Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 06/11/2019

Golf Holidays Direct

Devonshire Business Centre

Letchworth Hertfordshire sg61gj

REINO UNIDO

Application No:	018121419
Your reference:
Trade mark:	Golf Holidays Direct
Mark type:	Word mark
Applicant:	Golf Holidays Direct Devonshire Business Centre Letchworth Hertfordshire sg61gj REINO UNIDO

The Office raised an objection on 02/10/2019 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 28/10/2019 which may be summarised as follows.

• We note your email but we disagree, although the worlds ‘Golf’, ‘Holidays’ and ‘Direct’ may be commonly used words, putting them together in a three word sentence is absolutely not common and no possible way an everyday user in England (English words ) would say that.

• We note the ‘SPORTS DIRECT’ have got a EU Trademark, and this is much more descriptive than ours.

• Golf is a game played by 0.9% of the England population.

• We strongly disagree your email of grounds for refusal due to the fact you have not considered that the three words put together are very unique phrase. We have no competitor companies in the UK selling by names Golf Holidays.

• Please accept the trademark.

Decision

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.

Article 7(1)(c) EUTMR provides that ‘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’ must not be registered.

According to the case-law, Article 7(1)(c) EUTMR prevents the signs or indications to which they refer from being reserved to one undertaking alone because they have been registered as trade marks. That provision thus pursues an aim in the public interest, which requires that such signs or indications may be freely used by all (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 31, and 27/02/2002, T- 219/00, Ellos, EU:T:2002:44, § 27; see also 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 33 and the case-law cited).

Furthermore, signs or indications which may serve, in trade, to designate characteristics of the goods or services in respect of which registration is sought are, pursuant to Article 7(1)(c) EUTMR, deemed to be incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services at issue, thus enabling the consumer who acquired the goods or services designated by the mark to choose to acquire them again if it was a positive experience, or to avoid doing so, if it was negative (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 30; see, also, 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 34 and the case-law cited).

It follows that, for a sign to be caught by the prohibition set out in that provision, there must be a relationship between the sign and the goods or services in question that is sufficiently direct and specific to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or of one of their characteristics (15/07/2015, T-611/13, HOT, EU:T:2015:492, § 35 and the case-law cited).

Lastly, a sign’s descriptiveness can be assessed only by reference to the way in which it is understood by the relevant public and to the goods or services concerned (07/06/2005, T- 16/03, MunichFinancialServices, EU:T:2005:201, § 26 and the caselaw cited, and 15/07/2015, T-611/13, HOT, EU:T:2015:492, § 36 and the case-law cited).

As mentioned above, the descriptiveness of a mark must be assessed not only in relation to the goods or services concerned, but also in relation to the relevant public. As a general rule, the mere combination of descriptive elements itself remains descriptive unless, because of the unusual nature of the combination, the term concerned creates an overall impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C 265/00, Biomild, EU:C:2004:87, § 39, 43).

The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the services for which protection is sought. In the present case, the relevant English speaking.

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 sign applied for consists of a combination of three words, ‘Golf’, ‘Holidays’ and ‘Direct’, all of which are readily identifiable and ordinary in English. According to the definitions provided in the notice of grounds for refusal, the relevant English speaking consumer would understand the sign as a meaningful message that indicates that the services applied for are devoted to golf travel, offering golf holidays and breaks offering their services without intervening factors or intermediaries.

The applicant underlines that the sign is not descriptive because the terms when put together in a sentence are absolutely not common and no possible way an everyday user in English would say that.

The Office fails to see how the contested sign, as a whole, could create in the relevant consumer’s mind an overall impression that is sufficiently far removed from that produced by the mere combination of the descriptive meanings of the words ‘Golf Holidays Direct’. This generic combination will immediately inform consumers of the nature and the intended purpose of the services concerned. In relation to the services in Class 35: Marketing services in the field of travel and in Class 39: Travel agents services for arranging travel, the mark will be understood as services that arrange or promote golf holidays without an intermediary; without delay or evasion or intervening persons or agencies between the provider and the customer.

As regards the argument that the expression is not used as descriptive in relation with the services, 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 which are likely to be known by anyone and are in particular known by the consumers of those goods… 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).

In the present case the Office considers that the message conveyed by the claimed trade mark is simple, clear and direct and provides with information in relation with the services. No undertaking may be given the right to monopolise the use of ordinary words or obvious adaptations of ordinary words which describe the services.

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).

The sign does not have any unusual or ambiguous character, in the light of English linguistic rules of syntax, grammar, phonetics and/or semantics, that would lead the relevant public, which is, as mentioned above, reasonably well informed and reasonably observant and circumspect, to make an association of a different kind. There are no mental steps required to deduce the meaning of the words ‘Golf Holidays Direct’.

It should be noted that 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.)

Furthermore, it is sufficient for one of the absolute grounds for refusal to apply for the sign not to be registered as a European Union trade mark. Nevertheless, the sign applied for also lacks distinctiveness with respect to the services objected to for the purpose of Article 7(1)(b) EUTMR. As confirmed by the Court, a mark that is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) EUTMR is necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b) EUTMR (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86; 14/06/2007, T-207/06, Europig, EU:T:2007:179, § 47 and the case-law cited therein).

A mark which, as in the case at hand, would simply be seen as a combination of descriptive terms, cannot guarantee the identity of the origin of the marked services to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said services from others which have a different origin. As such, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods or services, thus enabling the consumer who acquired them 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 (03.07.2003, T 122/01, Best Buy, EU:T:2003:183, § 20).

As outlined above, the trade mark applied for consists of a combination of words that merely describe the characteristics of the services to which the objection has been raised.

As regards the applicant’s argument that a similar registration (‘SPORTS DIRECT’) has been accepted by the EUIPO, 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; and 09/10/2002, T-36/01, Glass pattern, EU:T:2002:245, § 35).

‘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 according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T-106/00, Streamserve, EU:T:2002:43,§ 67).

Consequently it is also incapable of performing the essential function of a trade mark, namely that of identifying the origin of the services.

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 121 419 ‘Golf Holidays Direct’ is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c) EUTMR in the English speaking territory for all the services claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Julia TESCH