Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 30/05/2019

DEHNS

St Bride's House

10 Salisbury Square

London EC4Y 8JD

REINO UNIDO

Application No:	018011808
Your reference:	21.6.M114512
Trade mark:	BLACK CARD
Mark type:	Figurative mark
Applicant:	Black Card LLC 250 Veronica Lane, Suite 206 Jackson, Wyoming 83001 ESTADOS UNIDOS (DE AMÉRICA)

Please disregard the previous Refusal of application for a European Union trade mark sent on 29/05/2019. We apologize for any inconvenience caused.

The Office raised an objection on 08/02/2019 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 03/04/2019, which may be summarised as follows.

1. The applicant argues that the Office has made reference to the website which is clearly targeted at US consumers. Therefore, the references located by the Office are not relevant to any assessment of how the trade mark BLACK CARD (stylised) would be perceived by consumers in the European Union.

2. Notwithstanding the apparent irrelevance of the referenced article (www.bankrate.com/credit-cards/black-card-offer/ ) to the present matter, said article does, in fact, direct the reader to the Applicant’s credit card services in the section listing famous/well-known cards. None of the other providers of credit card services listed in that article uses the mark BLACK CARD. This supports the conclusion that the word mark BLACK CARD is, in fact, used as an indication of trade origin, referring to services provided specifically by the Applicant.

3. The word “BLACK” has connotations of elegance and sleekness: it certainly does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question. One would not refer to services as being “black card” services; as such a description is entirely meaningless. In the absence of a readily discernible meaning in relation to the services in question, consumers will perceive the sign as having some other function, namely, as an indicator of commercial origin.

4. The Office has not given due consideration or weight to the stylised elements of the mark. In particular, the spacing between the individual letters of the words “BLACK” and “CARD”, and the large space between the two words, is unusual and eye-catching. As such, the attention of consumers will doubtless be drawn to the atypical formatting of the mark, and they will perceive that these stylised elements are not gratuitous, but instead function to signal that the services provided under the mark BLACK CARD (stylised) originate from a single commercial undertaking.

5. The EUIPO previously registered the mark BLACK CARD (stylised) in relation to services in inter alia Class 36 under EUTM No. 008254591.

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).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function (16/09/2004, C-329/02 P, ‘SAT.2’, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditioned by a finding that the term concerned is commonly used (12/02/2004, C-265/00, ‘Biomild’ EU:C:2004:87).

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (05/12/2002, T-130/01, ‘Real People, Real Solutions’, EU:T:2002:301; 09/07/2008, T-58/07, ‘Substance for Success’, EU:T:2008:269; and consistent case-law on absolute grounds for refusal).

The marks referred to in Article 7(1)(b) are, in particular, those which 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).

A word mark which is descriptive of characteristics of the 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. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C-363/99, ‘Postkantoor’, EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The Office will now respond to applicant’s observations as follows:

1. The applicant argues that the Office has made reference to the website which is clearly targeted at US consumers. Therefore, the references located by the Office are not relevant to any assessment of how the trade mark BLACK CARD (stylised) would be perceived by consumers in the European Union.

The Office acknowledges that the reference has been made to the US website, but it should be noted that the major credit card service providers are American, like the applicant, but they operate worldwide and are obviously very active in the European Union market. Moreover, regarding the source of the evidence, it is not of much significance that it originate from a website outside of the Member States, as long as they are English-speaking jurisdictions, as despite possible spelling variations, because there is only one English language (Decision of the Board of Appeal of 5 July 1998 in Case R 179/1998-1 – ASCOT, at paragraph 17).

In support of the objection and for purely illustrative purposes, it should be noted that the results of an internet search on 29/05/2019 revealed that black cards are available on the relevant market in the European Union:

https://www.finder.com/uk/the-most-exclusive-credit-cards-in-the-world

In above mentioned article some of the cards are as well recognised as being “black cards”, such as American Express Centurion, or Eurasian Diamond Card (Visa Infinite). Therefore, the Office considers that the expression “BLACK CARD” is used on the relevant market by other undertakings.

2. Notwithstanding the apparent irrelevance of the referenced article (www.bankrate.com/credit-cards/black-card-offer/ ) to the present matter, said article does, in fact, direct the reader to the Applicant’s credit card services in the section listing famous/well-known cards. None of the other providers of credit card services listed in that article uses the mark BLACK CARD. This supports the conclusion that the word mark BLACK CARD is, in fact, used as an indication of trade origin, referring to services provided specifically by the Applicant.

Contrarily to the Applicant, the Office considers that the fact that the referenced article directs reader to the Applicant’s credit card services is not sufficient proof. It is clearly stated in the article “A black card is a type of extremely exclusive credit card that is almost solely reserved for the ultra-wealthy. Typically, the cards are available on an invitation-only basis.” From this is obvious that the author is referring to special type of credit card, and not solely to the credit card of particular undertaking.

Furthermore, the Office would like to recall the case law which establishes that as regards the applicant’s argument that no other competitors make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

The Office would like to point out, that although the applicant managed to successfully register "Black Card" as a U.S. trademark in 2009, this trademark has been cancelled on grounds that it was merely descriptive. (American Express Marketing and Development Corp, et al. v. Black Card, LLC, 2011 U.S. Dist. LEXIS 133151 (S.D.N.Y. November 17, 2011. https://law.justia.com/cases/federal/district-courts/new-york/nysdce/1:2010cv01605/359155/102/).

3. The word “BLACK” has connotations of elegance and sleekness: it certainly does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question. One would not refer to services as being “black card” services; as such a description is entirely meaningless. In the absence of a readily discernible meaning in relation to the services in question, consumers will perceive the sign as having some other function, namely, as an indicator of commercial origin.

When taken as a whole, the sign consists exclusively of a meaningful expression that will be easily understood by the relevant public, who will perceive it not as a trade mark but as a non-distinctive indication that does not function as a trade mark for the claimed services.

The interpretation of the sign will not trigger any mental process or require any interpretation in order to arrive at its meaning. On the contrary, it conveys a straightforward and meaningful message that the services applied for concern extremely exclusive credit card.

The applicant raises an argument that the word “BLACK” has connotations of elegance and sleekness. The Office respectfully disagrees with the applicant’s argument and asserts that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 84).

Furthermore, with regard to applicant’s argument that the expression “BLACK CARD” does not provide a direct description of the services in question, nor does it make reference to any essential characteristics of the services in question

it must be advised that ‘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).

In addition, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of the trade mark, even if the awareness of the relevant public is higher than average. Therefore, the sign will not be seen as a badge of origin and does not fulfil the role of a trade mark.

4. The Office has not given due consideration or weight to the stylised elements of the mark. In particular, the spacing between the individual letters of the words “BLACK” and “CARD”, and the large space between the two words, is unusual and eye-catching. As such, the attention of consumers will doubtless be drawn to the atypical formatting of the mark, and they will perceive that these stylised elements are not gratuitous, but instead function to signal that the services provided under the mark BLACK CARD (stylised) originate from a single commercial undertaking.

Regarding the Applicant argument that the Office has not given due consideration or weight to the stylised elements of the mark, it should be noted that the nature of these elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the services for which protection is sought.

In the present case, the Office is of the opinion that the large space between the two words is more banal than unusual and eye-catching. This element does not have a sufficient impact on the mark as a whole to render it distinctive, as it is neither sufficient to distract the attention of the consumer from the descriptive meaning of the word element nor likely to create a lasting impression of the mark. Furthermore, the stylized elements are secondary to the word elements, and this stylization is too minor to give the mark applied for distinctive character (see e.g. 12.09.2007, T 304/05, Pentagon, EU:T:2007:271, § 22).

5. The EUIPO previously registered the mark BLACK CARD (stylised) in relation to services in inter alia Class 36 under EUTM No. 008254591.

Regarding the previous registration accepted by EUIPO itself, the Office acknowledges that it must strive for consistency and apply the same criteria to the examination of trade marks. However, the Office cannot be bound by previous decisions (27/03/2014, T‑554/12, Aava Mobile, EU:T:2014:158, § 65). Moreover, market practices, languages and registration practices evolve over time, and the trade mark, which may have been accepted on the basis that it was considered registrable at the time of application, may not be registrable nowadays. It should be noted that previously registered trade mark EUTM 008254591 has been registered in 2013. The Office is obliged to undertake its examination of trade marks based on the date of application, and it is therefore possible that, between the earlier registrations and the date of application, the market has developed in such a way that the mark, although previously capable of being registered, no longer is.

It is also important to recall that the examination of absolute grounds for refusal must be stringent and full (06/05/2003, C-104/01, Libertel, EU:C:2003:244, § 59) and may not consist of just the mere repetition of comparable decisions. As the Office has no discretion to refuse or allow a trade mark application, the principle of legality requires that, in all instances, the necessary decision be made if the legal requirements for it have been met, irrespective of whether different decisions should have been made in previous cases (27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 67).

The content of the previous paragraph also applies even if the sign for which registration is sought as an EUTM is composed in a manner identical/highly similar to that of a mark for which the Office has already approved its registration as an EUTM and which relates to goods or services identical or similar to those for which registration of the sign in question is sought (07/10/2015, T-244/14, Shape of a face in the form of a star (3D), EU:T:2015:764, § 56).

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 18 011 808 is hereby rejected for all the services claimed.

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.

Marina TOMIĆ