Refusal of application for a European Union trade mark

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

Alicante, 07/10/2016

MAUCHER JENKINS

26 Caxton Street

London SW1H 0RJ

REINO UNIDO

Application No:	014979504
Your reference:	KC/td/T046901/EM/09plus
Trade mark:	MOBILE PHONE XCHANGE
Mark type:	Word mark
Applicant:	Brightstar 20:20 Limited Weston Road Crewe CW1 6BU REINO UNIDO

The Office raised a partial objection on 26/02/2016 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 mark applied for consists of the words MOBILE PHONE XCHANGE. For ease of reference the contested goods and services are as follows:

Class 9 Mobile telephones, mobile telecommunications equipment; SIM cards for mobile telephones; tablet computers; smartphones; equipment and accessories for mobile telephones, tablet computers and smartphones; mobile electronic devices that enable the user to keep track of or manage personal information; accessories for telephones and telephone handsets; adapters for use with telephones; battery chargers for use with telephones; desk or car mounted units incorporating a loudspeaker to allow a telephone handset to be used hands-free; in-car telephone handset cradles; headphones; hands free devices for telephone handsets and other mobile electronic devices.

Class 37 Installation, maintenance repair and upgrading of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets.

Class 38 Telecommunication services; communication of information by electronic means; message sending and message delivery services; advisory, consultancy and information services relating to all of the aforementioned services.

Class 42 Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; design and development of telecommunications equipment and devices and accessories; design and development of wireless communications equipment and devices and accessories; Installation, maintenance repair and upgrading of telecommunications software and computer software.

The applicant submitted its observations on 23/06/2016, which may be summarised as follows:

• It is noted that part of the goods and services covered by this application have been objected to on the basis that the mark is non-distinctive in respect of the English speaking parts of the European Union.

• Extensive use has been made of the trade mark MOBILE PHONE XCHANGE throughout the EU, including in the English-speaking parts of the EU and we would therefore submit that the present application should in fact be accepted for all the goods and services, in accordance with Article 7(3) of the European Union Trade Mark Regulation.

• A Witness statement of Mr. Andrew Hancock along with attachments numbered 1-4 are submitted demonstrating that the mark has acquired distinctiveness through the use made of it.

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.

The Office confirms its viewpoint that with regards to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons previously given.

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.)

Furthermore, 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).

In the present case, the objectionable goods and services covered by the mark applied for are everyday consumption goods and services as well as specialised goods and services aimed at both average consumers and a professional/specialist public. In view of the nature of the goods and services in question, the awareness of the relevant public will be high.

Moreover, since the mark MOBILE PHONE XCHANGE consists of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 30).

The Office remains of the opinion that the expression MOBILE PHONE XCHANGE is indeed descriptive of the kind and characteristics of the goods and services in question.

The overall impression conveyed by the mark as a whole must be taken into account. Nevertheless, in so doing it is appropriate to consider each element of which the mark is composed and then assess whether the resulting whole is more than the sum of its parts (see 12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 39 and 43).

The word mark applied for consists of the combination of readily identifiable and ordinary words from the English language, MOBILE PHONE XCHANGE. There is nothing unusual about the structure of that sign. The words are presented in a sequence that is intellectually meaningful. As previously mentioned, the letter “X” is commonly used to replace “Ex” in business (Information extracted from Collins Online English Dictionary on 26/02/2016, at https://www.collinsdictionary.com ). Furthermore, with regard to the word “XCHANGE” it is also important to note that due to the near identical spelling/presentation along with the identical pronunciation (insofar as the English language is concerned) the relevant consumer will perceive the word “XCHANGE” as “EXCHANGE”. Consequently, there is no doubt that the relevant consumer will not perceive the word combination as unusual but rather as a meaningful expression, on the basis that the message conveyed by the sign is clear, direct and immediate to the relevant public and in relation to the contested goods and services. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the goods and services at issue.

To reiterate, the Office remains of the opinion that taken as a whole, the words MOBILE PHONE XCHANGE immediately informs consumers without further reflection that the contested goods and services directly relate to the replacement/transfer of a mobile phone for something else, and/or are directly concerned with a mobile telephone exchange where telephone lines are interconnected, etc. Therefore when the words MOBILE PHONE XCHANGE are used in conjunction with the contested goods and services, the mark would merely be viewed in a descriptive sense. Consequently, the mark will be perceived as conveying obvious and direct information regarding the kind and characteristics of the goods and services in question.

In conclusion, the argument in the present case concerns whether MOBILE PHONE XCHANGE can be registered as a trade mark for the contested goods and services claimed in Classes 9, 37, 38 and 42 in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the expression is likely to convey to a relevant consumer of those goods and services at issue, in particular the English-speaking consumer. The Office confirms, for the reasons already given, that the mark MOBILE PHONE XCHANGE conveys obvious and direct information regarding the kind and characteristics of the goods and services in question.

Consequently, pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the Office has decided to maintain the partial objection based on the reasons set out above for the following goods and services:

Class 9 Mobile telephones, mobile telecommunications equipment; SIM cards for mobile telephones; tablet computers; smartphones; equipment and accessories for mobile telephones, tablet computers and smartphones; mobile electronic devices that enable the user to keep track of or manage personal information; accessories for telephones and telephone handsets; adapters for use with telephones; battery chargers for use with telephones; desk or car mounted units incorporating a loudspeaker to allow a telephone handset to be used hands-free; in-car telephone handset cradles; headphones; hands free devices for telephone handsets and other mobile electronic devices.

Class 37 Installation, maintenance repair and upgrading of telecommunications apparatus and systems, telephones, mobile telephones and telephone handsets.

Class 38 Telecommunication services; communication of information by electronic means; message sending and message delivery services; advisory, consultancy and information services relating to all of the aforementioned services.

Class 42 Scientific and technological services and research and design relating thereto; design and development of computer hardware and software; design and development of telecommunications equipment and devices and accessories; design and development of wireless communications equipment and devices and accessories; Installation, maintenance repair and upgrading of telecommunications software and computer software.

The application is acceptable for the following goods and services:

Class 9 software applications for monitoring domestic or industrial consumption of electrical energy, gas, heat and water; software applications for the remote monitoring of security systems; software applications for use in remote control of electricity, gas, heat, water and energy supplies; software applications for use in the remote control of security systems; bags and cases specially adapted for holding or carrying portable telephones and telephone equipment and accessories.

Class 38 News and media services.

However, the Office notes from the applicant’s submissions that they claim that extensive use has been made of the trade mark MOBILE PHONE XCHANGE throughout the EU, including in the English-speaking parts of the EU and as such submit that the present application should in fact be accepted for all the goods and services, in accordance with Article 7(3) of the European Union Trade Mark Regulation.

The evidence submitted consists of the following:

• A Witness Statement in the name of Andrew Hancock, Finance Director of Brightstar 20:20 Limited (the applicant).

• The following figures demonstrating the number of mobile telephones that have been recycled or upgraded for payment, through online services at www.mobilephonexchange.co.uk between 2005 and 2013 (details retrieved from the Witness Statement):

• The following figures demonstrating the turnover figures for Mobile Phone Xchange between 2005 and 2013 (details retrieved from the Witness Statement):

• Recognition from independent reviewers confirming that Mobile Phone Xchange is associated with high quality mobile telephone recycling and upgrade services (this information is contained in the Witness Statement).

• Attachment 1 – Various press releases which show the expression Mobile Phone Exchange being referred to as a company responsible for device buy-back and trade business (various dates in 2012).

• Attachment 2 – Archive information retrieved from ‘Wayback Machine’ showing yearly calendars mapping the number of times the applicant’s web page, http://mobilephonexchange.co.uk was ‘crawled’ (from February 2006 – May 2016).

• Attachment 3 – Extracts from the Mobile Phone Xchange website (www.mobilephonexchange.co.uk ). These relate to ‘contact details’ regarding buying used phones and ‘how it works’ relating to instructions regarding mobile phone trade-ins (relevant dates do not appear to be visible).

• Attachment 4 – Mobile Phone Xchange reviews retrieved from:

“Compare My Mobile” (www.comparemymobile.com );

“Trade My Mobile” (www.trademymobile.co.uk );

“Selling My Phone” (www.sellingmyphone.co.uk );

“Tech Watch” (www.techwatch.co.uk ) dated, May 2010);

“Compare and Recycle” (www.compareandrecycle.co.uk );

“Mobile Recycle Wallet” (www.mobilerecyclewallet.co.uk );

All reviews appear undated with the exception of the review provided by ‘Tech Watch”.

Acquired Distinctiveness

It should be noted that 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 and services 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 (see judgment of 10/11/2004, T‑396/02, ‘Forme d’un bonbon’, paragraphs 55-59; judgment of 04/05/1999, joined cases C‑108/97 and C‑109/97, ‘Windsurfing Chiemsee’, paragraph 52; judgment of 22/06/2006, C‑25/05 P, ‘Storck’, paragraph 75 and judgment of 18/06/2002, C‑299/99, ‘Philips’, paragraph 63).

Thus, in the present case, according to settled case-law, acquired distinctiveness must be demonstrated throughout the territory in which a trade mark did not have, ab initio, a distinctive character (judgment of 22/06/2006, C-25/05 P, ‘Sweet wrapper’, paragraphs 83 and 86; and judgment of 29/09/2010, T-378/07, ‘RED/BLACK/GREY (Surface of a tractor)’, paragraph 30). Since the trade mark applied for is composed of English language words, and does not have ab initio, a distinctive character in the parts of the European Union where English is the official language, its acquired distinctiveness at the moment of filing the application (07/01/2016), for all the goods and services in question must be proved only in those parts of the European Union, that is, the United Kingdom, Ireland and Malta.

The applicant puts forward that the evidence submitted, as previously documented, demonstrates that the trade mark MOBILE PHONE XCHANGE has acquired distinctiveness through its use. However, the Office is of the opinion that the documents submitted are not sufficient to adequately assess whether or not, at least, a significant proportion of the relevant public in the United Kingdom, Ireland and Malta identifies the applicant's goods and services at issue as originating from its company because of the use made of the mark applied for.

It has to be put forward that the evidence submitted must relate to the situation before the filing date, i.e. before 7^th January 2016 (11/06/2009, C-542/07 P, Pure Digital, EU:C:2009:362, § 42, 52), and with regard to the parts of the European Union where the ground for refusal pertains, namely at least to Ireland, Malta and the United Kingdom, the three Member States of the European Union in which English is spoken as an official language.

Furthermore, account must be taken, inter alia, of 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 the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see 17/05/2011, T-7/10, υγεία, EU:T:2011:221, § 83). Therefore the applicant should submit evidence that enables the Office to find that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (see 15/12/2005, T-262/04, Briquet à pierre, EU:T:2005:463, § 61 and the case-law cited therein).

Whilst the Office notes the evidence submitted in support of an acquired distinctiveness claim the Office is of the viewpoint that the evidence fails to demonstrate that the subject mark MOBILE PHONE XCHANGE has acquired distinctiveness through its use for the contested goods and services. The Office is of the viewpoint that the evidence submitted does not adequately permit the assessment of 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 applicant in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods and services as originating from the applicant, etc., nor does it adequately demonstrate that the mark has been used in relation to all the contested goods and services.

With regards to the Witness Statement, dated 21/06/2016, of Mr Andrew Hancock, the Finance Director of Brightstar 20:20 Ltd, it is noted that the information provided comes from Mr Hancock’s personal knowledge or from company records. It is clear from the information provided that the expression MOBILE PHONE XCHANGE is used in trade by the applicant in relation to the upgrade/recycling of mobile telephones for individuals as well as organisations in the EU. However, information about the applicant’s business provided in the Witness Statement is not sufficient to adequately demonstrate that in terms of all the contested goods and services that the descriptive expression MOBILE PHONE XCHANGE has acquired distinctiveness through its use.

With regards to the entries from various websites containing information about applicant’s products/services, from the evidence submitted the Office concludes that it is not possible to ascertain with any certainty how large a part of the relevant public were that accessed these websites and whether the relevant public originate from the UK, Ireland and Malta. What is clear from such website entries is that the mark MOBILE PHONE XCHANGE is used by the applicant. However, such findings are not sufficient to lift the term above being a merely descriptive term in relation to the contested goods and services for which registration is sought.

Furthermore, it is noted that relevant evidence such as catalogues, magazines, advertisements, invoices, etc., have not been submitted. Likewise, there is no comparative data provided that would allow the Office, to make conclusions about the applicant’s market share, in particular, how large the applicant’s market share actually is.

It is noted that the applicant has submitted evidence demonstrating that its internet site has been visited in high numbers. However, the amount of visits to the applicant’s home page is not an indication that a certain product or service of the applicant has acquired distinctiveness. Additionally, the number of said visits is not broken down by territories. Consequently, this evidence alone does not provide reliable data about the intensity of use in the relevant Member States. Furthermore, with regards to the sparse evidence submitted relating to the applicant’s webpages the Office is of the viewpoint that it is usual for a service provider to have a webpage as most businesses nowadays use webpages to advertise their goods and services, but based on this fact alone it is not possible to conclude that the mark in question, as a whole, has acquired distinctiveness through use.

The evidence of the turnover generated by the mark MOBILE PHONE XCHANGE between the periods of 2005-2013 undoubtedly shows a consistent rise leading to an impressive yearly turnover. However, the figures provided have not been broken down to indicate the actual goods and services concerned, likewise unit prices have not been provided, nor have the turnover figures been evidenced through customer invoices, etc. Thus, the overall monetary amount provided by the applicant as a result of ‘sales’ is not detailed enough to persuade the Office. Moreover these figures are not corroborated by any additional evidence. Likewise, the Office notes that there has been no evidence submitted relating to advertising or advertising expenditure.

As previously stated, it has to be put forward that Article 7(3) EUTMR not only requires intense use of the sign by the holder but goes further than that. The result of the use made of the sign must be such that the sign originally incapable of performing the function of indicating origin, which is the central function of a trade mark, now fulfils this function as a result of that use. The identification by the relevant public of the products and services as originating from a given undertaking must be the result of the use of the mark as a trade mark which makes it capable of distinguishing the products and services concerned from those of other undertakings. This must be assessed in relation to the goods and services in respect of which registration is applied for and by assessing the evidence which relates inter alia to 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 and services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (18.06.2002, C-299/99, Remington, EU:C:2002:377, § 59, 60 and 64).

Therefore, following a careful assessment of the evidence provided the Office finds that it does not allow the assessment of the proportion of the public who, because of the mark, would identify the goods and services at issue as originating from a particular undertaking and as such, the Office concludes that it is not sufficient to demonstrate that the mark has acquired distinctive character in consequence of the use made of it. Therefore, the content of Article 7(3) EUTMR cannot be applied to waive the objection applicable to the present case.

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.

Sam CONGREVE