Refusal of application for a European Union trade mark
(Article 7 and Article 42(2) EUTMR)
Alicante, 03/09/2019
Application No:
018024589
Your reference:
048031-900461
Trade mark:
ST ANDREWS
Mark type:
Word mark
Applicant:
St. Andrews Links Ltd
Pilmour House
St Andrews, Fife KY16 9SF
REINO UNIDO
The Office raised an objection on 09/04/2019 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.
After an extension of two months, the applicant submitted its observations on 14/08/2019, which may be summarised as follows.
1. The applicant has six marks consisting of ‘ST ANDREWS’ registered with the Office.
2. In one of the registered marks, the application was before the Board of Appeal, which held that there must be a close relationship between the goods and services and the geographical term ‘ST ANDREWS’.
3. The mark ‘ST ANDREWS’ cannot be considered as an indication of the geographical origin of the goods and services for which protection is sought. The mark is therefore not descriptive, but distinctive.
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.
Descriptiveness and distinctiveness
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).
‘The 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 applicant argued that ‘ST ANDREWS’ cannot be considered as an indication of geographical origin of the goods and services covered by the objection. In its argumentation, the applicant refers to the section in the Office’s Guidelines on geographical terms and to (02/10/2017, R 92/2017‑4, ST ANDREWS, § 47-48).
The Office disagrees. The registration of geographical names as trade marks is not possible where such a geographical name is either already famous, or is known for the category of goods concerned, and is therefore associated with those goods or services in the mind of the relevant class of persons, or it is reasonable to assume that the term may, in view of the relevant public, designate the geographical origin of the category of goods and/or services concerned (15/01/2015, T‑197/13, MONACO, EU:T:2015:16, § 51; 25/10/2005, T‑379/03, Cloppenburg, EU:T:2005:373, § 38).
‘ST ANDREWS’ is a town in eastern Scotland, that is, known world-wide for its historic golf courses, it is reasonable to assume that the relevant consumers, at least those with interest in golf, is familiar with the town.
With regard to arranging, organizing and conducting travels, temporary accommodation reservation services, temporary accommodation services and provision of food and beverages, it is reasonable to assume that ‘ST ANDREWS’ will be perceived as indicating that the services are provided in ‘ST ANDREWS’ or are arrangements to visit ‘ST ANDREWS’.
While the relevant consumers may not automatically believe that the objected goods and services are directly linked to golf, ‘ST ANDEWS’ is a famous tourist destination, in particular for golfs enthusiasts. They will book for accommodation 1, travel arrangements and seek touristic information about the destination.
With regard to the printed matter and media content, it is reasonable to assume that ‘ST ANDREWS’ is the subject matter of these goods, as they provide information about the town and the world-famous golf facilities.
With regard to the applicant’s argument that ‘ST ANDREWS’ was accepted for multimedia content in EUTM No 17 928 454, and therefore the mark cannot be considered descriptive for media content, ‘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).
Media content may be e-books and electronic magazines about the ‘ST ANDREWS’ tourist destination, therefore the Office maintains that the mark is descriptive of the subject matter of these goods.
The fact that ‘ST ANDREWS’ for certain services may be perceived as an indication of the geographical place where the services are rendered (02/10/2017, R 92/2017‑4, ST ANDREWS, § 52; 20/11/2018, T‑790/17, EU:T:2018:811, ST ANDREWS, § 56). This decision must also apply in analogy to goods where the geographical indication is the subject matter.
With regard to the applicant’s argument that the relevant consumers would not link the goods and services to the geographical indication, but to the reputation associated with the applicant’s courses and facilities, the applicant has not submitted evidence that the relevant consumers would perceive ‘ST ANDREWS’ as an indication of trade origin pursuant to Article 7(3) EUTMR.
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).
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.
As the Office maintains that ‘ST ANDREWS’ is descriptive for the objected goods and services, the mark is also non-distinctive.
With regard to the applicant’s argument that in the previous case of 03/06/2010, B 1 384 066, the Office held that ‘ST ANDREWS’ was not descriptive for any of the goods. The goods concerned were toys, golf and sport equipment and apparatus in Class 28. The Office has not previously held that the mark is not descriptive, but distinctive for the goods and services for which protection is sought.
Previous registered registrations
As regards the applicant’s argument that a number of similar registrations have been accepted by the Office, 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).
The applicant highlighted six registered cases consisting of the mark ‘ST ANDREWS’, namely EUTMs No 14 648 240, No 17 928 454, No 17 703 208, No 17 604 968, No 13 006 093 and No 11 424 199.
The applicant drew particular attention to EUTM No 17 604 968, which is a division form application EUTM No 9 586 348, where the objection should be waived for Classes 25, 28, 35 and partly for Class 41, as the link between the objected goods and services and the mark ‘ST ANDREWS’ was insufficiently direct (02/10/2017, R 92/2017‑4, ST ANDREWS).
Moreover, the objection should be maintained for the remaining services in Class 41, namely arranging and conducting entertainment conferences, congresses, events, competitions and seminars; club services [entertainment or education]; providing a website featuring information regarding conferences, congresses, events competitions and seminars; special event planning; organization of cultural events and of exhibitions for cultural or educational purposes; publication of books, electronic books and journals on-line; vocational guidance and instruction services [education or training advice], as
the sign ‘ST ANDREWS’ sends out a clear and unequivocal message to the relevant consumers, in particular golf professionals and enthusiasts/amateurs all over the European Union, that they originate from ‘ST ANDREWS’ or are being organised there, and that for that reason they have a close relationship with the golf sport, for which the Scottish town is world famous.
(02/10/2017, R 92/2017‑4, ST ANDREWS, § 53).
This argument was also upheld by the General court in the ‘ST ANDREWS’ case (20/11/2018, T‑790/17, EU:T:2018:811, ST ANDREWS, § 56).
In analogy with the decision of the General Court, the objection to the registration of media content in Class 9, printed matter in Class 16, arranging, organising and conducting travels in Class 39 and temporary accommodation reservation services, temporary accommodation services, provision of food and beverages in Class 43 is in accordance with the Office’s practice and the principle of equal treatment.
‘ST ANDREWS’ is the subject matter of the printed matter and the media content, and is analogous to that the Court held in relation to publication of books, electronic books and journals on-line in Class 41. With regard to arranging, organising and conducting travels to and temporary accommodation reservation services, temporary accommodation services, provision of food and beverages in ‘ST ANDREWS’ will indicate the services are provided in or close to ‘ST ANDREWS’ in analogy to the Courts decision in relation to services in Class 41.
The Office, therefore, maintains that ‘ST ANDREWS’ is descriptive and non-distinctive for the goods and services concerned.
Further proceedings
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 18 024 589 is hereby rejected for the following goods and services:
Class 9 Media content.
Class 16 Printed matter.
Class 39 Arranging, organizing and conducting travels.
Class 43 Temporary accommodation reservation services; temporary accommodation services; provision of food and beverage.
The application may proceed for the remaining services, namely:
Class 9 Games software; computer and video game cartridges; computer game software for hand-held units for playing video games.
Class 16 Stationery.
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.
Anja Pernille LIGUNA
