Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 29/06/2018

HANDSOME I.P. LTD.

27-28 Monmouth Street

Bath BA1 2AP

REINO UNIDO

Application No:	017873405
Your reference:	T2442EM00
Trade mark:	Return to Sender
Mark type:	Word mark
Applicant:	RH Tomlinssons (Trowbridge) Ltd Lovemead Lodge, 25a Roundstone Street Trowbridge Wiltshire BA14 8DG REINO UNIDO

The Office raised an objection on 14/03/2018 pursuant to Article 7(1)(b) and (c) 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 11/05/2018, which may be summarised as follows:

1. The Office states that the phrase ‘Return to Sender’ would be understood as meaning ‘carrying back a letter, package, etc. to the person who sent it’. This refers to the act of returning a letter or package to the original sender and this is all it could mean. It could not mean anything else and it does not convey any information concerning other, more general underlying actions that might need to be undertaken to perform such a service. It is submitted that the trade mark is allusive with regard to the services listed in Class 39, as the applicant cannot see a connection between the services and returning letters or packages to the original sender.

2. The registration of the trade mark ‘Return to Sender’ would not provide the applicant with the exclusive right to return items to the original sender, since such wording (or wording with the same meaning) does not appear in the list of services in Class 39 as originally filed.

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)(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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

1. The contested sign is the word mark ‘Return to Sender’, which the relevant consumer will perceive in relation to the services in Class 39 as having the following meaning: ‘carrying back a letter, package, etc. to the person who sent it’. In the notification dated 14/03/2018, the Office defined ‘RETURN’ as ‘the act or an instance of putting, sending, or carrying back’ and ‘TO SENDER’ as ‘the sender of a letter, package, or radio message is the person who sent it’ (information extracted from Collins Dictionary on 14/03/2018 at https://www.collinsdictionary.com/). The meaning of the expression ‘Return to Sender’ will be clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the kind and intended purpose of the services in question, as explained below. Moreover, the applicant in its reply confirms that the sign ‘Return to Sender’ would be understood as ‘carrying back a letter, package, etc. to the person who sent it’.

In the sign ‘Return to Sender’, there is no unusual combination of words that might require something of the relevant consumers, such as grammatical analysis, before they would understand the meaning of the mark in relation to the services in question. Consequently, the meaning conveyed is explicit, and the mark will not be perceived as suggestive or allusive by the relevant consumers for the services in Class 39.

In this regard, it cannot be reasonably maintained that the trade mark applied for will be perceived as merely allusive or suggestive because there is no connection between the sign and the services. In this context, the Office refers to the decision of 13/10/1998, R 62/1998-3, LASER TRACER, § 11:

a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way (See Decision of the Second Board of Appeal of 22 September 1998, in Case R 36/98-2, The Oilgear Company, ‘OILGEAR’, paragraph 10), or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation. (See also decision of 27/11/1998, R 26/1998-3, NETMEETING, § 24.)

This is clearly not applicable in the present case, since the message conveyed by the trade mark is not merely allusive but rather directly descriptive of the kind and intended purpose of the services in question.

The applicant argues that neither the sign ‘Return to Sender’ nor returning letters or packages to the original sender has any connection with the services in Class 39. However, although the decision to refuse registration of a trade mark must, as a rule, state the reasons in respect of each of the goods or services concerned, the competent authority may nonetheless limit itself to using general reasoning where the same ground for refusal is given for a category or group of goods or services that have a sufficiently direct and specific link to each other to the extent that they form a sufficiently homogeneous category or group of goods or services (02/04/2009, T‑118/06, Ultimate fighting championship, EU:T:2009:100, § 28; 06/12/2013, T‑428/12, Valores de futuro, EU:T:2013:629, § 49 and the case-law cited).

In the present case, there is a clear link between the services for which registration is sought and the fact that the sign ‘Return to Sender’ indicates that the applicant’s services are for carrying back a letter, package, etc., to the person who sent it.

In the light of the above, the Office also considers that returning a letter or package to the sender involves different actions or services that can be included in the list of services in Class 39. If a letter or package is carried back to the sender, the service provider may return it to the person who sent it or to the shipper. Nowadays companies offer different kinds of return services for packages or letters so that clients can send them back with ease. In the software market, for instance, exist companies offering services that enable users to track their letters or packages from any place and at any time by PC, smartphone or tablet, whether they are looking for information on the delivery or on the shipment of freight. In addition, many enterprises provide consumers with personalised transportation solutions depending on their needs. In the present case, for instance, consumers may perceive the sign applied for as an indication that the services to which an objection has been raised (e.g. guarded transport, warehousing services) are provided with an additional guarantee or service commitment that the goods being transported, stored, etc., will be returned to the sender if the recipient is not found or some unexpected circumstances arise.

2. The applicant states that the registration of the trade mark ‘Return to Sender’ would not provide it with the exclusive right to return items to the original sender, since such wording (or wording with the same meaning) does not appear in the list of services in Class 39 as originally filed. In this regard, the Office considers that is not necessary for the wording or description of a service to be included in the wording of the relevant class for it to be considered descriptive. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 873 405 ‘Return to Sender’ is hereby rejected for the following services:

Class 39 Storage services; Inspection of goods for transportation; Loading of cargo; Warehousing services; Guarded transport; Loading and unloading of vehicles; Providing information relating to vehicle driving services; Information services relating to the location of goods; Labelling services; Loading and unloading of goods; Packaging and storage services; Driving services; Filling of containers; Tracking and tracing of shipments; Packaging and storage of goods; Packaging articles to the order and specification of others; Traffic information services; Providing information relating to cargo unloading services; Loading of trucks; GPS navigation services; Information relating to journeys (Services for the provision of -); Pre-transit storage of cargo; Overnight storage of letters in depots; Storage information; Information services relating to guarded transport.

The application may proceed for the following services:

Class 35 Statistical analysis and reporting; Personnel management; Business administration; Business assistance, management and administrative services; Data management.

Class 41 Training.

Class 45 Security services for the protection of property; Guard services; Security marking of goods.

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.

Moises Paulo ROMERO CABRERA