Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/11/2019

MACLACHLAN & DONALDSON

Unit 10, 4075 Kingswood Road, Citywest Business Campus,

Dublin Dublin D24 C56E

IRLANDA

Application No:	018055923
Your reference:	CM/LD/T28981.EU
Trade mark:	THE INSPIRATIONAL GIFT COMPANY
Mark type:	Word mark
Applicant:	BRANDWELL (IRL) LIMITED 12 Northwest Business Park Ballycoolin Dublin 15 IRLANDA

The Office raised an objection on 25/6/2019 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 30/10/2019, which may be summarised as follows.

1. The goods and services covered by the present application are neither INSPIRATIONAL nor GIFTS. The goods are ordinary items watches, jewellery etc., there is nothing inspirational about them at all and they are not being giving willingly by the owner of the trade mark for no payment. A person may be inspired by an unusual piece of artwork or a unique innovative idea or an emotional story. An ordinary watch or necklace or bag would not inspire a person and therefore cannot be inspirational. A watch that is bought in a retail outlet is not a gift since it is bought and not given willingly without payment.

2. If the term THE INSPIRATIONAL GIFT COMPANY does not directly describe the goods and services for which registration is sought and is slightly unusual

3. The structure of the sentence applied for is unusual. The word INSPIRATIONAL would never be used in a sentence before the word GIFT. The word inspirational would be used in a sentence as follows 1) he gave an inspirational reading of his own poetry, 2) Jones proved an inspirational figure in Irish rugby and 3) our brochure is packed with inspirational ideas.

4. The term INSPIRATIONAL GIFT does not make any sense in the English language, a watch or bag cannot be inspirational, a person, or a creative idea or even an unusual unique piece of artwork can be inspirational but an ordinary everyday item cannot.

5. As previously stated the goods intended to be sold under the trade mark are not gifts but could be given to a third party as a gift. Therefore the direct meaning of the word gift could not be applied to the items being sold under the Trade Mark.

6. The EUIPO is trying to imply that in some vague sense the term INSPIRATIONAL GIFT COMPANY might inspire the receiver to do something exceptional. Even if this was the case the term does not directly describe the goods and therefore it follows, we respectfully submit that the objections are farfetched and fanciful and should we submit, be withdrawn.

7. The EUTM 1297290 Inspirational Network has been registered by the Office, namely a similar mark.

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

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

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)

The combination has an obvious meaning. The applicant provides gifts that give the user creative ideas that they people to achieve goals. The sentence is clearly promotional in nature. It serves as a promotional statement, which conveys that the goods produced help the person who receives the gift to be creative, to achieve goals.

The argument of the applicant that the applied sign is uncommon, unusual, cannot be taken into account. There are more than 100 million google hits for the expression “inspirational gifts” (See https://is.gd/KyYhGE , search done 29/11/2019). It is understandable at first sight, it uses the word inspirational which is connection with gifts is not only common but banal and commonly used. The goods sold or produced by the applicant are commonly used as gifts, so the statement is purely descriptive and non-distinctive.

Such a sentence cannot function as a badge of origin. It is a mere promotional communication that may be used as an advertising slogan, a promotional marketing statement, but may not be used as an identifier or a particular commercial origin, as a trade mark. Such kind of statements are commonly used by companies who produce goods that may be used as gifts, to promote such goods as inspirational, as products that make other people creative, happy, that enhance them to achieve goals, by making they more happy, by inspiring them with a gift that may motivate them or make them more productive, etc.

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).

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.

Claudio MARTINEZ MÖCKEL