Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/12/2019

Womble Bond Dickinson (UK) LLP

1 Whitehall Riverside

Leeds

LS1 4BN

REINO UNIDO

Application No:	018078115
Your reference:	LJW/JLLIP/SERI-038-EM
Trade mark:	STUDIOLINK
Mark type:	Word mark
Applicant:	Serif (Europe) Limited Unit 12 Wilford Industrial Estate NG11 7EP Nottingham REINO UNIDO

The Office raised an objection on 08/07/2019 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’s arguments:

The applicant submitted its observations on 13/11/2019, which may be summarised as follows.

1. The relationship between a trade mark and the descriptive meaning of the goods must be concrete, direct and without further reflection (see Case T-345/99 Harbinger Corporation v OHIM(`TRUSTED LINK'). the trade mark consists of a single contrived word STUDIOLINK, as opposed to two separate words "STUDIO" and "LINK", the pronunciation of which has been assumed in your examination report.

2. The terms "studio" and "link" have various different meanings; for example, "studio" is the name for a flat and living accommodation. In the circumstances, we would argue that any descriptive element is neither concrete nor direct.

3. The Trade Mark is a compound mark and the "assessment of its distinctive character cannot be limited to an evaluation of each of its words or components, considered in isolation, but must, on any view be based on the overall perception of that mark by the relevant public and not on the presumption that elements individually devoid of distinctive character cannot, on being combined, have a distinctive character"

4. Various marks containing STUDIOLINK with a clearly descriptive good or service can be found on the EUIPO trade mark database.

5. The following case law should be taken into account: Case T-34/00 Eurocoo/ Logistik GmbH v OHIM and Case T-460/05 Bang & Olufsen v OHIM; C-329/02 SAT.7 Sate/litenfernsehen GmbH v OHIM; and T- 135/99 Taurus-Film GmbH & Co. v OHIM.

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.

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).

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

As for the applicant’s arguments:

1. The fact that the two words of which the sign is composed are juxtaposed without spaces, in this case ‘studio’ and ‘link’, does not render the sign distinctive. The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words known to them (see 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).  

2. The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. Therefore, the interpretation of the term ‘studio’ as a flat or living accommodation would be excluded; The interpretation made by the Office on 08/07/2019 was made in relation to the goods and services for which protection is sought.

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, emphasis added.)

3. The assessment of distinctively of this a compound mark was not limited to an evaluation of each of its words or components, considered in isolation, but rather on the overall perception of that mark by the relevant public. In interpretation of how the relevant consumers would perceived the sign was made taking the sign as a whole and, on top of that, the Office provided dictionary references of each of the word composing the trade mark.

Since the trade mark at issue 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).

As pointed out by the applicant, for a trade mark that consists of a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

4. 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).

5. The case-law provided by the applicant is not applicable to this case because the signs for which protection was sought were different and the goods and services claimed were also different. As argued by the Office on 08/07/2019, the sign ‘STUDIOLINK’ is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

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 018078115 is hereby rejected for all the goods 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.

Alfonso CID