Refusal of application for a European Union trade mark

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

Alicante, 25/02/2017

KELTIE LLP

No. 1 London Bridge

London SE1 9BA

REINO UNIDO

Application No:	015831506
Your reference:	T41150EU/ARG/CWI/sc
Trade mark:	ONE UNDERWRITING
Mark type:	Word mark
Applicant:	AON CORPORATION 200 East Randolph Street Chicago, Illinois 60601 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/11/2016 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 21/12/2016, which may be summarised as follows:

1. The mark is meaningless and not laudatory in relation to the insurance and reinsurance services specified. Furthermore, there is no direct and specific relationship between the sign and the services. The sign possesses the requisite level of distinctiveness as is clear from comparable registrations.

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 raised pursuant to Article 7(1)(b) EUTMR: For the reasons previously indicated, the consumer targeted will see the expression as promotional in a direct way, and will not see anything which requires further interpretation or which is striking or resonant or in any way memorable in a trade mark sense in relation to underwriting services. Consumers perceive the word or the numeral “one” as indicating that services are one of a kind i.e that the service-provider provides a unique or tailor-made service, or simply as indicating the promotional message that the service-provider is number one in the sector, leading the market in terms of excellence, distinct from all others. Consumers have become inured to banal blandishments of this nature in the service industry.

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

As previously stated: “.. for a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark indicates to the consumer a characteristic of the goods relating to their market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods (judgment of 30/06/2004, T 281/02, ‘Mehr für Ihr Geld’, paragraph 31).

The relevant public would perceive the expression ‘–ONE UNDERWRITING ‘– as a promotional laudatory message, the function of which is to describe a characteristic of the services or communicate a customer service statement. Moreover, whilst accepting that a mark may be understood as both a promotional formula and an indication of commercial origin, in the present case the relevant public will not tend to perceive in the sign any particular indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive aspects of the services concerned, namely that they are underwriting services that are distinct from all others, clearly a laudatory message in the insurance sector. (judgment of 21/01/2010, C 398/08 P, ‘Audi’, paragraph 45; and judgment of 12/07/2012, C 311/11 P, ‘Smart Technologies’, paragraph 34).

There is nothing about the expression ‘ONE UNDERWRITING”– that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

The previously registered marks are not comparable as they are mainly mature marks, or regard a different specification. Marks must be regarded as a whole in relation to their specific goods or services.

In any event: 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 CTMR, 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).

There is nothing about the expression ‘ONE UNDERWRITING”– that might, beyond its obvious promotional laudatory meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the services in question (judgment of 05/12/2002, T 130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 28).

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 15 831 506 is hereby rejected.

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