Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 22/10/2019

SOULA IACOVIDOU & ASSOCIATES LLC

MAKARIOU III AVENUE & VIRONOS, "P. Lordos Center" Block B. 2nd Floor, office203

CY-3105 Limassol

CHIPRE

Application No:	018075800
Your reference:
Trade mark:	BITCOIN.COM
Mark type:	Word mark
Applicant:	SAINT BITTS LLC Ag. Andreou & El. Venizelou CY-3035 Limassol CHIPRE

The Office raised an objection on 16/06/2019 pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR because it found that the trade mark applied for is not eligible for registration, for the reasons set out in the attached letter, which forms an integral part of this decision.

The Office took the view that the relevant consumer across the EU would understand the sign as having the following meaning: bitcoin (a cryptocurrency).

Top level domain endings, such as ‘.com’, only indicate the place where information can be found on the internet and thus cannot render a descriptive or otherwise objectionable mark registrable. Therefore, www.books.com is as objectionable for printed matter as the term ‘books’ alone. This was confirmed by the General Court in its judgment of 21/11/2012, T-338/11, Photos.com, EU:T:2012:614, § 22, where it was stated that the element ‘.com’ is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site.

Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned.

Typographical symbols such as a full stop, comma, semicolon, quotation mark or exclamation mark will not be considered by the public as an indication of origin. Consumers will perceive them as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin. A similar reasoning applies to common currency symbols, such as the €, £, $ signs; depending on the goods concerned, these signs will only inform consumers that a specific product or service is traded in that currency.

The relevant consumers would perceive the sign as providing information that the goods and services in question, such as software, cards, terminals, administrative data processing services, electronic cash transactions, radio entertainment rental of computer software, etc. in Classes 9, 35, 36, 41 and 42 are all produced or provided in the way to accept/process the bitcoin currency, provide information about the bitcoin currency or that they allow consumers that they will pay for their delivery/supply, etc. by the bitcoin currency. Therefore, the sign describes the kind, characteristic, payment option, subject-matter and intended purpose of the goods and services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the services to which an objection has been raised within the meaning of Article 7(1)(b), (c) and 7(2) EUTMR.

With the notice the applicant was given opportunity to submit observations in reply. 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 failed to submit observations within the time limit. Consequently further argumentation is superfluous. For the reasons set out in the letter of objection, and pursuant to Article 7(1)(b), (c) and Article 7(2) EUTMR, the application for the European Union trade mark in question is hereby rejected for all the goods/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.

Jiri JIRSA