Refusal of application for a European Union trade mark

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

Alicante, 10/11/2016

SIPARA LIMITED

Seacourt Tower

Third Floor

West Way

Oxford OX2 0JJ

REINO UNIDO

Application No:	015479901
Your reference:	TM8677EU00.ED.DH
Trade mark:	mywedding
Mark type:	Figurative mark
Applicant:	Meredith Corporation 1716 Locust Street Des Moines, IOWA 50309-3023 ESTADOS UNIDOS (DE AMÉRICA)

This letter (by way of response to the applicant´s communication dated 09/11/2016) cancels and replaces the letter dated 30/09/2016 which contained no paragraph in relation to the right to appeal. The Office apologises for any convenience caused by the missing paragraph, and further affirms that the two month time limit within which the applicant has a right to appeal starts from today´s date, so that the applicant suffers no prejudice. The Office confirms that the refusal is a total refusal in respect of all of the goods and services:

The Office raised an objection on 04/08/2016 pursuant to Article 7(1)(b) and (c) and 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 30/09/2016, which may be summarised as follows:

1. The mark is distinctive as a whole as it features a distinctive two-tone heart in a circle device. Consumers are used to seeing hearts deployed to represent love as demonstrated by previous office registrations (annexed), and will view the sign as reading “love my wedding”. The colour of the device and ambiguity of its meaning make it memorable for the relevant consumer who will be more attentive than the general public. The complementary pinks are striking and decorative. Furthermore, the possessive pronoun adds specialness to the semantic element of the mark.

2. Comparable marks have been registered by the Office.

3. The mark does not describe characteristics of the goods and services.

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.

By prohibiting the registration as Community 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 (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 English-speaking consumer will have no difficulty attributing goods and services involving the organisation of weddings to the mark. The image is simple and has an iterative effect on the words. The office does not accept that the consumer will read “love my wedding” or that the registrations cited demonstrate such a putative perception, as they contain a heart element preceded by a word element. In this instance, the consumer will read the words “my wedding” preceded by a heart decoration to represent love, a traditional reason or organising a wedding. Hearts are typically depicted in pink or red, so there is nothing memorable about this orthodox decoration in relation to the particular goods and services.

The applicant has not correctly identified the other marks it seeks to rely on, however it is clear that the figurative marks depicted in the observations feature complicated figurative elements which go beyond mere decoration.

In any event: according to settled case‑law, ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Community 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).

Consumers, regardless of their level of attention are inured to seeing simple heart images in relation to material with romantic content or a romantic connotation. The mark as a whole looks like a badge of information not origin. The figurative device, which is banal and unadorned by any possible identifier, does not detract in any way from the verbal message. It merely adds to and reinforces it. The words together with the device take no cognitive leap whatsoever in relation to the objected goods and services. The sign as a whole is direct, meaningful and obvious within the context of modern and commercial reality.

As the applicant itself has emphasised, the mark must be assessed as a whole or in totality. As the descriptive meaning is merely reinforced by the figurative element, the sign as a composite is incapable of constituting a badge of origin. The stylisation emphasises the descriptiveness. It therefore does not bear comparison to the more elaborate/ornate devices represented in the figurative marks depicted in the applicant´s observations.

The mark consists essentially of an expression which, notwithstanding certain stylised elements, conveys obvious and direct information regarding the kind, subject matter, intended purpose and intended consumer of the goods and services in question. In this respect, the graphic is “minimal”. The average consumer, particularly an attentive one, used to seeing like images, will not see a trade mark. The mark as a whole is the sum of its parts.

Taken as a whole, the words ‘MY WEDDING’ immediately inform consumers without further reflection that the event organisation services all pertain to the organisation or promotion (including broadcasting services) of weddings and that the publications applied for, whether electronic or hardcopy, all feature marriage celebrations too. It follows that the link between the words ‘MY WEDDING”, together with the figurative element, and the goods and services referred to in the application for registration, is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR. The possessive determiner merely lets the consumer know that the goods and services are directed at them.

As previously, stated:

“Although the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. Those elements do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 74). Specifically, the presentation of the two words combined with a common representation of a heart does not create an impact such that would confer even a minimum degree of distinctiveness.

The figurative device, representing love, serves only to reinforce the descriptive words. There is nothing about the expression combined with a banal pink heart- shaped device that might enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services in question. “

It follows that the link between the words ‘mywedding’ in pink, together with the figurative device depicting a heart and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR, the application for Community trade mark No 015479901 is hereby rejected (for all the goods and services claimed).

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.

Keeva DOHERTY