Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 13/01/2016

PARTENAIRES PI SELARL (SOCIÉTÉ D'EXERCICE LIBÉRALE À RESPONSABILITÉ LIMITÉE)

2 rue du Général Delanne

F-92200 Neuilly Sur Seine

FRANCIA

Application No:	014497101
Your reference:	RECO/1A-MUE
Trade mark:	OPTIONS IDEAS
Mark type:	Word mark
Applicant:	Recognia Inc. 200-301 Moodie Drive Ottawa Ontario K2H9C4 CANADÁ

The Office raised an objection on 01/09/2015 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, for the reasons set out in the attached letter.

The applicant submitted its observations on 30/10/2015, which may be summarised as follows:

1. The words OPTION and OPTIONS have different meanings; the word  "option" may refer to the connotation stated by the Office, but the word "options" is perceived by the relevant public more broadly; namely,  the relevant consumer will attribute to the word "options" the following meanings: various opportunities or choices.

2. The trade mark is distinctive as it is highly unusual that two plural words should be united together as with the applied for mark. This certainly grabs the attention of the relevant public from both an appearance and from a phonetic point of view.

3. The applied for mark does not have a clear descriptive meaning and the mark is at most only suggestive or allusive as regards certain characteristics of the goods or services.

4. The Office has registered previously several trademarks containing the words "option" or "options". 

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.

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 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).

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.

The sign which has been applied for ‘OPTIONS IDEAS’ immediately informs consumers without further reflection that the services applied for are software, online database solutions or some other IT-solution for the providing of financial services, options trading or opportunities for financial analysis, information, etc.Therefore, the mark conveys obvious and direct information regarding the kind, intended purpose and subject matter of the services in question.

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, Doublemint, EU:C:2003:579, § 31.)

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of19/09/2002, C-104/00 P, Companyline, EU:C:2002:506, § 21).

This is clearly applicable to the present case. Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, taken as a whole, the mark applied for – ‘OPTIONS IDEAS’– is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

As regards the applicant's observations, the Office replies as follows:

1. The words OPTION and OPTIONS have different meanings; the word "option" may refer to the connotation stated by the Office, but the word "options" is perceived by the relevant public more broadly; namely, the relevant consumer will attribute to the word "options" the following meanings: various opportunities or choices.

The Office considers the word „option“ to have, even when it is presented in its plural form, the connotation referred to by the Office in its objection letter on 01/09/2015. The word „option“ or „options“ means ‘(business) the right to buy (call option) or sell (put option) a fixed quantity of a commodity, security, foreign exchange, etc, at a fixed price at a specified date in the future See also traded option’ (Collins English Dictionary). Therefore the word „option“ and is plural form „options“ refer to the same concept and just putting the word in its plural form does not preclude it from having a conceptual meaning.

Additionally, the Office finds it necessary to explain that the meaning „opportunities or choices“ is possible to attribute to both versions, to the word option or to its plural form „options“.

According to case law, the fact that a word has several meanings does not exclude its descriptive meaning. The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services with respect to which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 29). A sign must be refused registration under provision CTMR 7(1)(c) 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, Doublemint, EU:C:2003:579, § 32). In the present case the Office established that the trade mark applied for describes directly the kind, and intended purpose of the claimed goods and services. Therefore despite the fact that the words “option” or its plural form “options” may have different meanings, the Office cannot ignore the circumstance that the applied for word combination informs the relevant consumer directly and without any need for further interpretation of the characteristics of the claimed services.

2. The trade mark is distinctive as it is highly unusual that two plural words should be united together as with the applied for mark. This certainly grabs the attention of the relevant public from both an appearance and from a phonetic point of view.

Contrary to the Applicant’s statement, the Office is of the opinion that there is nothing unusual in presenting both words in plural form. It is obvious that the relevant consumer will perceive both words as having a descriptive meaning and presenting the words in their plural forms does not exclude their descriptive connotation in relation to the services in question. The claimed word combination is clearly descriptive in both the plural and in the singular form and therefore the relevant consumer will not perceive it as a distinctive combination allowing the goods and services to be distinguished. The fact is that the mark ‘OPTIONS IDEAS’ is descriptive in respect of the services applied for and, as a consequence, lacks any distinctive character.

3. The applied for mark does not have a clear descriptive meaning and the mark is at most only suggestive or allusive as regards certain characteristics of the goods or services.

The Office considers that, there is no need for an additional mental step to understand the connection between the mark and goods and services. Therefore the Office cannot agree with the applicant that there is no obvious or direct link between the sign and the objected goods and services. The words ‘options ideas’ as referring to the goods and services applied for is directly descriptive as it immediately inform consumers without further reflection that the services applied for are software, online database solutions or some other IT-solution for the providing of financial services, options trading or opportunities for financial analysis, information, etc. Therefore the mark conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question.

The claimed sign contains the words options and ideas, which, when viewed as a whole, create an overall impression which is not sufficiently far from that produced by the combination of meanings of the elements of which it is composed, and the result is just the sum of its parts. The mark does not possess the minimum level of distinctiveness, originality or resonance required.

The mark applied for –‘OPTIONS IDEAS’ – is devoid of any distinctive character and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

4. The Office has registered previously several trademarks containing the words "option" or "options".

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case-law, decisions concerning registration of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of that regulation, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C 37/03 P, BioID, EU:C:2005:547, § 47 and judgment of 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 35).

Moreover, it is not appropriate to compare the mark applied for and the registrations quoted by the applicant. This is mainly because any given mark should be assessed as a whole and not by comparing its individual elements with other registrations. Further, it is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another (see judgment of 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 497 101 is hereby rejected for all the goods and services 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.

Liina PUU