Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/11/2017

WP THOMPSON

8th Floor No. 1 Mann Island

Liverpool L3 1BP

REINO UNIDO

Application No:	016729618
Your reference:	GRM/T00445173EM
Trade mark:	AMERICAN GOLF OUTLET
Mark type:	Word mark
Applicant:	American Golf Discount Centre Limited Europa Boulevard, Gemini Business Park, Westbrook, Warrington WA5 5YU REINO UNIDO

The Office raised an objection on 22/05/2017 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that this trade mark is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted its observations on 21/07/2017, which may be summarised as follows:

1. The mark is distinctive, as it has no direct descriptive capacity in respect of the services for which registration is sought.

2. The mark ‘AMERICAN GOLF’ has been registered by the EUIPO (No 13 584 545) for services in Class 35. The word ‘OUTLET’ does not negate the distinctive character of the phrase ‘AMERICAN GOLF’.

3. As the consumer’s degree of attention is high, given the nature of the specialised sporting goods sold through the retail services concerned, the relevant consumer will perceive the mark applied for as a trade mark.

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, for the reasons set out below.

Article 7(1)(c) EUTMR – general remarks

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).

In the present case, the trade mark applied for consists of the expression ‘AMERICAN GOLF OUTLET’, which means ‘a commercial establishment retailing goods related to a game in which one uses long sticks to hit a small, hard ball into holes that are spread out over a large area of grassy land, these goods originating from the United States of America’.

The first word means ‘of or relating to the United States of America, its inhabitants, or their form of English’.

The second word is defined as follows: ‘Golf is a game in which you use long sticks called clubs to hit a small, hard ball into holes that are spread out over a large area of grassy land; a game played on a large open course, the object of which is to hit a ball using clubs, with as few strokes as possible, into each of usually 18 holes’.

The third word is defined as follows: ‘An outlet is a shop or organization which sells the goods made by a particular manufacturer; An outlet or an outlet store is a place which sells slightly damaged or outdated goods from a particular manufacturer, or goods that it made in greater quantities than needed; a commercial establishment retailing the goods of a particular producer or wholesaler; a market for a product or service’.

(The definitions of the three words were extracted from Collins English Dictionary on 19/05/2017 at www.collinsdictionary.com .)

The structure of the expression ‘AMERICAN GOLF OUTLET’ does not diverge from the rules of English grammar but complies with them. Therefore, the relevant consumer will perceive the mark not as unusual but as a meaningful expression.

The public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive expressions that other traders might wish to use; it is also in the interest of the public that expressions having purely informational value should not be reserved for a single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

Registration of a trade mark gives the holder of the mark a monopoly right over the signs or indications of which it is composed, so any signs or indications that are descriptive need to be left free for trade use. Those indications are, by definition, not capable of constituting trade marks.

The mark in question has a clear meaning for consumers, who will perceive it not as unusual but as a meaningful expression. The mark conveys the idea that all the services for which registration is sought, namely the bringing together, for the benefit of others, of a variety of golf clothing, golf headgear and golf footwear, golf equipment and golf accessories enabling customers to conveniently view and purchase those goods in a retail store; the bringing together, for the benefit of others, of a variety of golf clothing, golf headgear and golf footwear, golf equipment and golf accessories, enabling customers to conveniently view and purchase those goods from a catalogue or Internet website, by mail order or by means of telecommunications, are outlet services involving selling American golfing goods. The mark describes the characteristics of the services quite unambiguously, by giving consumers relevant information as regards their nature.

The services for which registration is sought target both average consumers and a professional public. It is clear that the relevant consumers will perceive the combination of words ‘AMERICAN GOLF OUTLET’, in relation to the contested services, as a meaningful expression referring to retail or outlet services through which American golfing goods can be purchased.

It must be held that the fact that the relevant public is specialist 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, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

The mark applied for, ‘AMERICAN GOLF OUTLET’, thus clearly conveys obvious and direct information about the nature of the contested services. The words that make up the mark applied for will be understood by the relevant English-speaking public, because the mark ‘AMERICAN GOLF OUTLET’ is not imaginative, metaphorical or unusual; it is no more than the sum of its parts and consists exclusively of the simple and clear combination of three immediately identifiable words. The combination of words does not contain any additional element capable of giving the mark distinctive character. The relevant public will establish a direct and specific relationship between the trade mark and the services at issue.

The Office considers it highly unlikely that, without substantial use, consumers would perceive the mark applied for as a badge of origin distinguishing the applicant’s services from those of its competitors.

Article 7(1)(b) EUTMR – general remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

It is settled case-law that ‘a sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign’ (09/10/2002, T‑360/00, UltraPlus, EU:T:2002:244, § 43).

Assessment of the distinctive character of the mark

A mark’s distinctiveness can be assessed only, first, in relation to the goods or services for which registration is sought and, second, in relation to the perception of the relevant part of the public.

As set out in the notice of absolute grounds for refusal, the sign at issue, ‘AMERICAN

GOLF OUTLET’, is devoid of any distinctive character, as consumers will fail to perceive it as an indication of trade origin but instead understand that the services are retail services of golfing goods from America.

The mark is composed of the verbal elements ‘AMERICAN GOLF OUTLET’, written in standard upper case characters. The services to which an objection has been raised and for which registration is sought, namely the bringing together, for the benefit of others, of a variety of golf clothing, golf headgear and golf footwear, golf equipment and golf accessories enabling customers to conveniently view and purchase those goods in a retail store; the bringing together, for the benefit of others, of a variety of golf clothing, golf headgear and golf footwear, golf equipment and golf accessories, enabling customers to conveniently view and purchase those goods from a catalogue or Internet website, by mail order or by means of telecommunications, are specialised services and are mainly aimed at both average consumers and a professional public. In view of the nature of the services in question, the degree of attention of the relevant public will be rather high.

A mark that, as in the present case, would simply be seen as a descriptive expression cannot guarantee the identity of the origin of the services under the mark to consumers or end users by enabling them, without any potential for confusion, to distinguish those services from others that have a different origin. Therefore, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20).

The English-speaking part of the public and other consumers in the EU who understand English will see the mark not as a badge of the trade origin of the services at issue but, rather, as a descriptive expression with a clear meaning.

There is nothing in the mark that might, beyond its obvious, direct and descriptive meaning, enable the relevant public to memorise it easily and instantly as a distinctive mark for the services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it in any way other than in its descriptive sense. The mark applied for does not constitute a play on words and is not imaginative, surprising or unexpected. It is merely an ordinary indication with a descriptive meaning and, when it is applied to a variety of services, the relevant consumer will immediately be given an indication of the characteristics of such services (i.e. their nature).

As regards the applicant’s argument that a similar mark (No 13 584 545) has been accepted by the EUIPO, according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, the mere fact that the Office has at some point registered a trade mark, from a different point of view or perhaps in error, does not entitle even the same applicant to stake a claim for subsequent registrations.

The Office strives to be consistent and always gives consideration to its previous registrations; however, each examination must be taken on its own merits and must dynamically reflect changes in linguistic norms and commercial realities and the jurisprudence with regard to them. The mark cited by the applicant, EUTM No 13 584 545, was applied for in 2014. Since then, the Office’s practice and market realities have evolved considerably, as has case-law, and guidelines have been updated accordingly. Therefore, the examination of absolute grounds for refusal must be full and stringent (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59) and may not consist only of the mere repetition of supposedly comparable decisions.

Finally, the applicant did not claim that its mark had acquired distinctive character through genuine use. Since the mark applied for will be perceived by the relevant public as purely descriptive and non-distinctive, it will not be able to fulfil the primary function of a trade mark, which is to distinguish the applicant’s services from those of its competitors, and it will not be recognised by the public as an indication of the commercial origin of the services. Therefore, it is devoid of any distinctive character within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19; 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

Conclusion

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 16 729 618 is hereby rejected for all the services claimed.

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.

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