Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/10/2019

Town and Country Property Auctions

33 Lower Bridge Street Chester

Chester Cheshire West and Chester CH1 1RS

REINO UNIDO

Application No:	018101607
Your reference:
Trade mark:	TOWN & COUNTRY PROPERTY AUCTIONS
Mark type:	Figurative mark
Applicant:	Town and Country Property Auctions 33 Lower Bridge Street Chester Chester Cheshire West and Chester CH1 1RS REINO UNIDO

The Office raised an objection on 08/08/2019 pursuant to Article 7(1)(b) and (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 applicant submitted its observations on 14/08/2019, which can be summarized as follows:

• This trademark has been registered in the United Kingdom without any problems and we have been successfully trading with this trademark for a number of years.

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).

Furthermore, Article 7(2) EUTMR states that a trade mark shall not be registered, even if the grounds of non-registrability are met only in part of the European Union. An obstacle pertaining to the English-speaking population of the European Union is consequently sufficient to reject the trade mark application.

Article 7(1)(c) EUTMR pursues an aim in the public interest, namely that descriptive signs or indications relating to the characteristics of the goods in respect of which registration is sought may be freely used by all. This provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 25; 27/02/2002, T‑219/00, Ellos, EU:T:2002:44, § 27; 08/04/2003, C‑53/01, C‑54/01 and C‑55/01, Linde, EU:C:2003:206, § 73; 06/05/2003, C‑104/01, Libertel. EU:C:2003:244, § 52; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 35 and 36; 27/04/2016, T‑89/15, Niagara, EU:T:2016:244, § 12).

The signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, by virtue of Article 7(1)(c) EUTMR, regarded as incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired the goods or services designated by the mark to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 30; 27/02/2002, T‑219/00, Ellos, EU:T:2002:44, § 28, 27/04/2016, T‑89/15, Niagara, EU:T:2016:244, § 12).

In this particular case, the sole argument filed by the applicant is related to the fact that the same trademark has been registered in the United Kingdom without any problems. However, this argument cannot be accepted by the Office for several reasons.

First of all because the applicant has not filed any evidence that demonstrates that the trademark ‘ ’ has been registered in the United Kingdom for services in class 36.

Secondly because, even if this trademark has been registered in the United Kingdom for services in class 36, it is important to note that the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system (12/02/2009, C-39/08 & C-43/08, Volks.Handy, EU:C:2009:91, § 17-19; 13/02/2008, C-212/07 P, Hairtransfer, EU:C:2008:83, § 44; 05/12/2000, T-32/00, Electronica, EU:T:2000:283, § 47). Consequently, the registrability of a sign as a EUTM, or the grant of protection to an IR in the EU, must be assessed by reference only to the relevant EU rules. Accordingly, the Office is not bound by a decision given in a Member State, that the sign in question is registrable there as a national mark. That is so even if such a decision was adopted under the harmonised national legislation of a Member State of the Union or in a country belonging to the linguistic area in which the word sign in question originated (16/05/2013, T-356/11, Equipment, EU:T:2013:253, § 74; 15/09/2009, T-471/07, Tame it, EU:T:2009:328, § 35).

In light of the above the Office maintains that, in the present case, the relevant consumers would perceive the sign ‘ ’ as providing information that the services of real estate and valuation included in the application, are related to the auction of properties located in urban (town) and rural (country) areas. Therefore, the relevant consumer, notwithstanding certain figurative elements consisting of a mallet and a green rectangle where this mallet and the word elements ‘TOWN’ and ‘COUNTRY’ are contained, would perceive the sign as providing information about the kind and intended purpose of the services in question. In this regard, the presence in this case of a mallet (that is usually used in auctions of goods) in the sign, does nothing other than reinforce its descriptive character.

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.

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 18 101 607 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.

Pablo AMAT RODRÍGUEZ