Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 21/01/2020

FPS PARTNERSCHAFT VON RECHTSANWÄLTEN MBB

Grosse Theaterstrasse 31

20354 Hamburg

ALEMANIA

Application No:	018121219
Your reference:	52996-19/DE/JT
Trade mark:	PRO 3
Mark type:	Word mark
Applicant:	Sequential LLC 1527 Stockton Street, 3rd Floor San Francisco California 94133 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 26/09/2019 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 18/11/2019, which may be summarised as follows.

1. The mark applied for, ‘PRO 3’, is an original combination not included in any dictionary. The word ‘PRO’ is by itself unclear and has different meanings across different languages (Annex 1). Even in the case of its promotional meaning having a positive connotation, its particular combination with the number ‘3’ is ambiguous and does not exist in the English language.

2. The mark applied for has no clear and descriptive meaning in relation to the goods and services. The meaning assigned to the sign by the Office will require mental steps and further inferences from the relevant public that are not apparent, leaving a specific meaning completely open and subject to further interpretation.

3. The internet references provided by the Office showing online use do not in general prove a lack of distinctiveness. Moreover, they obviously show use as a trade mark, in some cases in combination with other verbal and/or figurative elements. In addition, all cited web pages are .com websites and may be based in non-EU countries.

4. The Office registered several similar trade marks containing the word ‘PRO’ in combination with a numeral for identical goods in Classes 9 and 15 in the past (Annex 2). In addition, the fact that ‘PRO’ marks are sufficiently distinctive for the respective goods or services has also been confirmed by the EUIPO Board of Appeals (in cases such as ‘FISH PRO’, ‘pro 25 biotic’ and ‘ProBank’; Annex 4.)

5. The USPTO has also granted protection to numerous ‘PRO 3’ trade marks, such as ‘ALL PRO 3’, ‘Pro3’, ‘pro3dure’, ‘FUEL PRO 3’, ‘PRO 3 Universal’ and ‘PRO-3’ (Annex 3), a fact that supports the above arguments regarding the relevant consumers’ perception of ‘PRO 3’ as an indication of origin.

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).

Furthermore, ‘[t]he 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).

The descriptiveness of word marks, such as the sign at issue, must be determined not only in relation to each word taken separately but also in relation to the mark as a whole (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, it creates an overall impression that is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word combination is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87). Furthermore, according to Article 7(1)(c) EUTMR, to reject a trade mark application it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient if they are capable of being used descriptively.

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that those signs and indications could be used for such purposes (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that 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.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks that 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 conditional on a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 42; 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

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

As regards the applicant’s observations, the Office replies as follows.

1. The Office has noted the applicant’s submissions. However, when assessing a mark, the Office must consider it not in its strictest grammatical sense, but as it would be perceived by the public at large who will interpret it in relation to the goods and services for which protection is sought and will form an opinion of what it means.

The applicant admits that one of the mark’s constituent parts, the word ‘PRO’, may have a positive promotional connotation, but argues that it is unclear and has many different meanings and that its combination in the expression ‘PRO 3’ is ambiguous and does not exist in the dictionary. However, for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

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).

The applicant’s arguments must be set aside. As stated in the Office’s initial notification of 26/09/2019, the mark applied for is a combination of two readily identifiable and ordinary English words, namely ‘PRO’, which is ‘short for professional’ (information extracted from Collins English Dictionary on 26/09/2019 at https://www.collinsdictionary.com/dictionary/english/pro_1 ), and the numeral ‘3’, representing ‘three’, ‘the number 3’ (information extracted from Collins English Dictionary on 26/09/2019 at https://www.collinsdictionary.com/dictionary/english/three ). The words are easily recognisable and presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant English-speaking public will perceive the mark not as unusual, but rather as a meaningful expression.

Moreover, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This, as stated above, is clearly applicable to the present case.

Furthermore, the fact that the sign at issue can have several meanings, be a play on words or be perceived as surprising and unexpected, does not suffice to 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 services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

2. With regard to the applicant’s argument that there is no direct link between the goods and services to which an objection has been raised and the mark applied for,

[i]t 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 and services, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

As stated in its initial notification of 26/09/2019, the Office maintains that the sign ‘PRO 3’ , taken as a whole, immediately informs consumers without any further consideration that the goods and services for which protection is sought, namely electric and electronic musical effects equipment and effects units for musical instruments, mixing desks [sound], electric, electronic, electromagnetic and/or optical apparatus for simulating musical instruments, generating sound, sound manipulation, variation, modification, substitution and combination, sound reinforcement and amplifying apparatus, hi-fi sound systems, musical juke boxes, parts, components and fittings in relation to the afore-mentioned goods, included in Class 9, music-composition software, integrated circuit memory cards for use in playing electronic musical instruments, sound mixing apparatus, apparatus for recording, processing, transmission or reproduction of sound and for generating sound and simulating musical instruments, analogue sound modifiers, docking stations for digital music players, electronic and electric effects units for musical instruments, musical sound recordings, computer hardware and data carriers for generating sound and simulating musical instruments and for recording, generating, processing or reproduction of music or sound samples in Class 9, drum machines, parts, components and fittings in relation to the aforementioned goods, included in Class 15, piano keyboards, sound generators, electronic organs, musical instruments, music synthesizers, electric and electronic keyboards in Class 15 as well as tuning service for musical instruments, keyboard instruments, electronic organs, electric and electronic keyboards, synthesizers and piano keyboards, repair, maintenance, servicing, restoration and updating of computer hardware for generating sound and simulating musical instruments, providing information relating to the repair or maintenance of musical instruments and repair, maintenance, servicing, restoration and updating of keyboard instruments, electronic organs, electric and electronic keyboards, synthesizers, piano keyboards, sound generators, apparatus for recording, processing, transmission or reproduction of sound and apparatus for generating sound and simulating musical instruments in Class 43, are of a professional level or quality, having professional features and/or intended for professionals (pro musicians). The numeral 3 indicates that the goods in question are the third in a range of products and/or that the respective goods and services are in their third, much more advanced version as regards their features or quality (in comparison to, for example, version 1). Therefore, the expression ‘PRO 3’ conveys obvious and direct information regarding the kind and quality of the goods and services in question.

Likewise, as stated in the initial notification, the sign will be perceived as a promotional laudatory message, the function of which is to communicate a customer service and value statement. The expression conveys a message that the goods and services for which protection is sought are of a professional level or quality, having professional features and/or being intended for professionals, (pro musicians), and it is considered highly improbable that the relevant public would fail to grasp the sign’s promotional laudatory message.

Moreover, there is nothing about the sign, beyond its obvious promotional meaning, that might enable the relevant public, namely both the average and professional consumer in the EU — with a sufficient knowledge of English — of electric and electronic musical equipment and devices, musical instruments and their relating repair, maintenance, servicing and restoration services, to memorise it easily and instantly as a distinctive mark for the goods and services concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28).

Furthermore, the mark applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the essential function of a 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.

The Office asserts its opinion that the term ‘PRO 3’ consists exclusively of a meaningful expression easily understood by the relevant public. They will not perceive it as a trade mark but primarily as descriptive in nature, conveying obvious and direct information regarding the kind and quality of the goods and services for which protection is sought and to which an objection has been raised, eclipsing any impression that the sign could indicate a trade origin.

In addition, the Office emphasises that the absolute grounds for refusal for lack of distinctive character, and the characteristics of descriptive and common indications, each have their own scope of application, and they are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is sufficient, they can also be examined cumulatively. It is clear from case-law that a sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

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).

The relevant consumer will readily associate the sign ‘PRO 3’ with the reference that the goods and service are of a professional level or quality, have professional features and/or are intended for professionals, while the numeral 3 indicates that the goods in question are the third in a range of products and/or that the respective goods and services are in their third, much more advanced version as regards their features or quality (in comparison to, for example, version 1). Therefore, since the words are relevant in the context of electric and electronic musical effects equipment and effects units for musical instruments, mixing desks [sound], electric, electronic, electromagnetic and/or optical apparatus for simulating musical instruments, generating sound, sound manipulation, variation, modification, substitution and combination, sound reinforcement and amplifying apparatus, hi-fi sound systems, musical juke boxes, parts, components and fittings in relation to the afore-mentioned goods, included in Class 9, music-composition software, integrated circuit memory cards for use in playing electronic musical instruments, sound mixing apparatus, apparatus for recording, processing, transmission or reproduction of sound and for generating sound and simulating musical instruments, analogue sound modifiers, docking stations for digital music players, electronic and electric effects units for musical instruments, musical sound recordings, computer hardware and data carriers for generating sound and simulating musical instruments and for recording, generating, processing or reproduction of music or sound samples in Class 9, drum machines, parts, components and fittings in relation to the aforementioned goods, included in Class 15, piano keyboards, sound generators, electronic organs, musical instruments, music synthesizers, electric and electronic keyboards in Class 15, and, as a consequence, also in the context of tuning service for musical instruments, keyboard instruments, electronic organs, electric and electronic keyboards, synthesizers and piano keyboards, repair, maintenance, servicing, restoration and updating of computer hardware for generating sound and simulating musical instruments, providing information relating to the repair or maintenance of musical instruments and repair, maintenance, servicing, restoration and updating of keyboard instruments, electronic organs, electric and electronic keyboards, synthesizers, piano keyboards, sound generators, apparatus for recording, processing, transmission or reproduction of sound and apparatus for generating sound and simulating musical instruments in Class 43, this association has a direct connection with the goods and services specified in the application.

Therefore, the sign applied for, as a whole, does not have the capacity to communicate to the relevant consumers that the goods and services for which it is to be used are those of the applicant, and it cannot serve the basic function of a trade mark.

3. As regards the applicant’s arguments regarding the internet references, the Office asserts that it did not base the objection on the descriptive character of the sign but rather on the distinctive character of a trade mark that 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 services in question.

The applicant further argues that the internet references supporting the alleged non-distinctiveness provided by the Office may not be relevant as they do not target the relevant public within the European Union. However, the applicant cannot rely on this argument. It does not matter that the evidence originates from a website outside the Member States, as long as it comes from an English-speaking jurisdiction, because despite possible spelling variations there is only one English language (05/07/1998, R 179/1998‑1, ASCOT, § 17).

As regards the applicant’s criticism of the internet citations provided by the Office, it is true that the companies whose websites have been referenced may offer their services outside the European Union. However, considering the market reality of a global market in which (not only musical) electric and electronic equipment and devices, musical instruments and their related repair, maintenance, servicing and restoration services are provided and are often licensed on an international or global scale, the examples clearly indicate that the combination of the words ‘PRO’ and ‘3’, whether conjoined or not, is used in a relevant way.

In this respect, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods and services which are likely to be known by anyone and are in particular known by the consumers of those goods and services … In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

4. The Office has noted the applicant’s comments. However, the above findings do not contradict the relevant case-law on which the applicant relies. The applicant cannot successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances that led to the acceptance of those marks cannot be subject to the objections in the present proceedings, nor do they represent a valid argument to overcome the objection to the lack of distinctiveness of the sign at issue. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The marks listed by the applicant, namely EUTMs No 12 481 974 ‘EPIPHONE PRO-1’, No 1 743 608 ‘PRO-52’, No 17 893 603 ‘FISH PRO’, No 17 865 470 ‘ ’ and No 703 868 ‘ProBank’ apply to different concepts. They have little or nothing in common with the mark applied for and have been found distinctive in their own right. The trade marks referred to have no obvious and immediate meaning in relation to the goods and services for which they are registered and therefore would give the relevant consumer different impressions in relation to the goods and services in question. They all contain other verbal and/or figurative elements and the mere fact that they share one of the words with the present sign does not mean that they are similar to the mark applied for, or lead to the conclusion that the mark applied for would be distinctive. Therefore, they cannot support its registrability.

Finally, for the reasons stated above, the Office does not consider that it should follow the example of the earlier EUTM No 14 374 102 ‘PRO 2’. Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle one to an equal treatment that may lead to a registration of the trade mark in question. The fact that, in other cases relating to other marks, a less restrictive approach may have prevailed does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision that per se appears to be reasonable and to conform to the EUTMR, as interpreted by EU judicature. ‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67; 02/05/2012, T‑435/11, UniversalPHOLED, EU:T:2012:210). Accordingly, if in previous cases the Office has incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

According to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 09/10/2002, T‑36/01, Glass Pattern, EU:T:2002:245, § 35).

5. Finally, as regards the applicant’s argument that numerous ‘PRO 3’ trade marks have been found registrable by the USPTO, the Office has noted the applicant’s submissions. However, according to case-law:

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 … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

This is clearly applicable to the present case.

Therefore, the applicant has not succeeded in convincing the Office that the mark applied for will be perceived by the consumers as indicating the commercial origin of the goods and services for which protection is sought. For the reasons mentioned above, the sign ‘PRO 3’ does not possess any distinctive character for the goods and services for which protection is sought, pursuant to Article 7(1)(b) and (c) and in combination with Article 7(2) EUTMR, and is therefore unable function as a trade mark in the marketplace, i.e. it fails to distinguish the applicant’s goods and services, to which an objection has been raised, from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive and laudatory sense. The applicant has not claimed that the mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the reasons set out in the letter of objection, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 121 219 is hereby rejected for all the goods and 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.

Robert KLECUN