Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 23/04/2018

AEN MEDIA GROUP LIMITED

Ingles Manor Castle Hill Avenue

Folkestone Kent CT20 2RD

REINO UNIDO

Application No:	015742001
Your reference:
Trade mark:	MEDIA.COM
Mark type:	Word mark
Applicant:	AEN MEDIA GROUP LIMITED Ingles Manor Castle Hill Avenue Folkestone Kent CT20 2RD REINO UNIDO

With the notification dated 27/11/2017 (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 24/01/2018 the applicant submitted its observations which can be summarized as follows:

1. The mark MEDIA.COM is not descriptive for classes 9, 16 and 41

2. The mark MEDIA.COM is distinctive for the classes 9, 16 and 41

3. The Office has registered similar marks.

Pursuant to Article 94 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, the Office maintains the grounds for refusal in respect of the contested goods. The reasons are explained hereunder.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (23/05/1978, C-102/77, ‘Hoffmann-La Roche’, EU:C:1978:108; 18/06/2002, C-299/99, ‘Philips/Remington’, EU:C:2002:377).

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (e.g. judgment ‘Streamserve’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the word is used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

Although the descriptiveness and/or distinctiveness of a trade mark may comprise an assessment of the individual elements separately, it must, in any event, depend on an appraisal of the mark as a whole. In order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532).

As a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the complete word is more than the sum of its parts (‘Biomild’) (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (19/05/2010, T-108/09, ‘Memory’, EU:T:2010:213, § 35).

A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

In ‘Postkantoor’ (ECJ Decision of 12 February, 2004, Case no. C-363/99) and ‘Biomild’ (ECJ Decision of 12 February, 2004, Case no. C-265/00) it was held that signs made up of otherwise descriptive words will usually be found to be descriptive as a whole. However, this will not be the case when the combination of words leads to a surprising twist or additional third meaning. A trademark must produce an impression which is sufficiently far removed from that produced by the simple combination of its elements

The marks referred to in Article 7(1)(b) are, in particular, those which do not enable the relevant public to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned (27/02/2002, T-79/00, ‘LITE’, EU:T:2002:42).

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 (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As regards the applicant’s statements the Office replies as follows:

In response to point 1 and 2)

The applicant submits that the mark should be accepted as it considers the mark non descriptive and distinctive. The applicant does not so much dispute the sign’s individual elements but argues that the mark ‘MEDIA.COM’ is merely suggestive and vague in relation to the goods and services, and not descriptive. In support of its arguments, the applicant relies heavily on the established trade mark principles and the case-law of the Courts, in particular on the judgments in the cases ‘EUROPREMIUM’, ‘Biomild’ and ‘Postkantoor’.

The applicant holds that in accordance with the principles set by the case law referred to in its observations, the subject application does not convey any direct information regarding the kind, quality and intended purpose of Class 9, 16 and “education” in Class 41. By contrast, any potential meaning of the subject application in relation to the goods and services claimed is, according to the applicant only suggestive and vague.

The Office maintains its opinion that the word Media is descriptive for the objected goods and services in question as it indicates the type of goods or services in question. The addition of ¨ .COM ¨does not render the mark distinctive and non descriptive . Top level domain endings, such as ‘.com’, only indicate the place where information can be found on the internet and thus cannot render a descriptive or otherwise objectionable mark registrable. (21/11/2012, T-338/11, Photos.com, EU:T:2012:614, § 22) where it was stated that the element ‘.com’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned).

In response to point 3). The applicant cannot successfully rely on other and registered EU trade marks. The circumstances which led to the acceptance of these marks can not be subject of the objections in the present proceedings nor does it represent a valid argument in order to overcome the objection of descriptive character and lack of distinctiveness of the sign at hand. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle to an equal treatment that may lead to a registration of the trade mark in question. The principle of equal treatment must be reconciled with the principle of legality (e.g. ‘Streamserve’; 02/05/2012, T-435/11, ‘UniversalPHOLED’, EU:T:2012:210).

The Office concurs with the applicant that for example EUTM 1979806 MEDIA24 bear a prima facie similarity to the sign applied for irrespective of the applicant’s statements regarding thereof. The other signs brought forward apply to different concepts. They have little or nothing in common with the application mark and have been found to be distinctive in their own right.

As regards the EUTM registration 1979806 MEDIA 24 it must be kept in mind that the assessment of absolute grounds for refusal has to be made on a case by case basis. The Office should of course attempt to be consistent. Previous decisions of the Office may therefore be invoked and, if a genuinely comparable precedent is cited, the Office will consider it.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that ‘MEDIA.COM will be perceived by the relevant public as pointing to the commercial origin of the services applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 15742001 is hereby rejected for all goods in class 9 and 16 and for all services in class 38 and 41, namely:

Class 9

Computer hardware; computer software; computer peripherals; electronic data processing installations; computer network a ...Show morepparatus; parts and fittings for all the aforesaid goods

Class 16

Printed publications, books, music sheets, music scores, magazines; printed matter; photographs; stationery.

Class 38

Television, cable television and radio broadcasting services.

Class 41

Education; production and distribution of television shows and movies; services related to exhibitions, shows and fairs, .

The application may proceed for al goods in class 25, namely

Class 25

Clothing; fashion garments; footwear and headgear; swimwear; sportswear and leisurewear

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at 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.

Gerben MONNINK