: Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 06/06/2018

MURGITROYD & COMPANY

Scotland House

165-169 Scotland Street

Glasgow G5 8PL

REINO UNIDO

Application No:	017183807
Your reference:	T107605.EM.01/HP/jf
Trade mark:	SOCCER AID
Mark type:	Word mark
Applicant:	Triple S Sports Consultancy Ltd c/o Kenneth Law Shepherd, 3 Jesmond Park Mews, 9 Jesmond Park West, Newcastle Upon Tyne, Tyne and Wear NE7 7BA REINO UNIDO

1. The Office raised an objection on 12/10/2017, 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.

2. The applicant submitted its observations on 08/12/2017, and the Office responded on 06/02/2018, giving the applicant two months to reply. See the attached letter.

3. The applicant submitted its observations on 28/03/2018 and 29/03/2018, which may be summarised as follows:

The applicant limits the objected to services in classes 36 and 41 to read:

Class 36: Finance services; charitable fundraising and sponsorship in relation to the relief of national and international distress and hardship, promoting the welfare of children and humanitarian aid and development.

Class 41: Arranging and conducting of entertainment and sporting events for promoting awareness and fundraising, in relation to the relief of national and international distress and hardship, promoting the welfare of children and humanitarian aid and development.

4. 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.

The applicant did not submit any observations in addition to the above limitation.

While the Office accepts the limitation, this is not enough to render the mark distinctive. In essence the applicant has just further specified the purpose and aim of the services. While it is true that most of the Internet references and arguments provided in the Notice of 05/02/2018 relate to sport events to raise money to help kids and young adults to practice a specific sport, this is not the sole purpose of such sporting events. This is clear from for instance the following web page provided in that Notice:

http://www.ybw.com/news-from-yachting-boating-world/hurricane-irma-caribbean-florida-usa-59135

Hurricane Irma: Sail Aid UK’s fundraising event raises £46,000

Thus the sport mentioned, in the case at hand, SOCCER, just indicates which sport is played for fundraising. The purpose of those events is not exclusively to gather money to help people in that sport, but also for general charity purposes including disaster relief and for humanitarian purposes.

As for “finance services”, it is a broad term which includes charitable fundraising and sponsorship including those listed in the limited specification.

There is obviously a link between soccer events in class 41, which aim it is to raise funds for charity, and the fundraising services in class 36. One could say that the services in class 41aim to loosen the audience’s purse strings, by encouraging donations, while the services in class 36 relate to the actual collection and management of the raised funds and donations.

The message of the mark is clear, direct and impossible to miss. There is no element whatsoever in the mark that would lead the relevant consumers to believe that it is an indication of commercial origin.

5. Therefore, and for the reasons set out in the letter of 06/02/2018, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 17 183 807 is hereby rejected for the following services:

Class 36: Finance services; charitable fundraising and sponsorship in relation to the relief of national and international distress and hardship, promoting the welfare of children and humanitarian aid and development.

Class 41: Organisation of sporting events, including football events; Arranging and conducting of entertainment and sporting events for promoting awareness and fundraising, in relation to the relief of national and international distress and hardship, promoting the welfare of children and humanitarian aid and development.

The application may proceed for the remaining goods and services, namely for:

All the goods in classes 9, 14, 16, 18, 21, 25, 26, and 28, and for the following services:

Class 36: Insurance services.

Class 41: Entertainment; cultural activities; entertainment services in the form of television programmes, cable, satellite and internet programmes; production and presentation of television programmes, films, game shows and DVD's; production of sporting events for radio, film and television; education; providing of training.

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.

Anne-Lee KRISTENSEN