Ahhhh, I love the smell of a freshly printed EUIPO absolute grounds case in the morning!
Often the most interesting decisions are those relatively rare beasts in which the initial examination objection is overturned by the Board.
In a recent decision, the 4th Board of Appeal had to consider the registrability of HOUSE HUNTERS in respect of class 41 services:
Entertainment services; education services; entertainment and education services providing a continuing program distributed via various platforms across multiple forms of transmission media; entertainment services providing non-downloadable, prerecorded audio and visual recordings; providing entertainment information to others regarding entertainment programming.
An examination objection was raised under articles 7(1)(b) and 7(1)(c) of the CTMR. This was on the basis that the mark “carries the dictionary definition of someone who searches for a house to buy or rent. Thus it is readily intelligible for the relevant English-speaking consumers in light of the services applied for: it will be seen merely as a description immediately information consumers without further reflection that the services applied for relate to people who are searching for houses to rent or buy, for example ‘entertainment services’ consisting of reality programmes …”.
On appeal, Scripps argued that the mark HOUSE HUNTERS is not descriptive of the services applied for; HOUSE HUNTERS is not the usual way of referring to entertainment or educational services. There is no “precise, specific and immediate” link between the mark and the services.
The 4th Board agreed.
Starting with article 7(1)(c), the Board outlined that signs captured by this provision 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 services in respect of which registration is sought”.
Referring to the definition relied on by the examiner (“a person who hunts houses”), the Board considered that “self-evidently, this term does not describe any of the services applied for” noting (perhaps wryly) that “searching for accommodation is not entertainment”. The Board went on as follows (the decision is short and sweet, so it bears repeating the full reasoning):
While it is true that a television programme, for example, can be entitled ‘HOUSE HUNTERS’, firstly this involves a two-step interpretation rather than an immediate and direct description as to the nature of the services at hand. It will firstly be perceived as a title of a programme, and then this will be interpreted to mean that the programme bears some relationship to those who search for houses.
Secondly, and more importantly, it cannot be said that ‘HOUSE HUNTERS’ is a ‘kind’ of service in the context of the Class 41 services applied for in the relevant sense. It would instead be perceived at most as a title of a broadcast, but more generally as a distinctive sign for the services at hand. Even in the case of a title of an entertainment broadcast, this does not equate with descriptive character under Article 7(1)(c) EUTMR, since a television programme can be entitled with perfectly distinctive signs which while indicating the subject matter of the programme (for example, ‘Winston Churchill’ or ‘Brexit’ or even ‘Google’) do not relate to the kind of service applied for.
In other words, it is incorrect to conflate the title of, for example, a film or entertainment service with the ‘kind’ of service applied for, even if the title indicates the subject matter of such a broadcast. This is because the subject matter of the broadcast is not the subject matter of the services applied for. In the case at hand, the appellant is correct that the term ‘HOUSE HUNTERS’ used even for entertainment services is perfectly capable of being perceived by the relevant public as a sign identifying a particular commercial origin of the services at hand.
The ground under article 7(1)(c) was roundly rejected. The examiner had based the article 7(1)(b) finding on the reasoning under article 7(1)(c), and so the finding under the latter disposed of the former ground.
The 4th Board’s reasoning maps nicely onto the test for whether a mark is inherently adapted to distinguish under Australian law, namely that from the plurality of the High Court in Cantarella which asks as a preliminary matter whether the mark is directly descriptive in its ordinary signification. The decision should therefore have quite some persuasive force here and before IPONZ (given that section 18 of the New Zealand Act has grounds largely reflecting those in articles 7(1)(b) and (c) of the CTMR).
Of course, this kind of “subject matter” objection has been the subject of much earlier case law, including the compendious decisions of Mr Hobbs QC sitting as an Appointed Person in Case O-131-11 The Flying Scotsman (here) and (fellow AP) Iain Purvis QC sitting as a Deputy Judge of the High Court in Canary Wharf Group PLC v The Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch) (here).
The House Hunters decision is available on the EUIPO’s eSearch Case Law Portal here: https://euipo.europa.eu/ohimportal/en/databases.
