Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/12/2019

BECK GREENER LLP

Fulwood House 12 Fulwood Place

London WC1V 6HR

REINO UNIDO

Application No:	018086612
Your reference:	IB/T83174EM
Trade mark:	SPORTS ATLAS
Mark type:	Word mark
Applicant:	LEADERS GROUP HOLDINGS LLC 120 West Morehead Street, Suite 400 Charlotte North Carolina 28202 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/08/2019 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.

Applicant’s arguments:

The applicant submitted its observations on 28/10/2019, which may be summarised as follows.

1. The applicant argues that it is not clear what sports atlas would comprise of. It is not clear what a map relating to sport might consist of.

2. The applicant requests a limitation in order to overcome the objection.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

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.

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 for the applicant’s arguments:

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

1. The term ‘ATLAS’ does not only refer to a book containing maps, but is also used in the market to refer to a book containing a large compilation of information about an specific topic such as, for example: atlas of medicine, cooking atlas or, in this case, sport atlas.

The abovementioned meaning of the word ‘ATLAS’ can be supported by the following dictionary references:

BRONZE ‘A similar volume containing illustrative plates, large engravings, etc., or the conspectus of any subject arranged in tabular form; e.g. ‘an atlas of anatomical plates,’ ‘an ethnographical atlas’.’ (information extracted from OED (Oxford English Dictionary) on 23/12/2019 at https://www.oed.com/view/Entry/12536?rskey=hx8usb&result=1&isAdvanced=false#eid ).

Please find the following examples supporting the above mentioned meaning:

Atlas of medicine: https://www.amazon.com/Atlas-Internal-Medicine-Eugene-Braunwald/dp/1573402532/ref=sr_1_1?keywords=atlas+medicine&qid=1577112135&sr=8-1

Cooking atlas: https://www.amazon.com/Atlas-Cookbook-Food-Adventure/dp/1743795386/ref=sr_1_11?keywords=cooking+atlas&qid=1577112343&sr=8-11

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).

2. Based on the above argument, the limitations proposed by the applicant cannot be accepted because those are not capable to overcome the objection raised by the Office – since the limitations only exclude cartographical publications.

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 018086612

is hereby rejected for the following goods:

Class 41: Publishing; providing information relating to sports and sports business;

information, advice and assistance in relation to all the aforesaid.

The application may proceed for the remaining services.

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