Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 05/10/2017

RopoHold Oy

PL 25

FI-70100 KUOPIO

FINLANDIA

Application No:	016561417
Your reference:	Ropo24-sanamerkki
Trade mark:	ROPO 24
Mark type:	Word mark
Applicant:	RopoHold Oy PL 25 FI-70100 KUOPIO FINLANDIA

The Office raised an objection on 21/04/2017 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, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/08/2017, which may be summarised as follows:

1. The translation of the word ‘ROPO’ as ‘small amount of money’ is not accurate. ROPO is a historic term for ‘a penny’ which is no longer in use in contemporary Finnish language and is therefore not relevant for the examination of absolute grounds for refusal.

2. The word ‘ROPO’ has two additional (secondary) meanings and therefore the relevant consumer will not understand the expression as referring to ‘small amount of money’.

3. The term ‘ROPO’ does not inform consumers that the services are financial, monetary and banking services offering small amounts of money.

4. Given that the mark is not a generic word, there is no public interest in keeping the sign free to be used by all.

Pursuant to Article 94 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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).

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.

‘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. As regards the applicant´s argument that the Word ‘ROPO’ is a historical expression which is no longer in use in contemporary Finnish language and for that reason cannot be taken into account when examining the absolute grounds for refusal, the Office disagrees. It must be observed 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32). In its notice of grounds for refusal dated 21/04/2017, the Office provided a dictionary definition of the word ‘ROPO’ from Kielitoimiston sanakirja, a dictionary of Finnish compiled at the Institute for the Languages of Finland. This dictionary defines the word ‘ROPO’ as ‘small amount of money’. The Office considers the dictionary definition sufficient to conclude, that the sign would be understood in that sense by the relevant public.

2. As regards the applicant´s argument that the word has secondary meanings, the Office considers it irrelevant in assessing the descriptive nature of the mark. A sign must be refused registration 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). The Office does not contradict the fact that part of the public could perceive the word ‘ROPO’ as having some of the two secondary meanings. The Office however maintains that the primary meaning perceived by the substantial part of the relevant public in relation to the services applied for would be ‘small amount of money’.

3. As regards the applicant´s argument that the word ‘ROPO’ does not inform consumers that the services are financial, monetary and banking services offering small amounts of money, the Office disagrees. The relevant consumer will not perceive the sign ‘ROPO 24’ in isolation, but together with the services applied for. In this connection, the sign ‘ROPO 24’ will be perceived as clear and direct information, that the services applied for are financial, monetary and banking services offering small amounts of money, which are available 24 hours a day.

4. As regards the applicant´s argument that there is no public interest in keeping the sign free, the Office considers it as irrelevant. It is not necessary for the Office to show that there is, on the part of third parties, a present or future need to use, or concrete interest in using, the descriptive term applied for (judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 35; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 61). Moreover, it must be observed that the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) EUTMR, does not depend on there being a real, current or serious need to leave a sign or indication free (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39). The Office hereby maintains its position that the sign ‘ROPO 24’ is descriptive and lacks distinctiveness.

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 16 561 417 is hereby rejected for the following goods/services:

Class 36 bail-bonding; banking; brokerage; capital investment; credit bureau services; issuance of credit cards; debt collection agency services; debt advisory services; deposits of valuables; electronic funds transfer; factoring; financial evaluation [banking]; financial management; financial analysis; financial consultancy; financial information; providing financial information via a web site; financial management of reimbursement payments for others; financing services; lease-purchase financing; instalment loans; investment of funds; lending against security; loans [financing]; mortgage banking; mutual funds; online banking; processing of credit card payments; processing of debit card payments; provident fund services; savings bank services.

The application may proceed for the remaining goods/services.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Stanislava MIKULOVA