Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/09/2020

Fedrax Lda

Rua Encosta dos Piornais n.4 - 1AL

P-9000-683 Funchal

PORTUGAL

Application No:	018185724
Your reference:
Trade mark:	porn.es
Mark type:	Word mark
Applicant:	Fedrax Lda Rua Encosta dos Piornais n.4 - 1AL P-9000-683 Funchal PORTUGAL

The Office raised an objection on 24/01/2020 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’s observations submitted on 24/01/2020 were summarised and addressed by the Office in its notice of grounds for refusal of 13/06/2020 as follows:

Reference is made to your communication of 24/01/2020.

In your communication you submit that the intent of registering the trade mark ‘porn.es’ “was based on the premise of associating the domain name ‘porn’ with the tld ‘.es’, as each domain name is associated with a unique tld” and you claim that you had “firm ground to request the trademark under this premise”.

The Office does not agree with your view. As regards registration of domain name as EU trade marks, the Office already referred you, in the notice of objection of 23/01/2020, to established case-law, according to which:

A domain name, as such, refers, at most, only to an internet address, and not to the commercial origin of goods or services of a specific producer or supplier. The practice in regard to the attribution of domain names and the use of domain names do not determine whether a domain name is, or is not, suitable for registration as a Community trade mark in the light of the absolute grounds for refusal set out in Regulation No 207/2009.

It is appropriate, in this connection, to bear in mind the need to draw a distinction between the rights derived from the registration of a domain name, on the one hand, and the rights derived from the registration of a sign as a Community trade mark, on the other hand. Thus, the fact that a party possesses a domain name, such as the domain name ‘fluege.de’, does not mean that that domain name can, by reason of that fact, be registered as a Community trade mark. In order for this to be the case, that domain name must fulfil all of the conditions laid down by Regulation No 207/2009 in that regard (judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM (suchen.de), not published in the ECR, paragraph 44).

(14/05/2013, T-244/12, fluege.de, EU:T:2013:243, § 28-29).

In the cited judgment the applicant had, inter alia, put forward a claim, that a trade mark consisting of a domain name should, even where the term is descriptive, be entitled to protection on the ground that any user of the internet would know that, even behind a domain name formed from a descriptive term, he will find the portal of a single commercial provider. The Court rejected the applicant’s argument (§ 27). The judgment is applicable to the present case.

The Office maintains that the relevant consumers would perceive the sign ‘porn.es’ as providing information that the goods, namely sexual activity articles can be viewed and/or acquired through a pornographic website associated with Spain, and that the services enable or allow transferring video data from a pornographic website associated with Spain in a continuous flow for immediate processing or playback, or that the services concerned are of pornographic nature. Therefore, the sign describes the kind, quality and intended purpose of the goods and services concerned, or other characteristics such as the means by which the goods and services can be obtained or are made available (through the internet, and more precisely through a Spanish website).

It follows that the link between the word ‘porn.es’ and the goods and services for which protection is sought is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

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.

You also mentioned that the initial idea ‘would be to apply for “pornoes”’ and you asked if this mark would be more successful. The Office does not take any stand on the registrability of the mark ‘pornoes’ at this point as the application has not been filed yet. If you filed an application for the mark ‘pornoes’, the Office would examine the application to ensure that it does not fall under any of the grounds for refusal established under Article 7 EUTMR. Please also note, however, that it suffices for a refusal if the trade mark is descriptive, or lacks distinctive character, in any one of the official languages of the EU (03/07/2013, T-236/12, Neo, EU:T:2013:343, § 57).

Deadline for a reply

If you have any observations, they should be submitted within two months of the notification of this communication. If you do not submit any observations, the application will be rejected for:

Class 10 Sexual activity articles.

Class 38 Streaming of video material on the internet.

Class 41 Entertainment services.

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.

The applicant failed to submit any further observations within the time limit. For the reasons set out in the letters of objection and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 185 724 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.

Tuula RAJALA

ATTACHMENT Notice of grounds for refusal of application for a European Union trade mark (Article 7 and Article 42(2) EUTMR) dated 23/01/2020, 4 pages