Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/10/2018

DURÁN - CORRETJER, S.L.P.

Còrsega, 329 (Pº de Gracia/Diagonal)

E-08037 Barcelona

ESPAÑA

Application No:	17 890 506
Your reference:	EUTME-2730
Trade mark:
Mark type:	Figurative mark
Applicant:	FEVER LABS INC 2140 Dupont Highway Camden Delaware 19934 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 12/06/2018 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 07/08/2018, which may be summarised as follows.

1. No duly motivation for the objection pursuant to art. 94 of EUTMR 2017/1001

2. Descriptiveness/distinctive character

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.

The applicant requested another opportunity to file further submissions in case the Office maintains its objection. However, as the applicant has already availed of its´ opportunity and presented its’ observations, the Office cannot see the circumstances which should justify to grant another opportunity to submit additional information. Therefore, the request cannot be met.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

1. No duly motivation for the objection pursuant to art. 94 of EUTMR 2017/1001

Applicant´s remarks

The Office’s reasoning only contains a subjective opinion of the examiner which is not founded on any objective facts. Referring to the examiner´s link to a website about Paris in English ‘Secrets of Paris’:

http://www.secretsofparis.com/heathers-secret-blog/naughty-fall-cultural-events.html

the applicant contended that the words ‘SECRETS OF PARIS’ on this homepage are depicted in a fanciful form and in a green colour.

Referring to the examiner´s link to the French magazine ‘LE FIGARO – hors série’ with a supplementary on ‘Paris Secret’:

https://boutique.lefigaro.fr/produit/128371-paris-secret#

the applicant contended that the words ‘PARIS SECRETS’ on this homepage are depicted in a fanciful form and on a white background.

Due to the above-mentioned very characteristic typographical features of the verbal elements ‘PARIS SECRET’ and ‘SECRETS OF PARIS’ - the very different stylization of the verbal elements together with the use of different colours - the consumers are able to differentiate the origin of services of the undertakings that provide them.

The current sign also contains even more stylized elements consisting of the linking together of the two verbal elements with the last letter ‘s’ in ‘Paris’ and the first letter ‘s’ in ‘secret’ being the common denominator that confer upon it a degree of stylization. There is clear evidence that proves that consumers will see the sign applied for as an indication of commercial origin.

Referring to the examiner´s link to an article in ‘The Telegraph’ entitled ‘Secret Paris: exploring the hidden corners you didn´t know about’:

https://www.telegraph.co.uk/travel/tours/secret-paris-walking-tour-of-the-city/

it does not provide any information about an undertaking that provides the objected services with ‘SECRET PARIS’. It merely makes reference to a tour organized by a third party which is called PARIS URBAN ADVENTURES. The mere mention of ‘SECRET PARIS’ in this article does not demonstrate that said verbal elements are being used to identify an undertaking providing the objected services.

Referring to the Office´s guidelines re. Common Practice in relation to figurative marks containing descriptive/non-distinctive words :

……‘where standard typefaces incorporate elements of graphic design as part of the lettering, those elements need to have sufficient impact on the mark as a whole to render it distinctive. When these elements are sufficient to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark, the mark is registrable…..’

the applicant contended that the current sign is a fanciful combination of the words PARIS and SECRET, PARISECRET. The bigger impact in the verbal element is the letter “S” - depicted in the centre of the trade mark in bigger size and used as a connector of the verbal elements PARI and ECRET which are represented in two levels.

With reference to Council Regulation (EC) no. 207/2009, art. 75¹; EU case law²; decision of 26/03/1999 from Board of Appeal, R199/1998-2 and the European Union Treaty, art. 6.1., the applicant contended that the present notice [of grounds for refusal] is not duly reasoned making it totally arbitrary and therefore does not comply with the legal obligations to duly state the reasons of the objections based on objective criteria.

Office´s comments

The Office does agree with the applicant in that its decisions shall state the reasons on which they are based. However, the Office respectfully disagrees with the applicant that an adequate reasoning has not been given in its Notice of Grounds for Refusal of 11/06/2018.

In that respect – with point of departure in its notice of grounds for refusal – the Office would like to reiterate that it is of the position that in relation to the services at issue:

Class 41 Organizing cultural events; providing information, news and commentary in the fields of cultural events and entertainment.

the relevant public would perceive the sign as providing information that the services applied for relate to secrets and secret spots in Paris, only known by few people and therefore reflect interesting and hidden aspects of Paris from a cultural and event-like point of view. Even if the sign contains some stylised features in that the two verbal elements are linked together with a common denominator - the last letter ‘s’ in ‘Paris’ and the first letter ‘s’ in ‘secret’ – the relevant public would perceive the sign as providing information about the kind, quality and intended purpose of the services in question.

The Office´s reference to the results of an internet search on the term ‘Paris Secret’/Secret Paris’ were meant as an illustration that the term/the words are commonly used in the market for likewise services as these applied for, rather than establishing any reference to typography, stylization of letters, etc. of the terms incorporated in the same links.

The applicant contended with reference to the Office´s guidelines – which also reflect the Common Practice of Distinctiveness – Figurative Marks containing deescriptive/non-distinctive words of 02/10/2015 - that the sign at issue is a fanciful combination of the words PARIS and SECRET, PARISECRET. The bigger impact in the verbal element is the letter “S” - depicted in the centre of the trade mark in bigger size and used as a connector of the verbal elements PARI and ECRET which are represented in two levels.

However, with point of departure in the same Guidelines, the Office is of the position

that these elements of graphic design as highlighted by the applicant are not sufficient to distract the attention of the consumer from the descriptive meaning of the word elements or likely to create a lasting impression of the mark which – for the sake of good order - is the following representation:

The examples given in the Office´s Guidelines of non-registrable descriptive/non-distinctive word elements appearing in basis/standard type – with or without font effect (bolds, italics) are the following:

In order to distract the attention of the consumer from the descriptive meaning of the word element or likely to create a lasting impression of the mark, the incorporated graphic element needs to have sufficient impact on the mark as a whole to render it distinctive, see following examples of distinctive examples given in the Guidelines:

Therefore, the Office maintains its position that the stylised elements or elements of graphic design of the current sign:

are far from sufficient to distract the attention of the consumer from the descriptive meaning of the verbal elements or for that sake like to create a lasting impression of the mark on the mind of the relevant public.

2. Descriptiveness/distinctive character

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).

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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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Applicant’s remarks

Contrary to the Office’s opinion, the sign applied for is perfectly capable of being a valid trade mark because it is distinctive enough to serve its purpose as a trade mark which is to allow the public consumer to identify the commercial origin of the objected services for the following reasons:

• The verbal element is a fanciful combination of the words PARIS and SECRET: PARISECRET

• The bigger impact in the verbal element is the letter “S”, which is depicted in the centre of the trade mark in bigger size and used as a connector of the verbal elements PARI and ECRET which are represented in two levels.

It is for the Office to explain, with reasons, why a trade mark consisting of a single letter represented in standard characters is devoid of any distinctive character. A thorough examination based on the specific factual circumstances of the case in order to assess if a given letters represented in standard characters can function as a trade mark in respect of the goods/services concerned must be carried out. It is not possible to rely on assumptions like the examiner has done without further analyzing the sign.

The applicant referred to a decision of 28/09/1999 from the Supreme Court of Brussels in case 1998/AR/3122 which declares that the Benelux Office must act following the criteria established in the Examination guidelines. These stated that when assessing the absolute grounds for refusal, the criteria must be a prudent and reserved policy. The European Union has established some common rules and principles of law commonly applicable and therefore this decision is also applicable to this case.

The distinctive character of a sign needs to be considered gradually, which has to be analysed accordingly. Thus, a sign may be void of any distinctiveness, have a minor degree of distinctiveness, or an average or high distinctive character.

The sign at issue should be deemed distinctive enough to identify the concrete objected services for which it claims protection.

Office´s comments

As reasoned above, in order distract the attention of the consumer from the descriptive meaning of a word element or be likely to create a lasting impression of the mark, the stylisation or the incorporated graphic element needs to have sufficient impact on the mark as a whole to render it distinctive.

The Office maintains its position that the current sign:

is not capable of distracting the attention of the consumer from the descriptive meaning or for that sake to create a lasting impression on the mind of the relevant public. The only noticeable stylisation in the sign is the letter ‘s’, linking the two verbal elements ‘Paris’ and ‘Secret’ as common denominator which is far too little to distract the attention of the relevant public from the obvious descriptive meaning of the sign.

The graphic illustration of the scalability or graduation of distinctiveness (entire lack of distinctiveness, highly distinctive or any point in-between) as submitted by the applicant:

is taken from the Office’s Guidelines on opposition proceedings for assessing distinctiveness of the earlier mark, in relation to the opposing trade mark. These graduating criteria of assessing inherent distinctiveness are not the criteria used for the assessment of inherent distinctiveness in absolute grounds as is the case with the current sign. Accordingly, the principles referred to and used in opposition proceedings are not applicable with the current sign.

Consequently, the Office maintains its position that the sign, seen as a whole, for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the services at issue to which an objection has been raised within the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

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 17 890 506 is hereby rejected in part for the following services, namely:

Class 41 Organizing cultural events; providing information, news and commentary in the fields of cultural events and entertainment.

The application will proceed for the remaining services, namely:

Class 35 Renting of advertising spaces; advertising services, in particular, promoting and marketing the goods and services of others in the field of cultural events, travel, shopping, restaurants, entertainment, sporting events, temporary accommodation via print and electronic media; provision of an on-line marketplace for buyers and sellers of services; the bringing together of consumers and providers of a variety of services in the field of cultural events, travel, shopping, restaurants, entertainment, sporting events, temporary accommodation.

Class 41 Organizing community sporting; social club services for entertainment purposes; providing information, news and commentary in the fields of community, social, sports and sporting events.

Class 43 Providing information and advice on temporary accommodation and restaurants to tourists and business travelers.

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.

Finn PEDERSEN