Refusal of application for a European Union trade mark

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

Alicante, 07/03/2017

Gayle Berry-Zoechbauer

Museumsplatz 1/3/3

A-1070 Vienna

AUSTRIA

Application No:	015862105
Your reference:
Trade mark:	Shito-ryu Shukokai Karatedo World Union
Mark type:	Word mark
Applicant:	Gayle Berry-Zoechbauer Museumsplatz 1/3/3 A-1070 Vienna AUSTRIA

The Office raised an objection on 14/10/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the sign applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached objection letter.

The applicant submitted its observations on 13/12/2016, which may be summarised as follows:

1. The sign is not composed only of generic words without distinctive character and has sufficient distinctive character.

2. The sign is a denomination of a worldwide non-profit association of karate schools.

3. The purpose of the organization is to practice and develop Shito-ryu Shukokai Karatedo throughout the world.

4. The association and the director of it have a great recognition among the relevant public.

5. The applicant submits documents such as association by-laws, association register and internet abstracts to support its arguments.

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.

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 objectionable sign is ‘Shito-ryu Shukokai Karatedo World Union’. As it was stated in the previous letter of the Office, Shito-ryu, Shukokai and Karatedo are all related with karate. This fact is also understandable from the observations of the applicant stating that Shukokai is a group within the Shito-style which is reflecting the segmented characteristics of Karate. Moreover, as stated in the previous letter Shito-Ryu is one of the main style of karate with Shotokan-Ryu, Goju-Ryu and Wado-Ryu. Furthermore, as it is mentioned by the Office in the previous letter, Shukokai is an education derived from one of the original styles of Karate, Shito Ryu, with roots that date back over three hundred years. Considering these, it is obvious that the elements of the sign are not alien to the relevant public and accordingly the relevant public especially the karate practitioners will understand the sign as an association designated to provide karate instructions and teachings to the people who are interested in.

For a sign to fall within the scope of the prohibition under Article 7(1)(c) EUTMR, it must convey a sufficiently direct and concrete link to the goods or services in question to enable the public concerned immediately, and without further thought, to perceive a description of the goods and services in question or of one of their characteristics (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40; 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25). Considering the connection of the words ‘Shito-ryu’, ‘Shukokai’ and ‘Karatedo’ with Karate, it is clear that the sign in question conveys a direct and concrete link to the services in question namely, karate instruction.

The combination of these generic words does not introduce any feature that would make the sign, as a whole, capable of distinguishing the applicant’s services from those of other undertakings. The combination is grammatically correct and banal, and without ambiguity as to its meaning. Clearly the services in question are what the target consumer would expect from such an association called a ‘Shito-ryu Shukokai Karatedo World Union’. The mark would be seen merely as a generic name of an association which provides such services like karate instruction or teaching (see by analogy Decision of BOA, 04/06/2009, R 52/2009-2, DRUG INFORMATION ASSOCIATION, § 15).

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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

A sign that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21). This is not the case for the sign in question.

Moreover, according to settled case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character, which is clearly applicable to the present case.

With regards the information submitted by the applicant about the association, its structure and activities and the submissions concerning the association by-laws, extract from the register of association and other extracts from various sources, it should be noted that these information have no effect on the Office to change its position for objection. Since trade mark registration and the foundation of such associations are completely different issues, having an association by-laws does not mean that the denomination of the said association is also capable for trade mark registration. The contents of the association by-laws are also irrelevant to the trade mark registration.

The applicant also submits a document regarding association register. For this submission, it should also be noted that this document also does not mean that the sign is eligible for registration as a trade mark since registering an association in such registry is different than the trade mark registration proceedings. On the other hand, the information regarding the structure of the association, members of the directory committee and their responsibilities may provide some knowledge to the Office, however, again these submissions are not enough to conclude that the sign has sufficient distinctive character.

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 15 862 105 - Shito-ryu Shukokai Karatedo World Union is hereby rejected for all the 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.

Kubilay ÖZDEMIR