Refusal of application for a European Union trade mark

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

Alicante, 04/07/2016

Angelica Coppini

137, Spinola Roard

St, Julians STJ3011

MALTA

Application No:	014941512
Your reference:	OID467
Trade mark:	SEARCH PARTNER
Mark type:	Figurative mark
Applicant:	IPA INTERNATIONAL LIMITED Spinola Road 137 St Julians Stj 3011 MALTA

The Office raised an objection on 12/01/2016 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, for the reasons set out in the attached letter.

The applicant, after an extension of the time limit, submitted its observations on 13/05/2016, which may be summarised as follows:

1. The applicant notes that the Office has registered similar marks for similar or identical services namely ‘CSP COMMODITY SEARCH PARTNERS’ Reg.no. 8 457 426 and ‘LEADING SEARCH PARTNERS’ Reg.no. 12 685 384. Both these marks should be comparable with this application.

2. The applicant also refers to a number of marks registered throughout the world containing the element ‘SEARCH PARTNER’. The applicant refers to various registrations in United States, Switzerland, Austria, Germany, Lithuania and Canada. All the marks includes the word ‘SEARCH’ and ‘PARTNER’ with other words and not necessarily together or in that order and registered for Class 35.

3. The mark is registered in Norway since 3 July 2007 Reg.no. 239 977 for similar services that has been objected to.

4. The applicant considers the application as a composite sign is figurative enough and could be registered due to its graphic and decorative elements.

5. The mark considered as a whole constitutes an individual logo and as such it is quite unlikely that it is considered as a mere description mentioned in Class 35. The result derived from a combination of font, colour and symbols used in the trade mark shows the complete improbability that anyone would perceive the mark as a mere description of selecting personnel services included in Class 35.

6. The applicant also claim that they have acquired distinctiveness through use according to Article 7(3) EUTMR and present evidence of such use as follows:

• A printout of a Norwegian Internet page from an unclear date.

• A printout of a Google search page showing hits obtained by using the search term ‘searchpartner’.

• A business card from the applicant using the logo as part of its composition.

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.

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union 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 European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

The Office also note that the referred marks differ in their wording and in their figurative appearance and are therefore not comparable with the application in question.

Furthermore, the Office practice has evolved and changed during its existence. Lately, the Office has become more stringent regarding the acceptance of word and device marks featuring figurative elements which are seen to reinforce the message of the words.

As regards the national decisions referred to by the applicant according to case-law:

the European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union 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.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

The Office maintains that the mark consists essentially of an expression that, notwithstanding certain stylised elements, conveys obvious and direct information regarding kind and intended purpose of the services in question and that the figurative element consisting of a magnifying glass, which is a common symbol for searching and therefore reinforces the message that the services are for searching partners of various kind. The mark as a whole is therefore descriptive and lacks distinctive character.

Acquired distinctiveness

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader … .

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages … .

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation … .

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied … .

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect … .

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

To show that the mark has acquired distinctiveness it would be necessary to show not only great sales within the relevant territories (which has not been done), but also that the relevant public perceives the mark as a trade originator, for instance through a market survey. Statements from chambers of commerce and industry, or other trade or professional organizations could also give weight to the applicant’s claim (see judgment of 10/11/2004, T-396/02, ‘Shape of sweet, paragraphs 56-59): No such documents have been filed.

It is also noted that the applicant has presented no evidence of a more independent nature, such as statements from trade associations and competitors or market surveys. Generally, there is a lack of evidence that focuses on the perception of the relevant public.

Therefore, in an overall assessment, the Office cannot but conclude that the evidence presented is insufficient in order to demonstrate that, in the eyes of the relevant public, the mark has become distinctive in relation to the services sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) has not been proven.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 941 512 is hereby rejected for the following services:

Class 35 Employment agencies; Commercial or industrial management assistance; Business management assistance; Professional business consultancy; Business management consultancy; Personnel management consultancy; Psychological testing for the selection of personnel; Personnel recruitment; Business organization consultancy; Advisory services for business management; Outsourcing services [business assistance].

The application is accepted for the remaining services.

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.

Magnus ABRAMSSON