Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 21/08/2019

Jakelski & Althoff Patentanwälte PartG mbB

Mollenbachstraße 37

D-71229 Leonberg

ALEMANIA

Application No:	018042912
Your reference:	23726EM
Trade mark:	THE PCT NETWORK
Mark type:	Word mark
Applicant:	The PCT Network Corporation (DELAWARE CORPORATION) 71-56 171ST Street Flushing New York 11365 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/04/2019 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 26/06/2019, which may be summarised as follows.

1. The Applicant finds it unclear how a word element ‘NETWORK’ in the mark is related to an international treaty and how can a network facilitate or enable public document filing services or other intellectual property support services which among others also cover trademark and design filing services.

2. The mark ‘THE PCT NETWORK’ is a fanciful word mark which is fully distinctive. The mark is capable of distinguishing the services of the undertaking from those of other undertakings.

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).

As the Applicant correctly pointed out in his letter of observations, the Office has stated in the letter of objection dated 26/04/2019 that the expression ‘THE PCT NETWORK’ would stand for ‘a system/network for the International Patent System based on the Patent Cooperation Treaty’ among the relevant public that consists of the professionals in the field.

Furthermore, the Office also noted that when the mark is used in connection with the services applied for in Class 45, the relevant public would perceive the sign as providing information that the services applied for are related to the international patent system, e.g. to facilitate the filing of PCT applications.

Contrary to what the Applicant claims in his letter of observations, the meaning of the term ‘NETWORK’ in the mark is clear when the mark ‘THE PCT NETWORK’ is assessed as a whole and the mark is used in connection with the services at hand as further explained below.

First of all, the Office has given in the letter of objection the following dictionary meanings for the term ‘NETWORK’: ‘a network of people or institutions is a large number of them that have a connection with each other and work together as a system’ and ‘a group or system of interconnected people or things’.

In so far as the word elements ‘THE’ and ‘PCT’ in the mark are concerned, the relevant professional public is aware that the Patent Cooperation Treaty assists applicants to seek patent protection for their inventions, as also demonstrated through the definition of the term ‘PCT’ extracted from the internet site of the World Intellectual Property at https://www.wipo.int/pct/en/ and attached to the letter of objection as follows:

Following the dictionary meanings given for the term ‘NETWORK’ and when used together with the rest of the mark ‘The PCT’, the sign taken as a whole can indeed relate to the services applied for, namely Intellectual property support services, namely, public document filing services; information, advisory and the consultancy services relating to intellectual property public document filing; consultancy relating to intellectual property.

In practice, the Office does not find it convincing that a network of people or institutions working with each other or as a system in the area of expertise of the PCT would not be able to contribute in any meaningful way to public document filing or provide advisory and consultancy services related to intellectual property or intellectual property related public document filings.

In so far as the Applicant’s argument that it is unclear how the meaning of the mark would be linked to e.g. trade mark and design filing services, the Office first of all notes that the mark is applied for the following specifications in Class 45 Intellectual property support services, namely, public document filing services; information, advisory and the consultancy services relating to intellectual property public document filing; consultancy relating to intellectual property. Indeed, the list of services in Class 45 does not make any distinction between different types of intellectual property rights.

Moreover, it is worth pointing out that such network working in the area of international patent system could also provide assistance with respect to alternative or complementary protection types and thus also provide advisory, consultancy and filing services for e.g. trade marks, designs and utility models. Considering the high level of awareness of the relevant professional public, it is likely that a holistic approach is sought and the relevant public is thus interested in covering all possible intellectual property aspects. Moreover, it is sufficient that a sign could be used in a descriptive way in relation to the objectionable services, for it to be barred from registration (23/10/2003, C191/01 P, Doublemint, EU:C:2003:579, § 32).

In conclusion, the link between the sign taken as a whole and all the refused services is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR.

As regards the Applicant’s claim that the mark applied for ‘THE PCT NETWORK’ is a fanciful word mark and fully distinctive, the Office would like to note that the objection has been raised due to the mark being ineligible for registration under Article 7(1) (c) and Article 7(2) EUTMR, because it describes certain characteristics of the services for which protection is sought, and it is also thus devoid of any distinctive character pursuant to Article 7(1)(b) EUTMR.

As regards descriptiveness of the mark applied for, the Office notes that the word combination ‘THE PCT NETWORK’ is grammatically correct and clearly understandable among the relevant English-speaking professional public without being required to undertake any mental steps.

Indeed, the combination of the words elements in question, namely ‘THE’, ‘PCT’ and ‘NETWORK’ does not result in a surplus which exceeds the mere sum effect of individual components. Furthermore, there is a link between the sign and all the objected services that is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR.

Moreover, it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

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 018 042 912 is hereby rejected for all the services claimed.

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.

Päivi Emilia LEINO