Refusal of application for a European Union trade mark

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

Alicante, 22/06/2016

J A KEMP

14 South Square

Gray's Inn

London WC1R 5JJ

REINO UNIDO

Application No:	014961023
Your reference:	TM402859EM-JAF/ACS
Trade mark:	TACKLEDIRECT
Mark type:	Word mark
Applicant:	TD Associates, LLC 6825 Tilton Rd, Bldg C Egg Harbor Township New Jersey 082344426 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/02/2016 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 submitted its observations on 02/06/2016, which may be summarised as follows:

1. The relevant consumer would perceive the term tackle as referring to specific fishing equipment. The dictionary definition should not be seen as decisive if it does not relate to the consumers’ perception.

2. The mark would be understood by the relevant English speaking consumer as TACKLED –IRECT not as TACKLE DIRECT.

3. Previous similar acceptances cover a variety of ‘direct’ marks.

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 waive the objection for the following goods and services:

Class 25 Clothing, footwear and headgear including caps, visors, long and short sleeve t-shirts; articles of casual wear and sports clothing; jackets; fleeces; waterproof wear; waders; boots; hats; gloves; all the aforesaid being in particular for fishing.

Class 28 Fishing boxes, bags and holdalls; parts and fitting for all the aforesaid goods.

Class 35 The provision of online retail store services in connection with clothing, footwear and headgear being in particular for fishing and fishing boxes, bags and holdalls all for use in fishing and parts and fittings for all the aforesaid goods.

The objection is maintained for the remaining goods and services.

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).

Having carefully considered the arguments presented by the applicant, the Office has reviewed the decision with regards the scope of the term tackle and its meaning in relation to fishing accessories. As such, the objection has been waived for items such as clothing in Class 25, boxes, bags and holdalls in Class 28 and the retail thereof.

As regards the applicants submissions regarding the mark being understood as “TACKLED” and “-IRECT”, the Office respectfully disagrees that this would be the relevant consumers’ understanding of the mark. This is because when relevant consumers (fishermen or fishing enthusiasts primarily) see the conjoined term in relation to the goods and services, they would naturally break the mark into the words tackle – representing the fishing based accessories, and direct – representing the method of obtaining goods. It is unlikely that the consumer will read the words in the manner suggested by the applicant, particularly as the second suggested word has no legible meaning in the English language, and therefore would not form a natural break in the mark.

With regards the earlier marks raised as similar by the applicant, the office considers that there are differences in the marks particulars. For example, SPORTS DIRECT suggests that one could buy sports (not equipment) in a direct manner, which may be akin to FISH(ING) DIRECT, but not so akin to TACKLEDIRECT. The office notes that many of the marks were also accepted by the office in prior practice guidelines, which may have provided differing rules on the acceptance of marks.

That said, 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

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 14 961 023 is hereby rejected for the following more restricted goods and services:

Class 28 Fishing lines, reels and weights; fish alarms; fishing stools; fishing rods; sports articles all for use in fishing; parts and fittings for all the aforesaid goods

Class 35 The provision of online retail store services in connection with fishing lines, reels and weights, fish alarms, fishing stools, fishing rods and sports articles all for use in fishing and parts and fittings for all the aforesaid goods.

The application is accepted for the remaining goods and services, namely:

Class 25 Clothing, footwear and headgear including caps, visors, long and short sleeve t-shirts; articles of casual wear and sports clothing; jackets; fleeces; waterproof wear; waders; boots; hats; gloves; all the aforesaid being in particular for fishing.

Class 28 Fishing boxes, bags and holdalls; parts and fitting for all the aforesaid goods.

Class 35 The provision of online retail store services in connection with clothing, footwear and headgear being in particular for fishing and fishing boxes, bags and holdalls all for use in fishing and parts and fittings for all the aforesaid goods.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Richard PRYCE