Refusal of application for a European Union trade mark

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

Alicante, 23/02/2017

PORTA, CHECCACCI & ASSOCIATI S.p.A.

Via Trebbia 20

I-20135 Milano

ITALIA

Application No:	015117104
Your reference:	PIT455CTM01/AMB/lib
Trade mark:	DRIVER
Mark type:	Figurative mark
Applicant:	PIRELLI TYRE S.p.A. Viale Piero e Alberto Pirelli, 25 I-20126 Milano (MI) ITALIA

With the notification of 26/10/2016 (attached) the applicant was informed, that the sign applied for cannot be registered under Article 7(1)(b), (c) and 7(2) EUTMR.

With the above notice the applicant was given opportunity to submit observations in reply. On 22/12/2016 the applicant submitted its observations which can be summarized as follows:

1. The typeface of the mark applied for should be taken into account.

2. There is no direct link between the word DRIVER and the goods and services claimed.

3. In case of DRIVER meaning an electronic circuit that supplies another electronic circuit this has hardly to do with the goods in class 9 or services in class 42. The definition of driver (operator of a motor vehicle) is only remotely associated with the services at issue in class 35.

4. The sign applied for has been registered as Italian trade mark under No. 0001278706 for classes 35, 36, 37. The trade mark is well known among the users in this specific market sector. “ ” and “PIRELLI” are strictly connected. The Inter football team is sponsored:

The trademark can be seen on may vans operating in the country for car and tyre repair. The mark is likewise used in association with games.

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. Having given the above arguments careful consideration, in line with the Guidelines¹, the Office maintains the grounds for refusal in respect of the contested goods and services. The reasons are explained hereunder.

The Court of Justice has consistently held that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (e.g. judgment in the Case T-79/00, ‘LITE’).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (e.g. judgment of 16/09/2004, C-329/02 P, ‘SAT.2’).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301; 09/07/2008, T-58/07, ‘Substance for Success’, EU:T:2008:269; and consistent case-law on absolute grounds for refusal).

Although it is clear from Article 7(1) EUTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1) EUTMR. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b). A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (see, to that effect, judgment of 12/02/2004, C-265/00, ‘Biomild’).

The sign applied for reads:

“Driver” means “a person who drives a vehicle” (reference extracted from the Collins English Dictionary).

The goods and services at issue are the following:

9 Simulation software for use in digital computers; Antennas and aerials as communications apparatus; Point-to-point communications equipment; Broadcasting equipment; Computer networking and data communications equipment; Network communication apparatus; Wireless communication apparatus; Downloadable applications for use with mobile devices; Software and applications for mobile devices including software and applications relating to vehicle rental, vehicle leasing, vehicle fleet management, vehicle and transportation reservation and vehicle sharing; software and applications to organize, coordinate, facilitate, transact in, manage and schedule vehicle rental, vehicle leasing, vehicle and transportation reservation and vehicle sharing; Recorded content; Navigation, guidance, tracking, targeting and map making devices; Safety, security, protection and signalling devices; Measuring, detecting and monitoring instruments, indicators and controllers; Information technology and audiovisual equipment; electronic, encoded, magnetic and electronic key cards for use with vehicles and in respect of vehicle hire, leasing, fleet management, reservation and sharing.

35 Vehicle dealership services; Business services in the field of leasing, rental of vehicles and car sharing; Business management of a vehicle fleet, consisting in facilitating and organising the maintenance or the repair of automobiles, the vehicle breakdown assistance, tracking and monitoring vehicles for commercial purposes; business consultation services relating to the management of a fleet of vehicles for commercial purposes; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; business introductions for vehicle rental and vehicle sharing purposes business consultancy and administrative activities in the aforesaid sectors; distribution services through shops, namely, retail of tyres for vehicles, wheels and related fittings; distribution services through shops namely, retail of automobile spare parts and accessories; electronic billboard advertising in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing; computerized data base management in the nature of information in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing; providing shoppers' guide information in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing, and referrals in the field of automobile, truck, light-duty van and fourwheel drive vehicle rental, sales and leasing; provision of list of specialist organisations which provide technical assistance related to tyres for vehicle wheels and related fittings, including automobile spare parts and fittings for commercial purposes; business (economic) advisory and consultancy services in relation to repair and maintenance of vehicles.

37 Provision of repair information on vehicle operational status and warnings; provision of list of specialist organisations which provide technical assistance related to tyres for vehicle wheels and related fittings, including automobile spare parts and fittings for repair purposes.

39 Transport services for passengers and freight; vehicle transport, storage services; conveyance of persons, goods and motor vehicles; vehicle rental (including car sharing and courtesy car); chauffeur services; car parking services, parking place rental and procurement of parking places for motor vehicles; car pooling; transport fleet management services, vehicle towing services; vehicle breakdown recovery services; recovery of vehicles; Providing a on-line interactive data base in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental and leasing; provision of road hazard information.

42 Application service provider services, hosting a website and online platform services relating to transportation and to vehicle hire, sharing and reservation; software-as-service services for transportation and for vehicle hire, sharing and reservation; provision of web-based and non-downloadable software for transportation services and for vehicle hire, sharing and reservation services; provision of information, advisory and consultancy services in relation to the aforesaid services; technical planning and consultancy regarding vehicle fleets and inspection thereof; technical advisory and consultancy services in connection with repair and maintenance of vehicles; technical consultancy services in connection with repair and maintenance of vehicles; environmental protection advisory and consultancy services in relation to repair and maintenance of vehicles; provision of weather information; provision of technical information on vehicle operational status and warnings; provision of all of the foregoing information and assistance to motor vehicle drivers and passengers via global positioning systems and satellite technology; provision of technical information related to tyres for vehicle wheels and related fittings, automobile spare parts and fittings through specialist organisations; information storage and retrieval in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing.

In view of the nature of the goods services in question, the awareness of the relevant public will high.

As regards the following goods, the objection has been waived:

Antennas and aerials as communications apparatus; Broadcasting equipment.

In so far the examiner concedes that the link between the just mentioned specific goods of class 9 and the sign is too remote.

In the present case, there exists a link to all the remaining goods and services in question as the public can grasp the meaning that the goods and services have a driver (an operator of a vehicle) as subject matter or are directed to the target group of drivers.

The Office must examine the mark applied for with respect to the goods and services as specified in the application and by reference to a typical consumer of the goods and services in question who encounters the sign with some awareness and in the context in which it is to be used.

In this regard, it must be stressed that the distinctive character of a trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods and services (consistent case-law on absolute grounds for refusal). The word will be understood by the general public in England, Ireland, Malta, the Netherlands, Sweden, Denmark, Finland and therefore the presumed expectations of the average English-speaking consumer (be it a native or originating from a country where a relatively high command of the English language exists) are to be considered in assessing whether the mark is descriptive or distinctive.

Furthermore it has to be considered that the consumers will be directly confronted with the services and see the sign at the same time. This is the situation which is relevant for the examination of the services.

In the present case the main issue is the lack of distinctiveness of the sign applied for. The dictionary-term applied for indicates merely that the services are directed to drivers or have a driver as subject matter. This is a mere informative statement and there is nothing is remarkable, outstanding or unusual. The sign applied for is rather informative and does not go beyond a banal message.

Consequently, faced with the sign in relation to the concerned goods and services, the consumer will perceive it as simply an informative statement, informing the public, in a direct way, that the company offers goods and services, that directed to the target group of drivers or have a driver as subject matter. Bearing in mind all the above factors, it is highly unlikely that the relevant consumers will recognize the mark sought automatically as a sign which could distinguish the contested goods and services from those of other competitors. When the sign is used with respect to the goods or services at issue, the targeted public will merely perceive it as words with a meaning and not as a trade mark. It is recalled, that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned (e.g. judgment of 23/10/2003, C-191/01 P, ‘Doublemint’, EU:C:2003:579). The sign at issue lacks distinctiveness for the reasons stated.

The examiner considers that the sign is merely informative and thus not suggestive or vague.

In class 9 Simulation software for use in digital computers can be specially intended for drivers, e.g. how to drive on a road. Such software can be used for driving tests (e.g. when the ability of drivers is tested).

Point-to-point communications equipment; Computer networking and data communications equipment; Network communication apparatus; Wireless communication apparatus can be directed to drivers of vehicles. Such apparatus can figure in vehicles and as the technique evolves this might lead to fully automated cars in the near future.

As regards Downloadable applications for use with mobile devices; Software and applications for mobile devices including software and applications relating to vehicle rental, vehicle leasing, vehicle fleet management, vehicle and transportation reservation and vehicle sharing; software and applications to organize, coordinate, facilitate, transact in, manage and schedule vehicle rental, vehicle leasing, vehicle and transportation reservation and vehicle sharing those goods are directed likewise to drives of vehicles. Vehicle rental may include vehicles with a driver.

Also for the following group of goods Recorded content; Navigation, guidance, tracking, targeting and map making devices; Safety, security, protection and signalling devices; Measuring, detecting and monitoring instruments, indicators and controllers; Information technology and audiovisual equipment; electronic, encoded, magnetic and electronic key cards for use with vehicles and in respect of vehicle hire, leasing, fleet management, reservation and sharing the specification explains that they are for use with vehicles. The sign informs about the subject matter.

The services in class 35, namely Vehicle dealership services; Business services in the field of leasing, rental of vehicles and car sharing; Business management of a vehicle fleet, consisting in facilitating and organising the maintenance or the repair of automobiles, the vehicle breakdown assistance, tracking and monitoring vehicles for commercial purposes; business consultation services relating to the management of a fleet of vehicles for commercial purposes; customer loyalty services and customer club services, for commercial, promotional and/or advertising purposes; business introductions for vehicle rental and vehicle sharing purposes business consultancy and administrative activities in the aforesaid sectors; distribution services through shops, namely, retail of tyres for vehicles, wheels and related fittings; distribution services through shops namely, retail of automobile spare parts and accessories; electronic billboard advertising in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing; computerized data base management in the nature of information in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing; providing shoppers' guide information in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing, and referrals in the field of automobile, truck, light-duty van and fourwheel drive vehicle rental, sales and leasing; provision of list of specialist organisations which provide technical assistance related to tyres for vehicle wheels and related fittings, including automobile spare parts and fittings for commercial purposes; business (economic) advisory and consultancy services in relation to repair and maintenance of vehicles have a direct link to the word driver, not just a remote one as the applicant pretends. The sign applied for cannot be monopolized by one undertaking also other competitors should be able to use it to advertised their services.

In class 37 Provision of repair information on vehicle operational status and warnings; provision of list of specialist organisations which provide technical assistance related to tyres for vehicle wheels and related fittings, including automobile spare parts and fittings for repair purposes those are services which are typically directed to drivers. Drivers are informed about repair information and the like.

The term applied for cannot be granted protection for Transport services for passengers and freight; vehicle transport, storage services; conveyance of persons, goods and motor vehicles; vehicle rental (including car sharing and courtesy car); chauffeur services; car parking services, parking place rental and procurement of parking places for motor vehicles; car pooling; transport fleet management services, vehicle towing services; vehicle breakdown recovery services; recovery of vehicles; Providing a on-line interactive data base in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental and leasing; provision of road hazard information. Also here the sign applied for constitutes the subject matter. The term “driver” is without any distinctiveness for the services applied for.

In class 42 Application service provider services, hosting a website and online platform services relating to transportation and to vehicle hire, sharing and reservation; software-as-service services for transportation and for vehicle hire, sharing and reservation; provision of web-based and non-downloadable software for transportation services and for vehicle hire, sharing and reservation services; provision of information, advisory and consultancy services in relation to the aforesaid services; technical planning and consultancy regarding vehicle fleets and inspection thereof; technical advisory and consultancy services in connection with repair and maintenance of vehicles; technical consultancy services in connection with repair and maintenance of vehicles; environmental protection advisory and consultancy services in relation to repair and maintenance of vehicles; provision of weather information; provision of technical information on vehicle operational status and warnings; provision of all of the foregoing information and assistance to motor vehicle drivers and passengers via global positioning systems and satellite technology; provision of technical information related to tyres for vehicle wheels and related fittings, automobile spare parts and fittings through specialist organisations; information storage and retrieval in the field of automobile, truck, light-duty van and four-wheel drive vehicle rental, sales and leasing the specification makes clear that the services are intended for vehicles. Assistance is given to motor vehicle drivers and the like. Also here the term applied for is the subject matter and not distinctive for the services at issue.

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 legality of those decisions must be assessed solely on the basis of the EUTMR and not on the basis of the Office’s previous decision-making practice (15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 47 and 28/01/2004, T-146/02 - T-153/02, Standbeutel, EU:T:2004:27, § 48). The precedent mentioned by the applicant (Italian trade mark registration) cannot, therefore, alter the finding that the trade mark under consideration in the present proceedings is descriptive for the goods and services it designates and is devoid of any distinctive character.

In the present case the examiner cannot be bound by the precedent invoked. Even assuming (thus accepting the most favourable hypothetical result) that the mark has gained acquired distinctiveness under Article 7(3) EUTMR in Italy, this cannot lead to a different outcome of the case. In the case at hand, the countries, where English is spoken and understood matter.

As regards the figurative element of the sign applied for it refers to a certain font. No other elements are present. This element is too simple to endow the sign applied for with distinctiveness.

Since the mark No. 15 117 104 lacks an inherent distinctive character and is also descriptive, it is barred from registration pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR and hereby refused for all goods and services except the following goods in class 9:

Antennas and aerials as communications apparatus; Broadcasting equipment.

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.

Wolfgang SCHRAMEK