Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 06/04/2020

Barker Brettell Sweden AB

Östermalmsgatan 87B

SE-114 59 Stockholm

SUECIA

Application No:	018104002
Your reference:	CAW102283T.EM
Trade mark:
Mark type:	Figurative mark
Applicant:	Circle Internet Financial Limited 4th & 5th Floors, The Grain Store, 4/4A Princes Street Dublin Dublin 2 IRLANDA

The Office raised an objection on 02/09/2019 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.

On 31/10/2019, the applicant requested for an extension of the time-limit for replying to the objection, which was granted until 02/01/2020

The applicant submitted its observations on 20/12/2019, which may be summarised as follows.

1. The relevant public has a high level of attention when choosing the type of service for which protection is sought.

2. The sign

• The United States dollar is a bill or a note, not a coin. Only cents are minted as coins. Moreover, a coin is a physical object that cannot be transferred via electronic communication networks or electronic devices. Therefore, the sign as a whole is nonsensical and illogical.

• The sign produces an overall impression of a paradoxical concept that is more than the sum of its parts.

• The sign is also composed of figurative elements that are by themselves distinctive.

3. Descriptiveness

• The intended purpose of the services for which protection is sought is the electronic transfer of currency. However, it is not possible to electronically transfer a coin, and it is rare and unusual for a US dollar to be a coin. Therefore, the sign does not describe the intended purpose of the services.

4. Distinctiveness

• The sign is not directly descriptive of the services for which protection is sought.

• The figurative mark’s simple but specific composition can certainly be remembered and would readily enable the relevant public to identify the commercial origin of the services in question and distinguish these from other services.

• Therefore, the sign is distinctive.

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

General remarks

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).

It is settled case-law that the distinctive character of a trade mark must be assessed, firstly, by reference to the goods or services in respect of which registration has been applied for and, secondly, by reference to the perception of them by the relevant public, which consists of average consumers of the goods or services in question who are reasonably well informed and reasonably observant and circumspect

(22/06/2006, C 24/05 P, Karamelbonbon, EU:C:2006:421, § 23)

Therefore, the correct sequence of examination is

• first, to determine the relevant public;

• second, to determine the meaning of the sign for this relevant public;

• third, to determine for each of the goods and services for which protection is sought whether or not this meaning is relevant.

Relevant public

The Office agrees with the applicant that the mark’s relevant public has a high degree of attention.

In that regard, it must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist.

(12/07/12, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

the relevant public is assumed to have the same level of attention as the specialist public, therefore this position applies in the present case.

Moreover, it should be noted that the mark is composed of an English word and that the use of English is common in the financial, electronics and telecommunications sectors to which [the services for which the protection is sought] relate. It is therefore necessary to have regard in particular to English speaking consumers and professionals and consumers and professionals with an elementary knowledge of English, who, in any event, represent a very large proportion of European consumers and professionals.

(26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 41).

Since the symbol ‘$’ and the initialism ‘USD’ is known internationally and the English term ‘COIN’ is understood by a very large proportion of European consumers and professionals, the relevant public, with reference to which the absolute ground for refusal must be examined, is the consumer across the Union.

The sign

The applicant argues that the mark applied for has no direct meaning for the ‘relevant consumer’ in relation to the services to which an objection has been raised. The Office disagrees and maintains that the sign, as a whole, will have the following meaning for the relevant consumer: the currency of the United States of America, the dollar.

The sign is composed of the $ symbol, which designates the currency of the United States, and figurative elements.

In its objection, the Office takes into account all the element of the sign, included the figurative elements. Therefore, the Office has considered the sign as a whole, contrary to the applicant’s observations.

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).

Concerning the meaning of the "$" symbol, it is directly understood by the consumer, without any mental process. This symbol is universally known as the currency of the United States of America. It is present, for example, on the keyboard of computers all over the world.

As stated by the Office in its objection letter of 02/09/2019, this currency is composed of cents, in the form of a physical coin, and dollars, in the form of a coin or a bill. The United State dollars also exists digitally and can be transferred electronically (information extracted from an official website of the United States Government on 05/12/2018 at https://www.usa.gov/currency ). Therefore, the applicant’s argument that the dollars does not exist digitally is incorrect.

Therefore, the word will be perceived as designating a currency that exists in electronic form.

Concerning the figurative elements, they are only composed of banal geometrical shapes, that is a black disk, which is also a depiction of a coin or a button/icon in software, which has two white vertically positioned semicircles inside it with the symbol of the dollar at its centre. Therefore, it only reinforces the meaning of the sign, taken as a whole, that is, it designates the currency of the United States of America, the dollar.

Nothing in the way they are combined can change the public's perception of the sign's meaning.

Descriptiveness

The Office’s refusal is not based on the fact that the sign is an alternative name for the electronic transmission of data.

Article 7(1)(c) EUTMR is not limited to indications that indicate the goods or services themselves. As the wording of the provision states any indication of a relevant characteristic is covered by it (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 49), and for some goods or services this may be their intended purpose.

The intended purpose is the function of a product or service, the result that is expected from its use or, more generally, the use for which the good or service is intended.

The service for which protection is sought is the electronic transmission of data, namely digital currency, via electronic communication networks and electronic devices.

Therefore, the function of the services in question is the electronic transmission of digital currency. This function is clearly described in the name of the service itself. This is not necessarily the case in the case-law quoted by the applicant.

The sign, as a whole, designates the dollar, a money that can be digital. Consequently, the relevant consumer of those services will establish a direct and concrete, clear and unambiguous link between the sign and the function of the services.

The relevant consumers would perceive the sign, as a whole, in relation to the services, as providing information that the services for which protection is sought allow the digital transfer of dollars, as indicated by the Office in its objection letter of 02/09/2019.

Therefore, the relationship between the term and the services is direct and specific as well as concrete, direct and understandable without further reflection. The sign describes the intended purpose of the services in question.

The sign is not only allusive, but descriptive of the characteristics of the services for which protection is sought.

Distinctiveness

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Moreover, the sign for which protection is sought, , would simply be perceived by the relevant public as only providing the information that the services are related to the dollar.

It is true that signs that are non-distinctive and descriptive may fall outside of the scope of a refusal based on Article 7(1)(b) and (c) EUTMR if combined with other elements that make the sign as a whole distinctive. In other words, refusals based on Article 7(1)(b), (c) and/or (d) EUTMR may not apply to signs consisting of a non-distinctive, descriptive or generic element combined with other elements that take the sign as a whole beyond a minimum level of distinctiveness.

However, in the present case, the figurative elements reinforce the meaning of the verbal elements. Moreover, as they consist only of basic geometric shapes and descriptive verbal elements combined with simple geometric shapes such as line segments and circles, they are unlikely to be acceptable (Guidelines for Examination in the Office, Part B, Section 4, Chapter 4.4.2.2).

Consequently, neither these figurative elements, nor the way in which they are combined, are sufficiently imaginative, surprising or unexpected to give the sign a minimum of distinctive character.

The relevant public will not tend to perceive any particular indication of commercial origin in the sign as a whole beyond the information conveyed, which merely serves to highlight positive aspects of the services in question, that is, they allow dollars to be transferred electronically.

Consequently, the Office maintains that the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the services 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 EUTM No 17 899 251 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c), in all the Member States of the European Union for all the services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Brice LAUGIER