted for registration. Moreover, contrary to the applicant’s opinion, the stylization of the elements (i.e. colours, fonts, sizes) and their positioning in the mark are marginal and thus will not attract the public’s attention in order to serve as identifiers of the commercial origin of the goods and services concerned.

Second, the applicant complains that the Office failed to conduct proper analysis of the nature or characteristics of the goods and services in question.

In this regard, it should be noted that in its provision refusal letter the Office provided reasons as to why the mark should be refused registration in respect to the goods and services concerned.

Nevertheless, as indicated above, after considering the applicant´s arguments in reply the Office has decided to waive the objection in respect of some of the goods. However, it should be upheld for the remaining goods and services as the mark is directly descriptive of their characteristics and thus also lacks distinctive character.

In respect of the goods in Class 9, which are basically various IT equipment and programs, the mark indicates their kind and purpose, namely that they can serve for producing or acquiring electronic tickets that can be printed. For goods in Class 16, which are various manuals and instructions, the mark describes their subject-matter, namely that they contain information about electronic ticketing (e.g. how to operate respective hardware and software, etc.). The same argumentation applies in respect of training service contained in Class 41. As to the services in Class 35 that relate to managing of data and the services in Class 42 that relate to computer programs and software, the mark provides that they serve for electronic ticketing purposes, e.g. management of the data on ticket purchases online or maintenance of specialized software used for electronic ticketing. In contrast to what is argued by the applicant the fact that the aforementioned goods and services do not specifically refer to ticketing is irrelevant as their broad specifications include goods and services used for those purposes. Therefore, since the applicant itself did not explicitly exclude the goods and services that relate to ticketing, the mark has to be rejected in respect of the entire specifications. Finally, for the services in Class 41 that relate to ticket office the mark provides direct and specific information on their kind and purpose, i.e. that service provider provides a possibility to obtain electronic ticket that can be printed.

Third, the applicant claims that the Office did not show that the mark lacks distinctive character.

However, as provided in the provision refusal letter, given that the mark has a clear descriptive meaning, it is, on that account, necessarily devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39). In other words, the mark will not be able to identify the products and services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those products and services from those of other undertakings.

Fourth, it is argued that the Office’s objection to the mark is against the Common Practice agreed between the Member States of the European Union in the framework of the European Trade Mark and Design Network (ETMDN)¹ as its figurative elements suffice to endow it with distinctive character.

However, the Office considers that neither the figurative elements contained in the mark, nor its graphical representation is sufficient on its own to accept the mark for registration. As mentioned above, the figurative element representing part of QR code is non-distinctive for the goods and services concerned. Moreover, the colours used, typefaces and size of the elements and their positioning are rather commonplace.

Fifth, the applicant puts forward that the same mark was already registered by the Office in 2009 and the current application is only re-filing of that mark. Moreover, it argues that the Office has also accepted a number of other figurative marks containing the word element ‘TICKET’.

In this respect, it should be observed that 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 should be added that the practice of the Office in examining the marks that contain figurative elements has been aligned with the aforementioned Common Practice which was adopted already after the filing of the applicant’s previous mark which could also explain the different outcome of the examination in the present case.

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 18018321 is hereby rejected for the following goods and services:

Class 9 Computers and their equipment, hardware, completed computer programs, recorded programs for computers, completed computer software, technical data mediums.

Class 16 Manuals, instructions, user and other manuals, operating instructions, other documentation for programs and software.

Class 35 Systematization of informations to computer databases.

Class 41 Ticket office to theatre, film, musical and other art performances, ticket office to exhibitions, sightseeing (museums), congresses, conferences and other cultural, sports, educational and art actions, commission of ticket sale to theatre, film, musical and other art performances, commission of ticket sale to exhibitions, sightseeing (museums), congresses, conferences and other cultural, sports, educational and art actions, providing of hardware training, providing software and computer training.

Class 42 Computer programming, software lease (computer program lease), software construction (computer program construction), maintenance of computer program and software, consulting for computer programs and software, maintenance and operating of computer databases; Data translation to computer databases.

The application may proceed for the remaining goods:

EN-9	Covers for sound data mediums.
EN-16	Paper covers for hardware, software and technical data mediums.

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.

Laima IVANAUSKIENE