Refusal of application for a European Union trade mark

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

Alicante, 26/04/2017

TLT LLP

One Redcliff Street

Bristol BS1 6TP

REINO UNIDO

Application No:	015878317
Your reference:	101I/LL10/32/6
Trade mark:	SCANJAM
Mark type:	Word mark
Applicant:	WABCO (UK) BRISTOL BRIDGE HOUSE, CATER ROAD, BISHOPSWORTH BRISTOL BS13 7TW REINO UNIDO

The Office raised an objection on 08/11/2016 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.

With the above notice and an extension of time until 08/03/2017, the applicant was given opportunity to submit observations in reply.

The applicant submitted its observations on 08/03/2017, which may be summarised as follows:

1. The term ‘SCANJAM’ is a neologism and has no clear denotation. Both composing words have many other meanings and the resulting conjoined term is at the worst allusive.

2. The customers would require additional information or education to be able to understand the nature of the goods from the term ‘SCANJAM’ itself.

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 waive the objection for the following goods:

Class 16 Security cards, identity cards, blank cards for preparing security and identity cards, none of the aforesaid being magnetically encoded; printed card; passport cases and passport holders.

Class 18 Card cases, purses and wallets; attaché cases, briefcases, satchels, suitcases and travelling bags; moneybags.

The objection is maintained for the remaining goods.

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).

As regards the applicant's observations, the Office replies as follows:

In its submissions the applicant argues that the term ‘SCANJAM’ is a neologism and has no clear denotation. Both composing words have many other meanings and the resulting conjoined term is at the worst allusive.

The Office has noted applicant’s comments. However, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who are to look at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

The sign is composed of two English words both of which are descriptive in relation to the specified goods claimed. ‘SCAN’ informs the consumer that the goods at issue relate to the act or instance of scanning usually in order to examine data and/or to retrieve information and ‘JAM’ means the act or state of being jammed, blocked. The applicant admits that these two terms may be descriptive but argues that their combination in one word is merely allusive and therefore distinctive.

This argument of the proprietor must be dismissed. The conjoining of two descriptive dictionary words does not automatically confer upon the totality a degree of distinctive character by virtue of it not appearing in a dictionary. The English speaking public will immediately perceive two words in the expression ‘SCANJAM’ and make an instinctive dissection of the whole. Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, § 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts … (12/01/2005, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, § 32).

As stated in the notification of 08/11/2016, the expression ‘SCANJAM’ immediately informs consumers without further reflection that the contested goods all capable of and/or directly relate to jamming, blocking and/or in other way obstructing the process of scanning in order, for example, to prevent the retrieval of information/data, etc. The way in which the two words are juxtaposed follows the rules of English grammar and common parlance. The sign is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. The mark at issue conveys obvious and direct information regarding the character of the goods in question. The term ‘SCANJAM’ consists exclusively of a meaningful expression that will be easily understood by the relevant public, which will perceive it not as a trade mark but as a descriptive indication of the characteristics of the goods in question.

As regard to the applicant’s arguments regarding the various meanings of the various elements within the mark, the Office would advise that 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, emphasis added.)

As regards applicant’s argument that the customers would require additional information or education to be able to understand the nature of the goods from the term ‘SCANJAM’ itself, the Office has noted applicant’s comments.

However, as already mentioned above, it must be advised that, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the relevant public who are to look at it in relation to the goods or services for which registration is being sought, and form an opinion of what it connotes.

The Office is of the opinion that when taken as a whole, the expression ‘SCANJAM’ consists exclusively of a meaningful expression easily understood by the relevant public, who will not perceive it as a trade mark but primarily as descriptive in nature, conveying obvious and direct information regarding the kind and intended purpose of the goods in question, thus eclipsing any impression that the mark could indicate a trade origin.

The Office asserts that the message expressed by the term ‘SCANJAM’ is clear, direct and immediate to the relevant English-speaking public and in relation to the contested goods. It is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor will it be perceived as unusual or akin to an allusive fanciful sign in relation to the goods claimed.

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 15 878 317 is hereby rejected for the following goods:

Class 9 Apparatus and devices for preventing communication between apparatus and devices used for either the storage or exchange of data, including electronic devices for preventing unauthorized access to data stored on a data carrying device, including credit cards, debit cards and e-passports; jamming apparatus and devices, including jamming apparatus and devices for inhibiting unauthorized contactless reading of data contained on objects having a radio frequency identification chip (rfid) or near field communication (nfc) devices; communication apparatus and devices, including apparatus and devices for storing, transferring or receiving data; apparatus for processing, transmitting or receiving signals.

The application may proceed for the remaining goods.

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.

Robert KLECUN