Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 06/03/2020

Keltie Limited

Galway Technology Centre, Mervue Business Park

Galway

IRLANDA

Application No:	18 100 015
Your reference:	T51597EU/RAC/rcu
Trade mark:	TARGET UNIVERSE
Mark type:	Word mark
Applicant:	Target Global Advisors Ltd Trident Chambers, P.O. Box 146, Road Town Tortola ISLAS VÍRGENES DE GRAN BRETAÑA

The Office raised an objection on 12/08/2019 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.

Upon request of 10/10/2019, the Office extended on 11/10/2019 the time limit for submitting observations with two months till 12/12/2019.

The applicant submitted its observations on 10/10/2019, which may be summarised

as follows:

1. Descriptiveness/distinctive character/no understandable meaning of the sign

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

waive the objection for the following services in class 36:

Class 36 Financial services, financing and funding services, venture capital services, venture capital management, investment services, development and management of investment portfolios, investment fund services, financial investment management services, financial management services, financial portfolio management, management of investments, private equity fund services; provision of information, consultancy and advice relating to the aforesaid.

The objection is maintained for the remaining services.

1. Descriptiveness/distinctive character/several meanings of the sign

General remarks on Article 7(1)(c) EUTMR

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).

General remarks on Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive

character’ are not to be registered.

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).

Applicant’s remarks

The term as a whole TARGET UNIVERSE does not describe the services or a characteristic of the services. The mark does not describe any of the services and in fact the term makes no sense.

The examiner’s reasoning that the mark provides information that the services claimed identify the market or target audience of a key consumer group is not understandable and it has not been explained why that is the case. Moreover, there is no greater association between the term TARGET UNIVERSE and the rejected services than with the accepted services. The consumer must go through a number of mental thoughts from seeing the words TARGET UNIVERSE to reaching the point where it concludes what the services are as described by the examiner.

The Office´s objection under Article 7(1)(c) is unfounded because the sign has no understandable meaning.

Moreover, as to the Office´s objection under art. 7(1)(b), it is clear that the term does not describe the services and is not generic or a usual name for the services. It is a word that the English-speaking public would perceive as somewhat fanciful when applied to the particular services claimed or any goods and services. It cannot be held that there is no possibility whatsoever that a consumer would be able to distinguish the applicant’s services goods from those of other undertakings. The words TARGET UNIVERSE amount to a distinctive representation of a distinctive combination of words which would be regarded as an indication of trade origin when used in relation to the services claimed.

Office´s comments

Firstly, reference is made to the above-mentioned preliminary section by which it has been informed that the objection to the services in class 36 has been waivered. After consideration the Office has found that the financial, financing and funding services and venture capital services in class 36, among others, typically are targeting businesses internally in their internal management, including startup companies, being in need of finance and management of money, investment funds, etc.

Secondly, the distinctive character and descriptiveness of a trade mark must be assessed, first, by reference to the goods or services in respect of which

registration of the sign is sought and, second, by reference to the perception

of the section of the public targeted, which is composed of the consumers of

those goods or services (27/11/2003, T-348/02, ‘Quick’, §29).

Therefore, the mark ‘TARGET UNIVERSE’ is to be assessed in relation to the services at issue which now for the sake of good order are:

Class 35 Advertising.

Thus, in line with the dictionary references given by the Office’s notice of

objection of 12/08/2019 it has been demonstrated that the term ‘TARGET UNIVERSE’ by the relevant public – preponderantly by a professional public within the field of advertising services - will be perceived as a meaningful expression for a particular target group of people with a particular sphere of human activity or experience in common. The term ‘universe' is commonly used in marketing to refer to the total population, market or group of interest. Thus, in relation to the advertising services at issue in class 35 , the sign will merely be describing that these services are targeting a certain market or group of interest, i.e. a consumer group.

Therefore, the Office respectfully disagrees with the applicant that the sign has no understandable meaning in relation to the services at issue. The Office is of the position that no intellectual requirement for the relevant professional public is required to understand the sign as giving direct and straightforward information that the intended purpose of the advertising services in class 35 is to identify the proper key consumer group or proper market.

In that context, it is the Office’s view that the sign at issue is straightforwardly

intelligible for the relevant professional consumer when taken in conjunction

with the services applied for.

Therefore, the Office maintains its’ position that the current sign, TARGET UNIVERSE‘, seen as a whole is descriptive and devoid of any distinctive character and not capable of distinguishing the services to which an objection has been raised within the meaning of art. 7(1)(b) and (c) EUTMR and art. 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the

application for European Union trade mark No 18 100 015 is hereby rejected in part for the following services:

Class 35 Advertising.

The application will proceed accordingly for the remaining services, namely:

Class 35 Business management; business administration; business consultancy; office functions; business management, analysis, appraisals, research, administration and consultancy; administrative management of investment companies, investment funds, insurance companies and insurance and investment funds; business management assistance in relation to financial affairs and the governing and control of investments; business risk management consultancy; consultancy services in the field of business strategies and business organization.

Class 36 Financial services, financing and funding services, venture capital

services, venture capital management, investment services, development and management of investment portfolios, investment fund services, financial investment management services, financial management services, financial portfolio management, management of investments, private equity fund services; provision of information, consultancy and advice relating to the aforesaid.

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.

Finn PEDERSEN