Refusal of application for a European Union trade mark

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

Alicante, 17/03/2017

NOVAGRAAF UK.

Suite 8b Lowry House 17 Marble Street

Manchester M2 3AW

REINO UNIDO

Application No:	015961808
Your reference:	1609712T/CTM
Trade mark:	THE MODIST
Mark type:	Word mark
Applicant:	DEE Management FZ LLC Office 304, 3rd Floor, Building 8 Dubai Design District (D3), Dubai 333210 EMIRATOS ÁRABES UNIDOS

The Office raised an objection on 08/11/2016 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 03/01/2017, which may be summarised as follows:

1. The word is not commonly used

2. There is no link between the mark and the services applied for

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.

The word is not commonly used

The applicant argues that the word is not commonly used and is considered to be an archaic word. Therefore the mark applied for is distinctive for the services applied for. The applicant has also provided a number of screenshots from various dictionaries, which do not have ‘modist’ as one of the entries.

The Office does not dispute these citations, however the Office notes that there are more dictionaries, which actually have the word ‘modist’ in their entries. The Office will demonstrate some of them:

http://www.dictionary.com/browse/modist accessed 15/03/2017

http://www.webster-dictionary.org/definition/modist accessed 15/03/2017

http://www.thefreedictionary.com/modist accessed 15/03/2017

Therefore although the Office does not contest the fact that in some dictionaries the word ‘modist’ does not appear, in other reputed dictionaries the word is present. Therefore these citations being provided here corroborate the findings of the Office when it cited the Collins Dictionary. Moreover the Collins Dictionary and these dictionaries cited above cannot be considered to be by any means obscure or unknown, but rather well known and respected.

The claim that the word is not commonly used and is not part of the vocabulary has to be put aside. If this was the case the word will not be found in dictionaries, or it would be clearly marked as archaic in dictionaries, which is not the case here.

Furthermore the Office also notes that the word ‘modist’ can also be deduced and understood by someone who is not familiar with the word per se. The Office notes the English noun ‘alta moda’ being defined as ‘The world of Italian high fashion; Italian fashion designers collectively, Italian couture’.¹ Furthermore the suffix ‘-ist’ is used in ‘Forming nouns denoting a member of a profession or business activity’.² Therefore, forming words such as ‘dentist’, ‘dramatist’ and ‘florist’. Therefore the combination of ‘moda’ and ‘-ist’ will refer to a person who is fashionable and stylish. The Office believes that even if one had to accept the argument that the word ‘modist’ is little known, the word will still be understood as such by the relevant public for the aforesaid reason.

There is no link between the mark and the services applied for

The applicant holds that there is no link between the mark and the services applied for. However the Office disagrees. All services applied for, and are being rejected are related to fashion shows. Therefore the words ‘The Modist’ will not only be allusive of the services, but also non-distinctive. English speaking consumers in the European Union will not find the mark distinctive for these services. Without further reflection the consumers will understand that the services being offered relate to fashion.

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 15 961 808 is hereby rejected for the following services:

Class 41 Organisation of exhibition and events for educational or entertainment purposes; fashion show services, production of fashion shows provided online from a computer database or the Internet; consultancy, information and advisory services relating to the aforesaid.

The application may proceed for the remaining 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.

Alistair BUGEJA