Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 30/10/2015

LANE IP LIMITED

2 Throgmorton Avenue

London, EC2N 2DG

REINO UNIDO

Application No:	014364301
Your reference:	0521.0126EM
Trade mark:	ENERGY, LIGHT AND INFORMATION
Mark type:	Word mark
Applicant:	Eric Pearl c/o The Reconnection, LLC, P.O. Box 3600 Hollywood, California 90078-3600 ESTADOS UNIDOS (DE AMÉRICA)

I. The Office raised an objection on 22/07/2015, pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, because it was found that this trade mark is descriptive and devoid of any distinctive character (see the enclosed letter of three pages).

After the applicant made amendments to the specification of goods and services for reasons of classification the list of the contested goods and services reads as follows:

Class

16 Printed matter; printed brochures, seminars, pamphlets, flyers, and printed

instructional and teaching materials.

41 Educational services; entertainment services; conferences, seminars and

symposiums.

44 Providing a website featuring information concerning healing.

II. The applicant submitted its observations on 21/09/2015, which may be summarised as follows:

1. The sign ENERGY, LIGHT AND INFORMATION as a whole is not directly descriptive but at most suggestive of the goods and services in question.

2. The Applicant is the proprietor of United States Trade Mark Registration No. 3751979 ENERGY, LIGHT & INFORMATION in Class 41 which did not receive an objection on the basis that it is descriptive or lacks distinctiveness.

III. 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.

As far as the applicant ´reserves the right to file evidence of acquired distinctiveness at a later date´ the Office notes that no explicit and unconditional request for an extension of time to file further submissions was made. Therefore, the Office will take its decision based on the facts and evidence before it, on which the applicant had the opportunity to comment on.

Under Article 7(1)(c) CTMR, ‘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) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR 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 (see judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31).

The signs and indications referred to in Article 7(1)(c) CTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought (see judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) CTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102).

1. In the light of the clearly descriptive character of the sign ENERGY, LIGHT AND INFORMATION, the Office cannot agree with the applicant’s opinion that the sign is at most suggestive of the goods and services in question.

For a trade mark to be refused registration under Article 7(1)(c) CTMR,

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

Therefore, the fact that a sign might have several meanings has no impact on the assessment of a sign under Article 7(1)(c) CTMR, as it is sufficient for the application of this provision that one of the meanings of the sign could be used to describe characteristics of the goods or services in question.

The Office gave a dictionary definition in its original objection and examined the meaning of the term ENERGY, LIGHT AND INFORMATION in relation to the goods and services in question and by reference to the perception of the section of the public targeted. Contrary to the applicant’s view, the meaning of the sign, as examined by the Office, is capable of designating characteristics of all the goods and services in question.

The Office considers that it is obvious that the expression is capable of describing the subject matter of all of these goods and services, which is sufficient to exclude it from registration under Article 7(1)(c) CTMR.

The Class 16 goods can provide printed matter, etc. regarding energy, light and information. The Class 41 services can provide education, entertainment services, conferences, seminars, etc. regarding energy, light and information. The Class 44 services can provide a website concerning health with content regarding energy light and information. It is commonly known that energy and light can have an impact on health. There is no ambiguity whatsoever in the expression. As set out above, the sign is not suggestive but plain descriptive of the subject matter of the goods and services. The relevant consumer will without any difficulty establish a direct and specific link between the mark and the goods and services in respect of which registration is sought.

As the sign lacks any element beyond its descriptive message that might be perceived by the consumer as indicating the commercial origin of the goods and services applied for, the Office also maintains its opinion that the sign lacks the minimum level of distinctiveness to allow registration under Article 7(1)(b) CTMR.

2. As regards the national decision referred to by the applicant, according to case-law:

the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

IV. For the above reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community Trade Mark No 14 364 301 is hereby rejected for all the goods and services which have been claimed.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Tobias KLEE