Refusal of application for a European Union trade mark

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

Alicante, 13/02/2017

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	015795917
Your reference:	T183281.EM.01
Trade mark:	TRAVELBOT
Mark type:	Word mark
Applicant:	Stagecoach Group plc 10 Dunkeld Road Perth PH1 5TW REINO UNIDO

The Office raised an objection on 27/10/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 02/12/2016, which may be summarised as follows:

1. The word ‘TRAVELBOT’ would not be perceived immediately by the average consumer of the goods in Class 9 as having a directly descriptive meaning for all the goods that have been objected to. The mark has the minimum degree of distinctive character required.

2. A bot may be computer software that performs repetitive automated functions and has been developed to retrieve information; bots are designed to automate tasks that consumers might otherwise undertake themselves, such as making dinner reservations or retrieving information. Even if the mark were perceived as referring to automated computer software relating to ‘travel’, it would not inform the consumer about what the software does. Therefore, the mark is not directly descriptive of the goods and provides no information about what they do. It has no direct meaning in relation to the goods in Class 9. The average consumer would have to take further mental steps to perceive the meaning of the mark and what exactly the goods might do.

3. The reasons why the mark is descriptive were not explained in relation to all the goods for which registration is sought.

4. The UKIPO accepted the mark ‘TRAVELBOT’ without objection (UK trade mark registration No 3 183 890).

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

In the present case, the trade mark applied for consists of the word ‘TRAVELBOT’, which means ‘a computer program that works automatically to find information on the Internet in relation to journeys, visits, trips and fares’. Although this word cannot be found in the dictionary, its meaning can be easily understood or deduced by the relevant English-speaking part of the public, as it is composed of the words ‘TRAVEL’ and ‘BOT’. The first word means ‘to go on a journey or visit different places, especially places that are far away from where you live or work; to go from one place to another, especially in a vehicle’ (information extracted from Macmillan Dictionary on 27/10/2016 at www.macmillandictionary.com ). The second word, ‘Bot’, means ‘a computer program that works automatically, especially one that can find information for you on the Internet’ (information extracted from Macmillan Dictionary on 27/10/2016 at www.macmillandictionary.com ). The structure of this expression does not diverge from the rules of English grammar rules; rather, it complies with them. Therefore, the relevant consumer will perceive it not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions that have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark has a clear meaning for consumers, who will perceive it not as unusual but, rather, as a meaningful expression. The mark conveys the idea that all the goods for which registration is sought, inter alia travel information and booking and seat reservation services; interactive software application delivered online through a web browser, being a downloadable application, mobile phone and electronic device app or interface software, all in relation to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets or e-tickets, travel reservations, travel information and booking and seat reservation services, mobile phone app for travel and transport services, travel reservations, e-tickets, mobile tickets, travel information and booking and seat reservation services, sending payments and for managing account for travel services; computer software to enable searching of data relating to travel and transport services by bus, rail, taxi, air or other methods, and tickets or timetables thereof; computer software for facilitating or enabling access to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets and e-tickets and booking and seat reservation services and timetables, and information thereon, are software or applications that collect information on travelling, making reservations, making bookings, buying tickets or sending payments. The mark describes, in a quite unambiguous way, the characteristics of the goods, by giving consumers relevant information as regards their nature.

The goods for which registration is sought target average consumers and a professional public. It is clear that the relevant consumers, in particular the specialist public but probably also large parts of the general public with a good knowledge of IT, will understand, in relation to the goods in question, the word itself, or the combination of words, as a meaningful expression referring to travel-related software.

The mark applied for, ‘TRAVELBOT’, thus clearly conveys obvious and direct information about the kind of software and applications provided by the applicant. The mark ‘TRAVELBOT’ is not imaginative, metaphorical or unusual, as it is no more than the sum of its parts and consists exclusively of the simple and clear juxtaposition of two immediately identifiable words. The combination of the two words does not contain, in relation to the separate components, any additional element capable of giving it distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the goods in question.

The goods for which registration is sought target both average consumers and a professional public; the public’s degree of attention will vary from average to high. However, those consumers with a high degree of attention will understand the meaning conveyed by the sign more easily and will be able to link it to the goods for which registration is sought.

The applicant argues that the Office has not provided for each of the goods the required specific reasoning to demonstrate that the word ‘TRAVELBOT’ is descriptive.

The Office explained in its letter of 27/10/2016 why the word ‘TRAVELBOT’ is descriptive of the goods for which registration is sought. The goods to which the objection maintained by the Office has been raised are computer software and applications related to travelling.

The abovementioned reasoning provided by the Office applies to the entire list of goods to which the objection has been raised; therefore, it is not necessary to give a separate explanation in relation to each of the goods. This statement is also supported by the European Court of Justice. According to case-law, it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services which have a sufficiently direct and specific link to each other (02/04/2009, T‑118/06, Ultimate Fighting Championship, EU:T:2009:100, § 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (15/02/2007, C‑239/05, The Kitchen Company, EU:C:2007:99, § 38).

Article 7(1)(b) EUTMR – general remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that 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, § 26).

It is settled case-law that ‘[a] sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘TRAVELBOT’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin and instead will understand that the goods are software and applications related to travelling.

The mark is composed of the word ‘TRAVELBOT’, written in standard upper case letters. The goods to which an objection has been raised and which are covered by the mark applied for are, inter alia, travel information and booking and seat reservation services; interactive software application delivered online through a web browser, being a downloadable application, mobile phone and electronic device app or interface software, all in relation to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets or e-tickets, travel reservations, travel information and booking and seat reservation services, mobile phone app for travel and transport services, travel reservations, e-tickets, mobile tickets, travel information and booking and seat reservation services, sending payments and for managing account for travel services; computer software to enable searching of data relating to travel and transport services by bus, rail, taxi, air or other methods, and tickets or timetables thereof; computer software for facilitating or enabling access to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets and e-tickets and booking and seat reservation services and timetables, and information thereon, which are specialised goods that target average consumers and a professional public. In view of the nature of the goods in question, the degree of awareness of the relevant public will vary from average to high.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the goods and services under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish the said goods and services from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of a particular trade origin for the goods in question but as a descriptive word with an obvious meaning.

Furthermore, it is true that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in Article 7(1)(b) EUTMR. However, the mark applied for is a word mark – composed of two word elements in a normal typeface – with no distinctive character. The trade mark does not have any additional distinctive elements, such as a figurative element or a distinctive verbal element, that would allow the mark to distinguish the goods for which registration is sought from those of competitors.

The applicant argues that the mark has been registered by the UK IP Office

As regards the national decisions referred to by the holder, it must be borne in mind that, as is clear from the case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (05/12/2000, T‑32/00, Electronica, EU:T:2000:283, § 47).

Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark for which registration is sought will be perceived by the relevant public as purely descriptive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s goods from those of competitors, and it will not be recognised by the public as an indication of the commercial origin of the goods. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 15 795 917 is hereby rejected for all the goods for the following goods:

Class 9 Computer software for facilitating or enabling access to travel and transport services by bus, rail, taxi, air or other methods, travel reservations, travel information and booking and seat reservation services; computer software for generating e-tickets or mobile tickets; computer software and software upgrades supplied on-line from computer databases, computer networks, global computer networks or the Internet electronic interface providing mobile tickets or e-tickets, travel and transport services by bus, rail, taxi, air or other methods, travel reservations, travel information and booking and seat reservation services; interactive software application delivered online through a web-browser, being a downloadable application; app delivered to any computing device including desktop, laptop and tablet computers as well as mobile devices; mobile phone and electronic device app or interface software, all in relation to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets or e-tickets, travel reservations, travel information and booking and seat reservation services; downloadable computer software for accessing, managing, controlling and interacting travel and transport services by bus, rail, taxi, air or other methods, e-tickets, mobile tickets, travel reservations, travel information and booking and seat reservation services and sending of payments for same; mobile phone app for travel and transport services, travel reservations, e-tickets, mobile tickets, travel information and booking and seat reservation services, sending payments and for managing account for travel services; computer software to enable searching of data relating to travel and transport services by bus, rail, taxi, air or other methods, and tickets or timetables thereof; computer software for facilitating or enabling access to travel and transport services by bus, rail, taxi, air or other methods, mobile tickets and e-tickets and booking and seat reservation services and timetables, and information thereon; app for a mobile communications device; app for a mobile communications device for mobile tickets and e-tickets; interactive computer software relating to travel and transport services by bus, rail, taxi, air or other methods, e-tickets, electronic mobile tickets, travel reservations, travel information and booking and seat reservation services.

The application will be accepted for the remaining goods and services.

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.

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