Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 15/12/2015

OAKLEIGH IP SERVICES LIMITED

Unit 19, Wrotham Business Park

Barnet, Hertfordshire EN5 4SZ

REINO UNIDO

Application No:	014192124
Your reference:	AJV/BIN15101
Trade mark:	BARK
Mark type:	Word mark
Applicant:	Binatone Telecom plc 1 Apsley Way London NW2 7HF REINO UNIDO

The Office raised an objection on 01.07.2015 pursuant to Article 7(1)(b) and c and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character (see attached letter).

The applicant submitted its observations on 24.08.2015 which may be summarised as follows:

1. The word BARK has a number of meanings in English; none of these are descriptive for the claimed goods.

2. The examiners’ reasoning are both subjective and involve too many steps.

3. The mark could also be seen as being descriptive of the products being made from wood or bark. The goods have no relevance to BARK or BARKING.

4. OHIM has recently accepted the CTM 1426773 BARKING for goods in class 9 including items relating to animals and pets.

Pursuant to Article 75 CTMR, 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 and to refuse the application.

A sign must be refused registration under 7(1) (b), (c) and 7(2) CTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23/10/2003, C 191/01 P, ‘DOUBLEMINT’, paragraph 32).

In order to come to the finding that there is no distinctive character, it is sufficient to note that the semantic content of the word mark indicates to the consumer a characteristic of the goods. Contrary to the applicant’s point of view, the application contains a direct statement about the characteristics of the goods, all of which relate to train/control animals.

The applicant did not comment on the extracts from the internet in the Offices’ objection letter from 01.07.2015. They clearly show that “BARK” is generically used for these goods in order to describe their intended purpose. In addition the following hits demonstrate that “Bark” is used on the market to designate “bark controlling” collars.

http://www.amazon.com/Best-Sellers-Pet-Supplies-Bark-Collars/zgbs/pet-supplies/2975429011

(http://www.petsmart.com/dog/bark-control/cat-36-catid-100125)

(http://www.ebay.com/gds/5-Do-s-and-Don-ts-When-Buying-a-Bark-Collar-/10000000177635460/g.html )

(All internet hits seen on 15.12.2015)

In regard to the recently accepted CTM 014226773 BARKING the Office makes clear that contrary to the applicants assertion, the claimed goods are different from these in the present application.

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and 7(2) CTMR, the application for Community trade mark No 014200489 BARK is hereby rejected for all the goods claimed.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Simon DÄPP