Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 26/02/2016

CARPMAELS & RANSFORD (Trade Marks) LLP

One Southampton Row

London WC1B 5HA

UNITED KINGDOM

Application No:	014 658 314
Your reference:	T038946EM
Trade mark:	TITANS
Mark type:	Word mark
Applicant:	TITAN PUBLISHING GROUP LIMITED Titan House, 144 Southwark Street London SE1 0UP UNITED KINGDOM

The Office raised an objection on 19/10/2015 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 18/12/2015, which may be summarised as follows:

1. It is correct that the word ‘TITAN’ is sometimes used in English to refer to people or things that are especially powerful or prominent in their field. However, this use is literary, high register and uncommon in common parlance (indicated in the enclosed definition from Cambridge Dictionaries). The use stems from the word’s roots in Greek mythology – the titans were an order of Greek gods renowned for their size and strength who overthrew the gods before them to rule during the Golden Age of Greek mythology. English speakers who understand the word ‘TITAN’ understand that it refers to these gods. Accordingly, for these consumers, the word ‘TITAN’ has very particular connotations of mythological force and fortitude. To many other English speakers, the word ‘TITAN’ is meaningless. If a word carries no meaning, it cannot possibly be descriptive.

2. Even though ‘TITANS’ is a recognisable English word, there is no direct link between the meaning of the word and the goods for which registration is sought. The applicant enclosed an example of its product, a figurine approximately 7 cm tall with a large head compared with the rest of the body. Even if the characters depicted were persons of great strength or size, this would not be a relevant purchasing consideration; consumers buy the goods because they represent their favourite characters. Given this, even if the mark were literally descriptive (which it is not), this would simply not be relevant. The sign applied for is playful and ironic, given the mythological connotations of the name and the comical nature of the goods as diminutive versions of popular fictional characters. The effect is that the mark applied for is fanciful, and certainly not descriptive. It naturally follows that the mark is distinctive.

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.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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 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 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 (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 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).

Regarding observation 1

Considering that the relevant public is the average consumer who is reasonably well informed and reasonably observant and circumspect, the Office insists that the consumer would be aware of the meaning of the sign applied for, namely that it would be understood as a meaningful expression – ‘persons of great strength or size’ – and not as a meaningless term. Furthermore, the Office is of the opinion that the trade mark would be perceived as descriptive and non-distinctive for the relevant goods, namely figurines, statuettes and ornaments of plastic; all being characters from comics, books, animations, films, television programmes, games, video games and online games; figurines, statuettes and ornaments of vinyl all being characters from comics, books, animations, films, television programmes, games, video games and online games, irrespective of whether the relevant public would perceive the sign applied for as meaning persons of great strength or size in itself or because of the association with a person from Greek mythology.

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

Regarding observation 2

In its second argument, the applicant denies the existence of a link between the sign applied for and the goods in question. In addition, it refers to its products as being miniatures. However, when the Office assesses whether the sign applied for is registrable or not, what is decisive is the wording of the goods in the application and not what the applicant’s final products look like. Furthermore, the Office refers to the reasoning put forward in response to observation 1.

Moreover, the relevant question is whether or not the sign applied for fulfils the conditions for registration stated in the CTM Regulation and not why consumers buy the products. Therefore, this argument of the applicant has to be set aside.

Last but not least, the sign applied for does not constitute a play on words, introduce elements of conceptual intrigue or surprise or have some particular originality or resonance, and it conveys a clear message. Consequently, it will not be perceived as fanciful.

Considering all the above, the Office maintains the objection and emphasises that the sign applied for would be considered descriptive and non-distinctive.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 658 314 is hereby rejected for all the goods for which registration is sought.

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.

Simona MACKOVÁ