Refusal of application for a European Union trade mark

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

Alicante, 12/04/2016

Véronique Hoffeld

18-20, rue Edward Steichen

L-2540 Luxembourg

LUXEMBURGO

Application No:	014963623
Your reference:	NeedAHauler.com
Trade mark:	NeedAHauler.com TM
Mark type:	Figurative mark
Applicant:	Sandhills Publishing Company Corporation. 120 West Harvest Drive Lincoln, Nebraska 68521 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 20/01/2016 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 submitted its observations on14/03/2016, which may be summarised as follows:

1. The definition only at one point makes an indirect reference to the applicant’s services and at no point does it directly describe the services, as the company does not provide a hauler as such, in Class 39, but rather an online platform.

2. A limitation is proposed in order to overcome the objection if the Office maintains the objection.

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 (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).

The applicant argues that at best the mark is an indirect reference to the services and that it is not directly descriptive, as the services applied for are not direct haulage services in Class 39. The Office respectfully contests this view and considers that the term is sufficiently descriptive to enable the relevant consumer to immediately understand the term as a rhetorical question, i.e. that the company is offering services for locating a hauler should the third party need one, or the company is asking ‘need a hauler?’ in other words.

The term ‘Need a Hauler’ in this context is offering the consumer a service to find a hauler that is suited to them, and the relevant consumer would immediately recognise that by using the services provided by the applicant, i.e. advertising, publicity, promotion, databases and bulletin boards, that they are able to locate a hauler when they need one. The term Need a Hauler is the most apt way to advertise this.

Although other meanings may be conjured up by interpreting the mark, it should be noted 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, emphasis added.)

As regards the restriction of goods and services supplied by the applicant, the Office has considered whether this will enable the objection to be waived, but regrettably the limitation is not sufficiently restricted to deviate away from the original objection, as some pertinent terms remain, i.e. providing a searchable online advertising guide featuring the goods and services of other on-line vendors on the internet; (advertising of haulers online), providing an online marketplace for transportation of shipment, (online market place for those who need a hauler for shipments) etc.

The Office remains of the opinion therefore that the above trade mark consisting of descriptive words and stylisation common to the trade, is not capable of performing the function of a trade mark.

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 14 963 623 is hereby rejected for all the services claimed.

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