Refusal of application for a European Union trade mark

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

Alicante, 15/09/2017

BOULT WADE TENNANT

Verulam Gardens

70 Gray's Inn Road

London WC1X 8BT

REINO UNIDO

Application No:	016485112
Your reference:	AWP/LDP/T151794EM00
Trade mark:	Pop Choir
Mark type:	Figurative mark
Applicant:	ROCK CHOIR LIMITED 9 Little Austins Road Farnham, Surrey GU9 8WT REINO UNIDO

The Office raised an objection on 25/04/2017 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 in part, for the reasons set out in the L110 attached letter.

The applicant requested an extension of time on 22/06/2017 to respond to this objection which was granted on 22/06/2017 so that a reply could be sent up till 30/08/2017.

The applicant submitted its observations on 30/08/2017, which may be summarised as follows:

1. The figurative elements composing the sign render it distinctive.

2. To be registered, the mark applied for should not be descriptive and should be distinctive relating to the goods and services applied for. Apart from the meaning indicated by the examiner, the mark has another one. “The term “choir” is also defined as relating especially to church services. Choirs in churches traditionally do not sing pop or rock songs. They sing religious songs to classical music or gospel songs”. It is thus unusual for the recorded goods in class 9 and as a result the objection should be waived.

3. Services are intangible and as such are different from the goods in nature as these are tangible. The method of use of these goods and services is also different. They are not in competition and not necessarily complementary. The objection as regards class 35 should, therefore, be waived.

4. The end user of the services objected to in classes 38 and 41 is a professional in the field. The sign applied for is neither descriptive nor non-distinctive for these services, therefore the objection should be waived.

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).

1. . The applicant indicates that the figurative elements composing the sign render it distinctive. As mentioned in our L110 letter dated 25/04/2017, the figurative elements composing the mark are not sufficient to attract consumers’ attention. Capital letters as in a heading is a feature often used in trade and the single quite standard blue colour composing the mark do not represent a sufficient degree of stylisation to endow the mark with distinctive character.

2. The applicant states that apart from the meaning indicated by the examiner, the mark has another one: “The term “choir” is also defined as relating especially to church services. Choirs in churches traditionally do not sing pop or rock songs. They sing religious songs to classical music or gospel songs”, that it is thus unusual for the recorded goods in class 9 and as a result the objection should be waived. However, 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.). In the case at hand, the relevant consumer will immediately understand that the figurative mark “Pop Choir” makes reference to an organized group of singers singing music of general appeal characterized by a strong rhythmic element and the use of electrical amplification and is as such descriptive of part of the goods and services applied for. It does not distinguish them from those of another undertaking and is, therefore, descriptive.

3. The applicant argues that the services are intangible and as such are different from the goods in nature as these are tangible, that the method of use of these goods and services is also different and that they are not in competition and not necessarily complementary and as a consequence, that the objection as regards class 35 should be waived. However, this argument is taken out from the opposition guidelines and do not apply to this absolute grounds objection.

4. The applicant underlines the fact that the end user of the services objected to in class 38 and 41 is a professional in the field, so that the sign applied for is neither descriptive nor non-distinctive for those services.

The Office has noted the applicant’s submissions. However, it considers that the high level of attention alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods or in relation to services they are confronted with and will perceive the words ‘Pop Choir’ only as a meaningful term referring to choirs singing pop music.

Moreover, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as having the role of a trade mark.

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C-311/11 P, ‘Smart Technologies’, § 48).

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 016485112 is hereby rejected for the following goods and services:

Class 9 Sound recordings; video recordings; recorded media; digital music; audiorecordings featuring music; Video recordings featuring music; Audiotapes featuring music; DVDs featuring music; Pre-recorded DVDs featuring music; Compact discs featuring music; Digital music downloadable from the Internet, MP3 files, MP3 recordings, webcasts and podcasts featuring music; Downloadable video recordings featuring music; Phonograph records featuring music; Pre-recorded video cassettes featuring music; multi-media recordings; gramophone records; digital recordings; media bearing, or for recording, sound and/or video; parts and fittings for all the aforesaid goods.

Class 35 Retail services connected with the sale of recordings of music; On-line retail store services in relation to downloadable pre-recorded music; Retail services connected with the sale of audio recordings featuring music, video recordings featuring music, audio tapes featuring music, DVDs featuring music, pre-recorded DVDs featuring music, compact discs featuring music; Retail services connected with the sale of digital music downloadable from the Internet, MP3 recordings, webcasts and podcasts featuring music, downloadable video recordings featuring music, phonograph records featuring music, pre-recorded video cassettes featuring music; Retail services connected with the sale of gramophone records and digital recordings Promotion [advertising] of concerts.

Class 38 Music broadcasting; radio broadcasting; Delivery of digital music by telecommunications.

Class 41 Entertainment services, namely, live performances by a musical performance group; Concert booking services; Concert services; Arranging of concerts;; Singing education; Singing classes; Instruction in singing; Musical concerts by television; Musical concerts by radio; Entertainment in the nature of visual and audio performances, namely, musical band, rock group; Entertainment, namely, live performances by groups; Education in the field of music; Education services, namely, conducting workshops in the field of music; Entertainment services, namely, providing non-downloadable pre-recorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network; Entertainment, namely, live music concerts; Instruction in the field of music; Multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video and films; Provision of information relating to music; Teaching in the field of music; Education services, namely, providing live and on-line classes, in the field of music; Entertainment and education services in the nature of live dance and music performances; Entertainment in the nature of a musical group; Entertainment services in the nature of live performances; Entertainment, namely, live concerts; Presentation of live show performances; organisation, production, management and presentation of musicconcerts and live music performances; rental of sound recordings; the provision of any of the aforesaid services to mobile phones, via a mobile network, by communications satellite, by microwave or other electronic, digital and analogue media, live, electronically, via computer network, via the internet, online and through the medium of television.

The application may proceed for the remaining goods and 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.

Brigitte BERNHEIM

Annex: L110 letter dated 25/04/2017