Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 06/12/2016

ORIGIN LIMITED

Twisden Works, Twisden Road

London NW5 1DN

REINO UNIDO

Application No:	14 422 513
Your reference:	MORTGAGE-WIZARD-CTM
Trade mark:	MORTGAGE WIZARD
Mark type:	Word mark
Applicant:	Wealth Wizards Limited 15 Warwick Road Stratford-Upon-Avon Warwickshire CV37 6YW REINO UNIDO

The Office raised an objection on 12/08/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character.

The applicant submitted its observations on 14/12/2015.

On 18/12/2015, further to the applicant’s correspondence, which was received by the Office on 14/12/2015, and following a telephone conversation with Mr Robert Pocknell on 18/12/2015, the Office confirmed the amendment of the list of goods and services in the present application.

However, the Office has reconsidered the application because it was considered that the confirmation of the restriction of the list of goods and services in this European Union trade mark application was an obvious error, and it decided to maintain the initial objection raised on absolute grounds, dated 12/08/2015.

On 15/08/2016, the applicant submitted its observations on the second objection notice, dated 18/04/2016. These observations may be summarised as follows:

1. Following the limitations proposed by the applicant and those agreed with the examiner during the phone call with the applicant’s representative on 18/12/2015, the Office confirmed on the same day that, in view of the restriction, the previous objection on absolute grounds had been waived and that the application would proceed to publication. On 08/01/2016, the application was published with a specification that included the amendments that had been proposed by the examiner and accepted by the applicant on 18/12/2015.

2. The applicant fails to see that the acceptance notice was made in error by the examiner or EUIPO, nor does it accept that it was an obvious mistake. The amendments to the specifications were proposed by the examiner and accepted by the applicant; the acceptance notice was the culmination of several reviews and a careful and reasoned consideration of the issues set out in the initial notice; and the examiner and EUIPO acted properly in accepting the limitations and revised specifications.

3. EUIPO cannot now maintain the initial objections, as they have been expressly waived. In addition, when confirming the acceptance of the mark, the examiner and EUIPO accepted, after due and careful consideration, that the mark is inherently distinctive, the mark is not a meaningful expression, the relevant consumer would not know what the words were referring to, the relevant public would not be able to make any association (even indirectly) between the trade mark and the goods and services for which registration is sought, the trade mark is distinctive in relation to all the goods and services for which registration is sought because the relevant public would not see the trade mark as an ordinary, non-distinctive way of describing any of these goods or services, and the words do not inform the public of a characteristic of the goods or services.

4. The second objection notice repeats several of the grounds raised in the initial objection notice, grounds that have been overcome by the limitations and changes made to the specifications in each class. It is contrary to the Rules and all principles of natural justice and all principles of fairness for EUIPO to raise the same or similar objections when the applicant has already revised the application and the Office has accepted the mark for publication. To the extent that it is necessary to do so, the applicant repeats all of the arguments raised in the observations.

5. There is no direct or specific relationship between the sign and the goods and services in question. The public would not perceive the mark as descriptive of the goods and services (judgment of 22/06/2005, T‑19/04, ‘Paperlab’; and judgment of 27/02/2002, T‑106/00, ‘Streamserve’). The goods and services do not target specialists or people knowledgeable about mortgages who have a high degree of attention. The goods and services target average consumers. The relevant public does not consist of experts who will be aware of the specialist terms used in the sector in question.

6. In case the relevant average consumer might consider that the mark was a ‘tool or utility that enabled installation of a software application’, it was agreed to expressly exclude such tools or utilities from the specifications of each of the three classes. These amendments were accepted by EUIPO and the mark was published on that basis.

7. The applicant does not agree that the words ‘MORTGAGE WIZARD’ convey or could convey the concept of a wizard used in the field of mortgages – that is, a program that assists the relevant professionals in the field of mortgages to perform certain related tasks following a series of steps – or that they could be perceived as a reference to the service provider – that is, a mortgage expert. The examiner has stretched the meanings of these two words and has arrived at a far-fetched meaning that no ordinary consumer would perceive.

8. The applicant disagrees that the words ‘MORTGAGE WIZARD’ ‘describe their intended purpose’ and submits that the words ‘MORTGAGE WIZARD’ do not describe the intended purpose of the goods and services. If a description of this purpose were intended, then the mark would be something like ‘Mortgage Wizardry’, which it is not. There is no ‘purpose’ associated with the English word ‘Wizard’.

9. In the initial notice and in the second notice, the examiner provided multiple different meanings and interpretations of the words ‘MORTGAGE WIZARD’. The fact that the examiner has given so many different possible meanings of the words (and the fact that there are multiple other meanings) is direct evidence that the meaning is not obvious or commonly known. It also demonstrates that the words are vague and unclear, and that the expression does not convey direct information about the goods and services.

10. The examiner argues that the expression refers to services, and therefore this meaning cannot apply to goods in Class 9.

11. The applicant is not seeking to rely on the unlawful acts of others; rather the opposite. The applicant is seeking fair treatment and assessment of the current trade mark application. The applicant relies on the fact that countless similar marks have been lawfully and properly accepted for publication and registration, and does not understand why this mark has been singled out as being different from the countless other marks comprising similar words that have been registered, such as EUTM No 3 569 845 ‘Strategy Wizard’, registered for, inter alia, goods and services in Classes 9, 36 and 42.

12. The list of goods and services on pages 5 and 6 of the second objection notice is not the list for which registration is sought, namely the list of goods and services that was agreed with the examiner on 18/0/12/2015 and was published by EUIPO.

Pursuant to Article 75 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 maintain the objection.

As regards the applicant’s submission that it fails to see an error in the acceptance of the mark following the amendments that have been agreed with the examiner after several reviews, but that the examiner and EUIPO acted properly in accepting the limitations and revised specifications, the Office can reopen the examination of absolute grounds on its own initiative at any time before registration, including when the Office itself finds that a ground for refusal has been overlooked (https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_2_2016/Part-B/04-part_b_examination_section_4_absolute_grounds_for_refusal/part_b_examination_section_4_absolute_grounds_for_refusal_en.pdf ).

The applicant submits that the second objection notice repeats many of the reasons from the initial objection notice, that those have been overcome by the limitations and the changes to the specifications in each class and that it is contrary to all principles of natural justice, the rules and all the principles of fairness for EUIPO to make identical or similar objections to those that have already been reviewed by the applicant, resulting in the acceptance of the mark for publication. In any case, the applicant repeats all the arguments put forward in its initial response.

The Office sincerely apologises for any inconvenience this may have caused. However, as the applicant was informed on 18/04/2016, the application has been reconsidered and it was decided to maintain the initial objection because it was an oversight/error to waive the objection, since the limitation is not sufficient to overcome it for the reasons explained in the second objection notice and for those that will be detailed below.

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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

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 the goods or services in respect of which registration is sought may be freely used by all. That provision, therefore, prevents such signs or indications from being reserved to one undertaking alone because they have been registered as trade marks (judgment of 12/02/2004, C‑265/00, ‘Biomild’, paragraphs 35, 36; judgment of 27/02/2002, T‑219/00, ‘Ellos’, paragraph 27; and judgment of 04/05/1999, C‑108/97 & C‑109/97, ‘Chiemsee’, paragraph 25).

For a sign to be rejected as descriptive, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (judgment of 22/06/2005, T‑19/04, ‘Paperlab’, paragraph 25; and judgment of 27/02/2002, T‑106/00, ‘Streamserve’, paragraph 40).

The descriptiveness of the sign has to be assessed in relation to the goods or services for which registration is sought and by reference to the relevant public’s perception of it (judgment of 02/04/2008, T‑181/07, ‘Steadycontrol’, paragraph 38; and judgment of 21/05/2008, T‑329/06, ‘E’, paragraph 23).

The applicant submits that there is no direct or specific relationship between the sign and the goods and services for which registration is sought and that the public would not perceive the mark as descriptive of the goods and services in question because they do not target specialists or people knowledgeable about mortgages who have a high degree of attention, but rather target average consumers. According to the applicant, the relevant public does not consist of experts who will be aware of the specialist terms used in the sector in question.

The Office cannot concur with the applicant’s view that the relevant public does not consist of experts and will not be aware of the specialist terms used in the sector in question.

It should be reiterated that the goods and services to which an objection has been raised and for which registration is sought target specialists in the field of mortgages who have a high degree of attention and who will be aware of the specialist terms used in the sector in question, but also at average consumers who are reasonably well informed and reasonably observant and circumspect.

In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

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

1. The elements of which the mark is composed are English words, so the relevant consumers are English-speaking members of the public in the European Union, namely, in particular, consumers from the United Kingdom, Ireland and Malta. However, given that English is the universal language of business, the meaning of the words contained in the mark, and of the mark as a whole, will be intelligible to many professional consumers elsewhere in the European Union.

The relevant public will recognise, without any mental effort, the components of the sign ‘MORTGAGE WIZARD’, namely the English words ‘MORTGAGE’ and ‘WIZARD’. Both these words have meanings in English: the word ‘MORTGAGE’ means ‘an agreement under which a person borrows money to buy property, esp. a house, and the lender may take possession of the property if the borrower fails to repay the money, the deed effecting such an agreement, the loan obtained under such an agreement, a regular payment of money borrowed under such an agreement’ or ‘of or relating to a mortgage’; and the word ‘WIZARD’ would be understood as ‘a person who is outstandingly clever in some specified field, expert’ or as a word used in computing to mean ‘a computer program that guides a user through a complex task and/or a help feature of a software package that automates complex tasks by asking the user a series of easy-to-answer questions’.

Consequently, both words have meanings associated with the goods and services in question. When encountering the word ‘MORTGAGE’ used together with the word ‘WIZARD’ in relation to the goods and services in question, the relevant public is likely to understand the mark as referring to a wizard used in the field of mortgages – that is, a computer program that guides a user through a series of steps to accomplish a task, namely borrowing money from a bank to buy a house or to regularly repay the money borrowed under a mortgage agreement – or as referring to the service provider as a ‘mortgage wizard’ – that is, an expert in the field of mortgages. Therefore, it is clear that the mark describes the nature of the goods and services in question and their intended purpose.

Furthermore, the applicant submits that, even if the relevant average consumer might consider that the mark referred to a ‘tool or utility that enabled installation of a software application’, a limitation had already been submitted to expressly exclude such tools or utilities from the specifications of each of the three classes, these amendments have been accepted by EUIPO and the mark was published on that basis.

The applicant claims that, when encountering the mark ‘MORTGAGE WIZARD’, the relevant consumer will not perceive it as a meaningful expression and that, therefore, the expression is distinctiveness. As a general rule, a mere combination of two descriptive words, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, remains descriptive in principle, unless, because of the unusual nature of the combination, the words create an overall impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the complete expression is more than the sum of its parts (judgment of 12/02/2004, C‑265/00, ‘Biomild’, paragraphs 39 and 43).

The sign ‘MORTGAGE WIZARD’ is nothing more than the sum of its elements and will be understood as referring to services that are provided by a mortgage expert, ‘or wizard’; to software applications that guide a mortgage expert through some complex task; and/or to goods providing instructions and guidance to help a mortgage expert to accomplish a task.

The applicant does not agree that the words ‘MORTGAGE WIZARD’ convey or could convey the concept of a wizard used in the field of mortgages – that is, a program that assists the relevant professionals in the field of mortgages to perform certain related tasks following a series of steps – or that they could be perceived as a reference to the service provider – that is, a mortgage expert. The applicant argues that the examiner has stretched the meanings of these two words and has arrived at a far-fetched meaning that no ordinary consumer would perceive.

The sign ‘MORTGAGE WIZARD’ is nothing more than the sum of its elements and will be understood as referring to services that are provided by a mortgage expert, or ‘wizard’; to software applications that guide a mortgage expert through some complex task; and/or to goods providing instructions and guidance to help a mortgage expert to accomplish a task. Therefore, the sign ‘MORTGAGE WIZARD’ is directly descriptive of the goods and services in question (tools or programs used in the mortgage field and mortgage-related services provided by an expert, or goods and services intended to be used by an expert in mortgages or to facilitate mortgage-related tasks).

As regards the argument that the examiner has given many different possible meanings and that there are other meanings of the words in the mark, which is direct evidence that the meaning is not obvious and or commonly known, proving that the words are vague and unclear, and that the expression does not convey direct information, it should be recalled that, for a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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)

Furthermore, considering the specialist knowledge of the relevant public in the field of mortgages, the meaning of the mark will be obvious and commonly understood by experts in this field. Therefore, the mark is not in any way vague or unclear, but conveys direct information about the nature of the goods and services in question and their intended purpose.

Consequently, the relevant public, when encountering the sign ‘MORTGAGE WIZARD’ in relation to the goods and services in question, will perceive it not as an indicator of commercial origin, but as an indicator of the nature and purpose of the goods and services.

As regards the applicant’s submission that it is seeking fair treatment and assessment of the current trade mark application, and also the applicant’s reliance on previous marks that have been lawfully and properly accepted for publication and registration, while the present application has been singled out as being different, for example from EUTM No 3 569 845 ‘Strategy Wizard’, registered for, inter alia, goods and services in Classes 9, 36 and 42, the legality of the decisions of the Office must be assessed purely by reference to that regulation, as interpreted by the EU courts, and not to the practice of the Office in earlier cases (judgment of 06/07/2011, T‑318/09, ‘TDI’, paragraphs 21-25 and the case law cited therein).

In any event, the fact that the EUIPO might in error have registered similar trade marks in the past does not oblige it to continue to register trade marks similar to them if said trade marks were descriptive. It should, therefore, also be pointed out that decisions relating to descriptiveness and distinctiveness depend to an extent on the evaluation in an individual case. Moreover, it is clear from case-law that the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality according to which no person may rely, in support of his/her claim, on unlawful acts committed in favour of another (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 77, and the case-law cited therein).

Considering all the above, since the sign applied for describes the characteristics or nature and quality of the goods and services at issue, it must be left free for competitors, being a descriptive indication in the sense of Article 7(1)(c) and Article 7(2) EUTMR for the goods and services in Classes 9, 36 and 42 for which registration is sought.

The Office acknowledges that the list of goods and services on pages 5 and 6 of the second objection notice is not the limited list, the reason being that in the second objection notice the applicant was informed that the initial objection was maintained. Nevertheless, the error is not decisive. In addition, in the second notice, the applicant was informed that the Office noted the request for a limitation of the list of goods and services.

The limitation of the list of goods and services of the EU trade mark application requested by the applicant is therefore admissible, since it does not broaden but restricts the scope of protection of the mark. However, adding the wording none of the above goods being a tool or utility that enables installation of a software application or being in connection with that tool or utility or none of the above services being in connection with a tool or utility that enables installation of a software application does not change the fact that the sign remains descriptive and non-distinctive. Therefore, this restriction would not change the outcome of the objection, as the sign could still be understood as referring to either a tool that guides a user through a complex mortgage-related task or services offered by an mortgage expert.

For the reasons raised in the second objection (attached) and for the abovementioned reasons and, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 422 513 ‘MORTGAGE WIZARD’ is hereby rejected for all the goods and services, namely for:

Class 09 Electronic publications; recorded video and audio; magnetic, optical or electronic data carriers; computer software; computer software for desktop computers, mobile devices, or provided on the Internet; electronic publications relating to the provision of financial advice and information, provision of advice and information on finance for retirement, insurance, investments, pensions, taxation, and foreign exchange trading; electronic publications relating to money management, financial planning, credit, lending, financial risk management, financial analysis and reporting, financial evaluation, financial consulting services, banking, stockbroking and exchanging money; recorded video and audio relating to the provision of financial advice and information, provision of advice and information on finance for retirement, insurance, investments, pensions, taxation, and foreign exchange trading; recorded video and audio relating to money management, financial planning, credit, lending, financial risk management, financial analysis and reporting, financial evaluation, financial consulting services, banking, stockbroking and exchanging money; magnetic, optical or electronic data carriers relating to the provision of financial advice and information, provision of advice and information on finance for retirement, insurance, investments, pensions, taxation, and foreign exchange trading; magnetic, optical or electronic data carriers relating to money management, financial planning, credit, lending, financial risk management, financial analysis and reporting, financial evaluation, financial consulting services, banking, stockbroking and exchanging money; computer software relating to the provision of financial advice and information, provision of advice and information on finance for retirement, insurance, investments, pensions, taxation, and foreign exchange trading; computer software relating to money management, financial planning, credit, lending, financial risk management, financial analysis and reporting, financial evaluation, financial consulting services, banking, stockbroking and exchanging money; computer software for desktop computers, mobile devices, or provided on the Internet relating to the provision of financial advice and information, provision of advice and information on finance for retirement, insurance, investments, pensions, taxation, and foreign exchange trading; computer software for desktop computers, mobile devices, or provided on the Internet relating to money management, financial planning, credit, lending, financial risk management, financial analysis and reporting, financial evaluation, financial consulting services, banking, stockbroking and exchanging money; none of the above goods being a tool or utility that enables installation of a software application or being in connection with that tool or utility.

Class 36 Providing financial advice and information; providing advice and information relating to finance for retirement, insurance, investments, pensions, taxation, foreign exchange trading; money management, financial planning, credit, lending, and financial risk management; financial analysis and reporting; financial evaluation; financial consulting services; banking; stockbroking; exchanging money; none of the above services being in connection with a tool or utility that enables installation of a software application.

Class 42 Software design, development, consultancy, repair, maintenance, integration, updating, rental, research, and troubleshooting; application service provider services; hosting software applications; none of the above services being in connection with a tool or utility that enables installation of a software application.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Roxana PÎSLARU