Refusal of application for a European Union trade mark

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

Alicante, 20/09/2017

WP THOMPSON

8th Floor No. 1 Mann Island

Liverpool L3 1BP

UNITED KINGDOM

Application No:	16 684 102
Your reference:	RKM/WP/T00445447EM
Trade mark:
Mark type:	Figurative mark
Applicant:	Corporation for International Business, Inc. 18 E. Dundee Road, Building 4, Suite 110 Barrington Illinois 60010 UNITED STATES OF AMERICA

The Office raised an objection on 25/05/2017, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR because it found that the trade mark applied for was descriptive and devoid of any distinctive character in relation to all the services for which registration was sought, for the reasons set out in the attached letter.

The applicant submitted its observations on 05/08/2017, which may be summarised as follows:

• Contrary to the examiner’s findings, the mark applied for contains the figurative elements, which are per se distinctive and allow the mark to fulfil its essential function of a trade mark. These elements, namely a trapezoid with thickened sides, an overlapping stamp having a three-dimensional appearance, the stamp’s shadow, and the words which are depicted in different colours and fonts and arranged in two lines, taken as a whole, go beyond a simple stylisation.

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.

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 when examining each of those grounds for refusal may or even must reflect different considerations according to the ground for refusal in question (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 55; 16/09/2004, C‑329/02 P, SAT.2, EU:C: 2004:532, § 25).

Under Article 7(1)(b) EUTMR, the registration of ‘trade marks which are devoid of any distinctive character’ is to be refused. In addition, Article 7(2) EUTMR states that ‘[p]aragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union’.

For a trade mark to possess distinctive character for the purpose of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66 and the case-law cited therein).

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).

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

A word mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR (12/06/2007, T-190/05, Twist & Pour, EU:T:2007:171, § 39).

After giving due consideration to the applicant’s arguments and having re-considered the mark applied for in accordance with the case-law mentioned below, the Office maintains that it is not capable of functioning as a badge of commercial origin for the services for which registration is sought.

In response to the applicant’s arguments, the Office, first, reiterates that the mark contains the word elements ‘SAME DAY CARNET PRIORITY SERVICE’, which convey the obvious and direct information regarding the intended purpose and time of rendering the services for which registration is sought, namely that those services offer assistance in the issuance of carnet documents as well as priority delivery to the end consumer on the same day, and the figurative elements which, taken as a whole, do not endow the mark with any distinctive character. Second, the Office, contrary to the applicant’s arguments, does not consider the figurative elements capable of creating in the consumers' minds an immediate and lasting memory of the mark applied for by diverting their attention from the descriptive and non-distinctive message conveyed by the words ‘SAME DAY CARNET PRIORITY SERVICE’. These elements, essentially, consist of a trapezoid used as a frame, which is a simple geometric shape, the overlapping stamp, which is usually used in provision of services in question, and the words positioned in two lines, which is quite an ordinary arrangement of words in a mark. As a result, these elements, taken as a whole, are per se non-distinctive and, as such, they are incapable of rendering the mark distinctive and, consequently, registrable as a European Union trade mark. In other words, the Office does not find these elements, taken individually or as a whole, to be anything more than ordinary, non-distinctive elements which users are accustomed to seeing in advertising goods and services.

For all the reasons given above and in the notice of provisional refusal, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for a European Union trade mark No 16 684 102 is hereby refused for all the services for which registration is sought.

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 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.

Mirjana PUSKARIC