Refusal of application for a European Union trade mark

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

Alicante, 29/03/2017

REDL LIFE SCIENCE PATENT ATTORNEYS

Gerda Redl

Donau-City-Str. 11

A-1220 Wien

AUSTRIA

Application No:	016064412
Your reference:	TRII-203EU
Trade mark:	COMMUNITY RESILIENCY MODEL
Mark type:	Word mark
Applicant:	Trauma Resource Institute, Inc. 427 North Yale Avenue, Suite 202 Claremont California 91711 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 13/12/2016, pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

2. The applicant submitted its observations on 13/02/2016, which may be summarised as follows:

• The mark “COMMUNITY RESILIENCY MODEL” as a whole is fanciful and inherently distinctive.

• The words COMMUNITY, RESILIENCE and MODEL have many different meanings.

• In today’s English “resilience” is far more common than “resiliency”. Although resilience and resiliency can be used interchangeably and both have more or less the same definition, the small difference gives the word “resiliency” a fanciful and imaginative meaning.

• “Resiliency” is not an everyday word. Most of the people do not associate a specific meaning to the word first hand, and would have to look it up in a dictionary.

• The definition of the term “community resilience” cited in the Notice of grounds for refusal is a definition of the organisation RAND. According to that definition there is no sufficiently direct and concrete link between the mark “COMMUNITY RESILIENCY MODEL” and the services “skill-based training to promote wellness and reduce suffering resulting from traumatic events”.

• None of the word elements in the mark refers to any educational services. In fact, the relevant public will rather associate the mark technically with material science or computer networking than with educational services.

• All the references on the Internet to “COMMUNITY RESILIENCY MODEL” are related to the applicant’s product. An excerpt with Google search results is provided.

3. 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.

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).

The Office cannot find other than that the mark “COMMUNITY RESILIENCY MODEL” as a whole is descriptive and devoid of any distinctive character.

As stated in the Notice of grounds for refusal, the word “resiliency” is a variation of the word “resilience” which means “the capacity to recover quickly from difficulties; toughness” (https://en.oxforddictionaries.com ). The applicant does not question this meaning, but argues that the variant “resiliency” is rarely used in the EU, and that the slight difference in meaning between the two words gives the word “resiliency” a fanciful and imaginative meaning.

The Office cannot see how the word “resiliency” could be seen as fanciful and imaginative. The definition given above is from Oxford English Dictionary, an authoritative British English dictionary. Another authoritative British English Dictionary is Collins English Dictionary, and it defines “resiliency” as “another name for resilience” (https://www.collinsdictionary.com/ ),

Even though the word “resilience” is more widely used, the relevant consumers will perfectly well understand the word “resiliency” as a variant and alternative to “resilience”.

The services at issue are “educational services, namely, skill based training to promote wellness and reduce suffering resulting from traumatic events”. This could be categorized as a psychology course, and resilience is a concept widely used in the field of psychology, and in self-help literature. Therefore many consumers, both average consumers, and above all professional consumers, will know the meaning of the word “resiliency”.

As for the term “COMMUNITY RESILENCY”, it refers to a community’s resilience, for instance, when a catastrophe, such as a natural disaster or mass shooting, has struck. The services in question are directed at individuals, but also to public and private organisations and institutions which give support and help at catastrophes; by helping individuals in a community who suffer from traumatic events, one promotes the whole community’s healing and resiliency.

The applicant points out that the definition of the term “community resilience” cited in the Notice of grounds for refusal is a definition of the organisation RAND, and finds that therefore there is not a sufficiently direct and concrete link between the mark and the services in question.

It is not only RAND which uses the term “community resilience”, it is in fact a term which is internationally used. See the following definitions from different web sites:

https://www.ncbi.nlm.nih.gov/pubmed/24091563

Community resilience is used to describe a community's ability to deal with crises or disruptions.

http://in.bgu.ac.il/en/PREPARED/Pages/ccram.aspx

Community resiliency is a term commonly used to describe the ability of a community to endure and survive crisis situations.

http://www.dewberry.com/news/blog/post/blog/2014/03/06/Evaluating-Community-Resiliency-and-Recovery

Evaluating Community Resiliency and Recovery

…We define resiliency as a community's ability to quickly recover from a major incident, such as a natural disaster or terrorism attack, and unfortunately, quantitative ways to predict resiliency are proving elusive.

The addition of the word “MODEL” does not add any distinctiveness to the mark. It simply indicates that the educational services follow a certain system or technique in relation to “community resiliency”.

As for the fact that the words in the mark have different meanings, 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 the Google search results that show only hits for the applicant, see the decision of 21/10/2005, R 130/2005-2, THE DIFFERENCE IS PERFECTION. IT IS A DIFFERENCE YOU CAN SEE., paragraph 23, where the BOA stated that:

Moreover, if the applicant wants to demonstrate by searches on the Internet that the sign is not commonly used by its competitors and therefore distinctive, the Court of First Instance has clearly stated in its latest judgment in the “Live richly” case (paragraph 88) that this is not the determining criteria for examining the distinctive character of the signs. It is indeed the indication of a commercial origin which makes a sign distinctive or not.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 064 412 is hereby rejected for all the services claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Anne-Lee KRISTENSEN

Enclosures: A copy of the Notice of grounds for refusal, and print-outs of the above cited Internet references, 3 pages.