Decision on the inherent distinctiveness of an application

for a European Union trade mark

(Article 7 EUTMR)

Alicante, 10/09/2019

FIELDFISHER LLP

IP Protection Department

8th Floor

Riverbank House

2 Swan Lane

London EC4R 3TT

United Kingdom

Application No:	18018322
Your reference:	TIC.033-0036
Trade mark:
Mark type:	Figurative mark
Applicant:	Ticketmaster Česká republika, a.s. Jungmannova 26/15 CZ-110 00 Nové Mesto, Praha 1 Czech Republic

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 forming an integral part of the present decision.

The applicant submitted its observations on 05/07/2019, which may be summarised as follows.

1. Descriptiveness and distinctiveness of a mark must be assessed not only in relation to a sign’s elements but to the sign as a whole too. The Office failed to provide argument as to why there is direct relationship between the sign and the goods and services claimed, and it relied purely on dictionary definitions.

2. The device element of the sign is not a perceptible QR code and it is merged with the letter ‘M’ and this combination could also be viewed as ‘SM’. Also, the term ‘Show it!’ is not a common promotional statement.

3. The test of finding minimum degree of distinctiveness must look at the best case scenario.

4. The sign was registered before and it expired on 03/07/2018, and there are several other marks on the register that contains the word ‘Ticket’ with some figurative elements.

5. If the Office decides to maintain the objection, the applicant claims that the sign has acquired distinctive character pursuant to Article 7(3) EUTMR and Article 2(2) EUTMIR.

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 for the reasons set forth in detail in the objection letter and also for the reasons below.

1.

The applicant claims that the Office wrongly assessed the mark on the basis of its components instead of examining it as a whole. However, there is nothing in the objection letter that would support this. Having provided the dictionary definition of the sign’s individual elements as well as example of use of QR codes on mobile phones, the Office concluded that the relevant, English-speaking consumer would understand both the individual elements and their sum which conveys no additional information. In particular, the Office linked this, clear message of the sign to the actual goods and services by finding that “the relevant consumers would perceive the sign as providing unambiguous information that the relevant goods can be used for producing tickets (for example for issuing them at airports or stations), with the software also being adapted for this function. In addition, the mark merely indicates that the relevant services have the purpose of selling tickets or providing and managing the necessary software. ” It is recalled that if a trade mark is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59). In the present case, each of the sign’s verbal and figurative elements as well as their sum makes a direct and clearly understandable reference to the purpose and method of use of the goods and services concerned. It cannot, therefore, be endorsed in the present case that certain elements are capable of preventing objection since each was found to be descriptive.

With regard to the argument that the Office relied purely on dictionary definitions, it is recalled 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). In fact, in the objection letter the Office has shown the meanings upon which it has based its objection and neither these definitions nor the actual information conveyed by their sum were contested by the applicant. Indeed, it is difficult to contest that consumers could interpret the sign other than the way in which it was defined in the objection letter, moreover, they could do it without any particular mental effort. This is not altered by the use of the imperative ‘Show it’ which is a very common word in the imperative followed by a direct object: it is a simple invitation directly relating to the words preceding it, ‘M-TICKET’. Consumers will, therefore, have no difficulty recognizing and directly linking this instruction to the purpose and nature of the goods and services as there is nothing unusual in it in the relevant context, namely, tickets that are shown. Finally, the applicant claims that the device in the sign is not a QR code and it could actually be perceived, together with the following term, as ‘SM’. In this regard, it must be noted that, according to settled case-law, descriptiveness and distinctive character of a trade mark can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (see judgment of 29/4/2004, joined cases C-468/01 P to C-472/01 P, ‘Procter & Gamble v OHIM’, paragraph 33; judgment of 08/05/2008, C-304/06 P, ‘Eurohypo v OHIM’, paragraph 67; and judgment of 21/01/2010, C-398/08 P, ‘Audi v OHIM’, paragraph 34). In the present case, the relevant public is likely to perceive the sign’s device as a QR not only because of its high similarity to such a code including those cited by the applicant, but also because the sign conveys the obvious and immediately graspable reference to how mobile tickets or mobile ticketing functions. In this particular context, it can safely be presumed that at least a very significant portion if not the whole of the public would make the obvious association between a device appearing to be or resembling a QR code and the purchase or use of the goods and service via mobile phones or mobile technology. This perception is not altered by the merging of the device with the letter ‘M’ as consumers are likely to be able to identify these two elements separately. The applicant’s argument that the device could also be read as SM must be set aside because it would require a very close look and a certain degree of imagination to perceive that part of the sign in this way as opposed to the much more natural and likely perception of these elements as determined by the Office, namely as a combination of a QR code and the verbal elements ‘M-TICKET’.

Based on all the foregoing, the applicant’s argument in this regard must be rejected and the sign is considered to be descriptive as a whole.

2.

The applicant refers to a principle of best case scenario which is supposed to be applied for marks to find a minimum degree of distinctiveness and makes reference to the judgment of 08/03/2007, T-441/05, ‘IVG Immobilien’, in order to point out that a

minimum degree of distinctiveness is sufficient to render the mark distinctive.

The Office agrees with the established principle that a minimum degree of distinctiveness suffices; however, it should not be understood as suggesting that any descriptive or banal expression could be registered as a trade mark. It is hereby recalled that according to the case-law of the European courts, a word mark that is descriptive of characteristics of 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 for the purposes of Article 7(1)(b) EUTMR (judgment of 12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39). As explained both in the objection letter and above, the sign’s elements both individually and as their sum make an unambiguous and obvious reference to certain characteristics of the goods and services, and this finding is not altered by the figurative element either. The sign is, therefore, descriptive and, as such, is also non-distinctive.

3.

As regards the applicant’s argument that this mark and also similar ones containing the word ‘ticket’ were accepted in the past, it is recalled 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). Furthermore, 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). In addition, each case must be examined on its own merits. It cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (judgment of 08/07/2004, Case T-289/02, ‘TELEPHARMACY SOLUTIONS’, paragraph 59). The mere fact that in other cases a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature.

Based on all the foregoing, it is concluded that the mark conveys a clear and understandable meaning in relation to the goods and services, which makes it descriptive and also incapable of distinguishing them from those of other undertakings. The Office considers, therefore, that it is highly unlikely that the consumer would perceive the mark as a badge of origin. Rather, it would merely be perceived as conveying a descriptive and non-distinctive message.

For the abovementioned reasons, and pursuant to Article 7(1)(b)(c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 018 322 is hereby rejected 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.

Ferenc GAZDA