Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 10/12/2015

CLEVELAND

10 Fetter Lane

London EC4A 1BR

United Kingdom

Application No:	14 000 608
Your reference:	JMC/62066EM1
Trade mark:	DUTYCALCULATOR
Mark type:	Word mark
Applicant:	BORDERFREE, Inc. 292 Madison Avenue, 5th New York, New York 10017 United States of America

The Office raised an objection on 20/05/2015, pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, 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.

On 14/09/2015 the applicant amended the specification of the services to read as follows:

Class 35	Tariff advisory services relating to the cross-border shipment of goods, namely goods classification services to determine tariff value including Harmonized System (HS) classifications.
Class 36	Financial services; Duty and/or tax calculations relating to the cross-border shipment of goods.
Class 39	Facilitation of cross-border shipment and transport transactions.

On 21/09/2015 the applicant submitted its observations in reply to the aforementioned objection where it is argued that as a result of the amendments the trade mark applied for is no longer directly descriptive of the services that are now in Classes 35 and 39. In respect to Class 36 services the applicant claims that since the general specification financial services is not related to the calculation of duty the mark in question cannot be regarded as being directly descriptive. Moreover, as regards the remaining services, it is argued that they are related to tariffs and not to duties and therefore the relevant public will not see the trader mark as being directly descriptive. Finally, the applicant also refers to case-law that should support the arguments given in reply to the objection.

Pursuant to Article 75 CTMR, 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 lift the objection for part of the services, namely those in Class 39. However, the objection is maintained for the remaining services, namely those in Classes 35 and 36.

Under Article 7(1)(c) CTMR, ‘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.

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) CTMR 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

First of all, the Office agrees with the applicant that after its amendment the list of the services in Class 39 of the mark applied for no longer includes the services related to the calculation of duties and therefore the trade mark can be accepted in respect to these services.

However, the Office is of the opinion that even considering the amends made in the remaining Classes the mark applied for, ‘DUTYCALCULATOR’, is descriptive and thus devoid of any distinctive character. In particular, the mark in question immediately informs consumers without further reflection that the services in Classes 35 and 36 relate to the calculation of duties and thus conveys obvious and direct information regarding their intended purpose.

Class 35

As regards the services in Class 35 the applicant argues that they do not involve any calculation of duties payable and thus the mark ‘DUTYCALCULATOR’ is not directly descriptive of their purpose.

In this respect, it should be observed that the scope of protection of the trade mark in Class 35 is limited to goods classification services to determine tariff value including Harmonized System (HS) classifications because the term ‘namely’ used in the specification is exclusive and restricts the scope of the protection only to the specifically listed goods.

The Office considers that these services are closely related to the calculation of duties since they serve to determine the tariff value of goods, which is clear from their wording. Therefore, the relevant public will see the mark ‘DUTYCALCULATOR’ not as an indication of origin but merely as the reference to the intended purpose of the services in question.

Class 36

In Class 36 the mark applied for covers financial services in general and specific services duty and/or tax calculations relating to the cross-border shipment of goods.

As regards financial services in general the applicant argues that these services do not relate to the calculation of duties and in respect to the aforementioned specific services it is claimed that the term ‘duty’ is not used in the cross-border shipment of goods and thus the relevant public would not perceive the mark ‘DUTYCALCULATOR’ as being directly descriptive.

In reply, the Office, first of all, notes that the wording of the latter specification expressly refers to duty and/or tax calculations relating to the cross-border shipment of goods. Moreover, the terms ‘duty’ and ‘tariff’ are closely related to each other and both are used in relation to customs. The Oxford English Dictionary defines ‘tariff’ as an official list or schedule setting forth the several customs duties to be imposed on imports and exports; a table or book of rates; any item of such a list, the impost (on any article); also the whole body or system of such duties as established in any country (see www.oed.com , visited on 10/12/2015). Therefore, the relevant public will see the term ‘duty’ as being descriptive in respect to the services concerned.

As regards the broad specification financial services in Class 36 the Office observes that it includes the services related to duty calculation for which the mark ‘DUTYCALCULATOR’ is directly descriptive, as provided above. Since the Office cannot dissect ex officio these services from the applicant’s broad specification, the refusal applies to it as a whole.

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case‑law, ‘decisions concerning registration of a sign as a Community 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 Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 000 608 is hereby rejected for all the services in Classes 35 and 36.

The application will be accepted for services in Class 39.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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 800 has been paid.

Justas IVANAUSKAS