: Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 12/12/2019

carolina gawronski

via tacito 90

I-00193 roma

ITALIA

Application No:	018042123
Your reference:
Trade mark:	NO SMALL TALK
Mark type:	Word mark
Applicant:	carolina gawronski via tacito 90 I-00193 roma ITALIA

The Office raised a partial objection on 16/04/2019 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character and hence not eligible for registration.

The Office reasoned that the sign for which protection is sought - ‘NO SMALL TALK’ - would simply be perceived by the relevant public as a promotional laudatory slogan, the function of which is to communicate a customer service statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services in question (classes 35 and 41), namely they are being rendered in a serious manner. In addition and with regard to services in class 41 related to coaching, education and training, the promotional message conveyed to the consumer is that the content of these services such as of a course or a conference will be of value and relevant in the sense of not being banal or trivial.

Therefore, the Office maintained that the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

The applicant submitted observations on 27/05/2019, which may be summarised as follows:

• Several other trademarks with a similar proposition to ‘No Small talk’, such as ‘Happy Not Perfect’ and ‘Big Talk’, have been registered by your Office for services identical or similar to the ones covered by the current application. ‘Big Talk’ and ‘Happy Not Perfect’ very much communicate a customer service statement, which is a basis of refusal for registering ‘No Small Talk’.

• The applicant furthermore queried about the effects of the partial refusal, namely whether the application would be accepted if it were to reduce the terms for each of these 2 classes objected to.

• Lastly, the applicant explains that ‘No Small Talk is an existing business in more that 10 European cities, across Italy, France, UK, Germany, Poland and more.

After giving due consideration to the applicant’s observations, the Office, before taking a final decision, clarified by a letter dated 13/07/2019 some of the points referred to by the applicant as follows:

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 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).

As regards the effects of the of the partial objection, indeed the applicant, in order to overcome the partial objection and allow the application to be published, has the option to reduce the scope of the initial application and limit it to the non objectionable goods in class 28:

Class 28 Scratch cards for playing lottery games; Trading cards for games; Quiz games; Cards [games]; Karuta playing cards (Japanese card game); Backgammon games; Japanese playing cards (Utagaruta); Skill and action games; Cards (Bingo -); Lottery scratch cards; Cards (Playing -); Bingo cards; Backgammon sets; Game boards for trading card games; Raffle tickets; Kendo cards; Play balloons; Playing cards; Playing cards for use in magic tricks; Game cards; Fairground and playground apparatus; Skateboards [recreational equipment]; Cases for playing cards; Board games; Traditional Japanese playing cards; Tarot cards [playing cards]; Toys, games, playthings and novelties; Japanese playing cards; Korean playing cards (Hwatoo); Uta-garuta playing cards; Manipulative games; Lottery cards; Trading cards [card game]; Games; Playing cards and card games.

Lastly, the Office took note of the applicant’s statement that ‘No Small Talk’ is established business in more that 10 European cities. However, since it was unclear whether this request involves a claim under Article 7(3) EUTMR, and if so, it failed to clearly and precisely identify whether the claim is intended to be a principal or a subsidiary one pursuant to Article 2(2) EUTMIR, the Office invited the applicant to submit the corresponding clarification on whether indeed a claim that the trade mark applied for has acquired distinctiveness through use pursuant to Article 7(3) EUTMR and on the nature of the claim (principal or subsidiary) within two months of notification of the communication, hence by 13/09/2019.

The applicant failed to submit observations within the set time limit, extended upon request of the applicant by two months until 13/11/2019. For the reasons set out above, which are further explained in the letter of objection, which is attached and forms an integral part of this decision, and pursuant to Article 7(1) EUTMR, the application for European Union trade mark No 018042123 is hereby rejected in partial, namely for

Class 35 Wholesale services in relation to cards (Playing -); Advertising, marketing and promotional services; Online retail services in relation to cards (Playing -); Retail services in relation to cards (Playing -); Business consultancy; Distribution of advertising, marketing and promotional material; Management consultancy services; Sales promotion; Marketing consultancy; Advertising, marketing and promotional consultancy, advisory and assistance services; Advertising and marketing; Business assistance, management and administrative services; Distribution of promotional material; Consultancy (Professional business -); Dissemination of advertising and promotional materials; Distribution of printed promotional material by post; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Product demonstrations and product display services; Online retail services relating to toys; Public relations services; Business consultancy and advisory services; Marketing in the framework of software publishing; Business organisation consultancy; Business analysis, research and information services.

Class 41 Coaching; Providing games; Business training provided through a game; Arranging and conducting of games; Organising events for entertainment purposes; Multimedia publishing of printed matter; Arranging and conducting of conferences; Organising of audience participative games; Adult training; Educational and teaching services; Development of formats for television programmes; Cultural services; Training consultancy; Organising of festivals; Organisation of quizzes, games and competitions; Cultural activities; Entertainment services; Conference services; Multimedia publishing of electronic publications; Preparation of radio and television programmes; Television, radio and film production; Arranging and conducting of seminars; Multimedia publishing; Internet games (non-downloadable); Arranging and conducting of classes; On-line game services; Entertainment in the nature of dinner theater productions; Theatre entertainment.

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.

Robert MULAC