Refusal of application for a European Union trade mark

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

Alicante, 15/02/2017

RÖSLER · RASCH · van der HEIDE & PARTNER PATENT- UND RECHTSANWÄLTE Partnerschaftsgesellschaft mbB

Bodenseestr. 18

D-81241 München

ALEMANIA

Application No:	015792922
Your reference:	BAND_59789_EU
Trade mark:	BANDIST
Mark type:	Word mark
Applicant:	Digital Services LIII S.à r.l. 5, Heienhaff L-1736 Senningerberg LUXEMBURGO

The Office raised an objection on 19/09/2016 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 on 23/12/2016, which may be summarised as follows:

1. The word ‘Bandist’ is defined in a single online dictionary and the meaning of the word is questionable. The Office has not provided evidence of any descriptive use of the word in Croatian language. Therefore, the mark should not be considered descriptive and non-distinctive for the goods and services in question.

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.

‘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’ (26/11/2003, T‑222/02, ROBOTUNITS, EU:T:2003:315, § 34).

It is also 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

Furthermore, 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

The applicant argues that the word ‘Bandist’ is defined in a single online dictionary and that its meaning is questionable, and that, consequently, there are insufficient grounds for a rejection based on descriptiveness or lack of distinctive character. 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

As stated in the objection letter, the word ‘Bandist’ is clearly defined as ‘član bande’ and ‘glazbenik’ (meaning ‘gang member’ or ‘band member’ and ‘musician’, respectively, in English) in a Croatian online dictionary and it will be perceived by the relevant Croatian-speaking consumer as merely descriptive, rather than as an indicator of trade origin, in relation to the goods and services concerned.

(information extracted from Hrvatski jezični portal on 10/02/2017 at http://hjp.znanje.hr/index.php?show=search )

As regards the argument that it is up to the Office to provide evidence of descriptive use of the word ‘Bandist’ in Croatian, the Court has confirmed that where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19). Therefore, it is up to the applicant to provide specific and substantial information to show that the mark applied for is not descriptive of the goods and services for which registration is sought.

Accordingly, despite the applicant’s arguments, the Office remains of the view that the mark is descriptive of the goods and services for which registration is sought and does not qualify as a distinctive 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 15 792 922 is hereby rejected for the following goods and services:

Class 9 Musical sound recordings.

Class 41 Providing on-line music, not downloadable; Presentation of live performances; Organisation of cultural events; Arranging of music performances.

The application is accepted for the remaining goods and services:

Class 9 Computer hardware and software; Computer software for processing digital music files; Electric and electronic musical effects equipment; Downloadable digital music; Loudspeaker systems; Music headphones; Pick-ups for electrical musical instruments; Musical instrument amplifiers; Portable music players.

Class 16 Music note books; Music instruction manuals.

Class 35 Auctioneering services; provision of an on-line marketplace for buyers and sellers of goods and services; Providing evaluative feedback and ratings of sellers' goods and services and buyers' and sellers' performance; Ordering services for third parties; Computerized on-line ordering services; Coupon procurement services for others; Publicity bureau services; Retail and wholesale services with the following goods: musical instruments and accessories, printed matter, sound and lighting systems, audio and audiovisual devices, software, sound and picture recording apparatus, recorded content; Presentation of goods on communication media, for retail purposes; Price comparison services; Sales promotion for others; Promoting the goods and services of others; Negotiation and conclusion of commercial transactions for third parties; Procurement of contracts for others; Provision of commercial and business contact information via the Internet; The bringing together, for the benefit of others, of a variety of goods, excluding the transport thereof, of musical instruments and accessories, printed matter, sound and lighting systems, audio and audiovisual devices, software, sound and picture recording apparatus, recorded content to enable customers to conveniently view and purchase those goods.

Class 41 Educational and instruction services relating to music and dance; Publication of texts, others than publicity texts; Musical education services; Music tuition by correspondence courses; Providing online electronic publications, not downloadable; Organisation of cultural events; Rental of lighting apparatus for theatrical sets; Rental of public address systems.

According to Article 59 EUTMR, you have a right to appeal against 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.

Youngmin GOO