Refusal of application for a European Union trade mark

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

Alicante, 23/03/2017

FREETHS LLP

Colmore Plaza, 20 Colmore Circus

Birmingham Birmingham B4 6AT

REINO UNIDO

Application No:	015913122
Your reference:	2122090/10
Trade mark:	gsa GLOBAL SOURCING ASSOCIATION
Mark type:	Figurative mark
Applicant:	NOA 2013 Ltd 44 Wardour Street London W1D 6QZ REINO UNIDO

The Office raised an objection on 28/11/2016 pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is partially descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The trade mark applied for is:

and is considered objectionable for the following goods and services:

Class 9 Instructional and teaching materials, journals; periodicals; newspapers, magazines, all of the aforesaid in electronic form.

Class 16 Printed matter; instructional and teaching materials; journals; periodicals; newspapers; magazines, posters and charts.

Class 35 Advertising; marketing; publicity, promotional and consultancy services (for business purposes); market analysis and research services; market surveys; business management services; business analysis; analysis of outsourcing process and procedures; accreditation services relating to outsourcing services; providing, creating and maintaining a commercial directory of outsourcing partners and/or sources; contract negotiations; business networking services; outsourcing services in the nature of arranging procurement of goods for others; outsourcing services in the nature of arranging service contracts for others; outsourcing services (business assistance for others); outsourcing services in the field of business operations; outsourcing services in the field of business analytics.

Class 41 Educational services; teaching, training and instructional services; arranging, conducting and organising exhibitions, seminars, symposiums and conferences; residential courses; residential education courses; residential training courses; arranging, hosting, organisation and conducting of award ceremonies; writing articles relating to outsourcing; publication of periodicals, conference proceedings, surveys, reports and self-study courses; information and advisory services relating to the aforesaid.

The applicant submitted its observations on 09/03/2017 which may be summarised as follows:

• A minimum degree of distinctiveness is sufficient to prevent application of absolute grounds for refusal.

• A mark is not necessarily founded on originality or imagination but on its ability to distinguish goods or services in the market place from goods or services of the same type offered by competitors.

• The trade mark should be assessed for registration in respect of all the goods and services applied for because the mark would be perceived as distinctive for the identified goods and services by the relevant public who is deemed to be reasonably well informed and circumspect.

• The trade mark does not comprise of a word used in a normal way to refer to the goods and services or of representing their essential characteristics in common parlance and inclusion of the words Global Sourcing Association does not preclude the relevant public from perceiving the mark as an indication of sole trade origin.

• The trade mark does not simply comprise of the words Global Sourcing Association but is presented in a stylised manner and includes a three letter combination which is of significantly greater prominence to the word.

• The three letters are larger and appear in a striking colour.

• The three letter combination in its own right is distinctive and is not so minimal in nature that this element does not endow the trade mark applied for as a whole with any distinctive character as suggested by the examiner.

• The word/letter/device combination makes up a trade mark which will not form part of an expression used in everyday speech to designate the goods and services at issue.

• The trade mark as a whole is unlikely to be perceived by the relevant public as having a direct meaning with respect to the goods and services covered by the application.

• The letters ‘gsa’ are not obviously an acronym as they appear in different case font and colour.

• The circular device element is not a simple circle and cannot be dismissed out of hand when considering the mark as a whole.

• A number of similar EUTMs have previously been registered by the applicant’s associated companies.

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 which underlies 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 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, §34).

In the present case, the objectionable goods and services covered by the mark applied for are specialised goods and services mainly aimed at a professional public. In view of the nature of the goods in question, the awareness of the relevant public will be high.

Moreover, since the mark applied for contains the English language words GLOBAL SOURCING ASSOCIATION the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The Office is of the opinion that, contrary to what the applicant says, the mark applied for, as a whole, is indeed descriptive of the the nature and/or subject matter of the goods and services in question.

To reiterate, taken as a whole, the expression gsa GLOBAL SOURCING ASSOCIATION immediately informs relevant consumers without further reflection that the objectionable goods and services applied for are provided by and/or relate to a group of people having a common purpose or interest in the field of procurement strategies in which a business seeks to find the most cost efficient location for manufacturing a product, even if the location is in a foreign country. Therefore, the mark conveys obvious and direct information regarding the nature and/or subject matter of the goods and services in question.

Furthermore, due to the presence of the descriptive expression GLOBAL SOURCING ASSOCIATION the acronym ‘gsa’ will merely be perceived by the relevant consumer as an abbreviation derived from the said descriptive terms. It has to be put forward that abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning.

Consequently, signs consisting of an acronym which precedes or follows a descriptive word combination such as in the present case should be objected to as descriptive if it will be perceived by the relevant public as merely of words combined with an abbreviation of those words. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (judgment of 15/03/2012, C-90/11 and C-91/11, ‘Natur- Aktien-Index / Multi Markets Fund’, § 32 and 40).

The words contained in the mark consist of a combination of English-language words which as a whole will be readily identifiable to the relevant public. As such, the Office puts forward that there is nothing unusual about the structure of that expression. The words are presented in a sequence that is intellectually meaningful and thus there is no doubt that the relevant consumer will not perceive the expression GLOBAL SOURCING ASSOCIATION as unusual, but rather as a meaningful, on this basis the message conveyed is clear, direct and immediate to the relevant public and in relation to the contested goods and services. The expression is not vague or ambiguous in any way, nor does it lend itself to different interpretations, nor is it unusual or akin to an allusive fanciful sign in relation to the goods and at issue.

The applicant submits that the mark is not merely a word mark but in fact contains the acronym ‘gsa’ as well as figurative and stylistic elements which have a distinctive impact that cannot be overlooked. The applicant puts forward that the figurative elements, namely, font, colour, device and overall presentation possesses the minimum degree of distinctiveness required in order be seen as an indication of trade mark origin. The applicant provides further analysis in regards to the mark stating that it does not simply comprise of the words Global Sourcing Association but is presented in a stylised manner and includes a three letter combination which is of significantly greater prominence to the word. Furthermore, the applicant attests that the three letters are large and appear in a striking colour adding that the three letter combination ‘gsa’ is in its own right distinctive and is not so minimal in nature that this element does not endow the trade mark applied for as a whole with any distinctive character.

However, the Office cannot agree with the applicant’s viewpoint. The Office can of course agree that the mark contains certain figurative elements that confer upon it a degree of stylisation. However, the Office remains of the opinion that all these individual elements are so minimal in nature that they do not endow the trade mark applied for, as a whole, with any distinctive character on the basis that the elements mentioned do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the contested goods covered by the trade mark application. Whilst the applicant’s comments are noted regarding the registrability of the letters ‘gsa’ solus, the applicant’s comments are not disputed. However, the application is not for the mark ‘gsa’ solus but rather the letters form part of a sign consisting of an acronym (gsa) which precedes the descriptive word combination Global Sourcing Association and therefore the combination becomes descriptive on the basis that it will be perceived by the relevant public as merely of words combined with an abbreviation of those words. This is because the acronym and word combination together are intended to clarify each other and to draw attention to the fact that they are linked (judgment of 15/03/2012, C-90/11 and C-91/11, ‘Natur- Aktien-Index / Multi Markets Fund’, § 32 and 40).

Consequently, the Office maintains its viewpoint that the previously mentioned figurative elements in the sign are not sufficient to overcome or disguise the purely descriptive message conveyed by the mark. The figurative elements are not sufficiently striking or unusual in regards to the goods and services at issue and are therefore not capable of creating an immediate and lasting memory in the minds of the relevant consumer by diverting their attention from the descriptive/non-distinctive message conveyed. Nor can it be said that the figurative elements are of such a nature as to require an effort of interpretation from the relevant consumer in order to understand the meaning of the word elements. Therefore the Office remains of the viewpoint that the descriptive content of the sign, as previously discussed, overrides the figurative elements in the sign.

Moreover, as the graphical elements mentioned cannot in the Office’s opinion divert the attention of the relevant public from the descriptive message ‘gsa Global Sourcing Association’, the figurative elements fail to add anything unusual to the sign’s perception by the relevant public, which would render the sign fanciful and therefore be able to attribute distinctive character to the applicant’s sign. In the assessment of whether the sign is eligible for registration, it is therefore of secondary importance. The letters and word combination remain the dominant element of the sign and the figurative elements will be seen merely as an enhancement for the descriptive verbal message and not as a means of identification. Thus, the function of the figurative elements present merely serve to highlight the information contained in the text of the mark (15.12.2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

Accordingly, the Office remains of the viewpoint that the clear message conveyed by the mark is unaffected by the figurative/stylisation present which for the reasons already given will be so minimal in the consumer’s perception that it will not influence the general impression conveyed by the mark as a whole on the basis that the stylisation is not sufficiently distinctive to disguise the clear descriptive message conveyed by the mark. Even in the event that the relevant consumer will be particularly attentive due to the nature of the goods and services, this does not change this finding, since it is to be expected that their focus will be on the verbal part of the sign which will be pronounced, rather than the figurative elements present.

Furthermore, the Office has to put forward that there is no evidence to suggest that the relevant consumer in the area of the goods and services at issue would be particularly trade mark ‘educated’ or savvy and would instantly perceive the mark applied for, as a whole, as a trade mark in relation to the contested goods and services rather than a descriptive message in relation to the nature and/or subject matter of the goods and services in question.

With respect to the lack of distinctive character of the mark, given that the mark has a clear descriptive meaning in relation to the goods and services at issue, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Accordingly, taken as a whole, the mark applied for is devoid of any distinctive character and is not capable of distinguishing the contested goods and services for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

As regards to the applicant’s argument that a number of similar EUTMs have previously been registered by the applicant’s associated companies, it must be pointed out that, the examination of any trade mark application must be stringent and full and each sign has to be examined on its own facts. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal.

Additionally, according to settled case‑law, decisions concerning registration of a sign as a European 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 European trade mark must be assessed solely on the basis of that regulation, as interpreted by the European judicature, and not on the basis of a previous practice of the Office (see judgment of 15/09/2005, C‑37/03 P, 'BioID', paragraph 47 and judgment of 09/10/2002, T-36/01, 'Glaverbel', § 35).

With regard to the previous EUTM registrations to which the applicant has referred, the Office of course should strive for consistency and apply the same criteria to the examination of trade marks. However, it follows from T-554/12, § 65, (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 65) that the Office cannot be bound by previous decisions. Pursuant to settled case-law, decisions concerning the registration of a sign as a EUTM are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the registrability of a sign as a EUTM must be assessed solely on the basis of that Regulation, as interpreted by the EU judicature, and not on the basis of previous Office practice or that of the Boards of Appeal.

Furthermore, the examination of absolute grounds for refusal must be full and stringent (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59), and may not just consist of the mere repetition of supposedly comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality of administration requires that, in all instances, the necessary decision be made if the legal requirements in respect thereof have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T- 106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign in respect of which registration is sought as an EUTM is composed in a manner identical/highly similar to that of a mark in respect of which the Office has already approved its registration as an EUTM and which relates to goods and services identical or similar to those in respect of which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56). Under that aspect, the existence of EUTM registrations of marks which differ entirely from the one at hand, like those quoted by the applicant, are irrelevant.

Accordingly, the Office remains of the opinion that it is reasonable to accept that the relevant consumer will make a clear link between the mark and the goods and services and therefore perceive the descriptive message in the mark. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods and services in question, but is also an expression that might profitably be employed for such goods and services. Moreover, It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods and services in question. However, that said, it is not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3).

Consequently, due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Trade Mark is hereby rejected in part for the following goods and services:

Class 9 Instructional and teaching materials, journals; periodicals; newspapers, magazines, all of the aforesaid in electronic form.

Class 16 Printed matter; instructional and teaching materials; journals; periodicals; newspapers; magazines, posters and charts.

Class 35 Advertising; marketing; publicity, promotional and consultancy services (for business purposes); market analysis and research services; market surveys; business management services; business analysis; analysis of outsourcing process and procedures; accreditation services relating to outsourcing services; providing, creating and maintaining a commercial directory of outsourcing partners and/or sources; contract negotiations; business networking services; outsourcing services in the nature of arranging procurement of goods for others; outsourcing services in the nature of arranging service contracts for others; outsourcing services (business assistance for others); outsourcing services in the field of business operations; outsourcing services in the field of business analytics.

Class 41 Educational services; teaching, training and instructional services; arranging, conducting and organising exhibitions, seminars, symposiums and conferences; residential courses; residential education courses; residential training courses; arranging, hosting, organisation and conducting of award ceremonies; writing articles relating to outsourcing; publication of periodicals, conference proceedings, surveys, reports and self-study courses; information and advisory services relating to the aforesaid.

The application may proceed for the remaining services, namely:

Class 41 Entertainment and cultural activities; publication of books and texts; production of videos, rental of sound and visual recordings; publishing services; electronic publication; information and advisory services relating to the aforesaid.

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.

Samantha CONGREVE