Trademark Details: the applicant sought to register the word mark ‘THE JUNGLE BOOK’
The applicant appealed the examiner´s decision claiming that under Article 112(6) CTMR the request for conversion had to be filed within three months after the date on which that decision acquired the authority of a final decision.
As a result of the Office’s letter of 30 October 2013, the deadline within which to file an application for conversion of the CTM to national trade marks was amended on the appellant’s representative docketing system to 30 January 2014.
The original docket date of 30 December 2013 was changed to 30 January 2014 only as a result of this letter from the Office.
The Board noted that the appellant argued that the decision as mentioned in Article 112(6) CTMR must have acquired the ‘authority of finality’ which was not the same as becoming final; a separate act was needed from the mere passing of the last day in which to file an appeal.
The Board did not agree.
Since Article 108(6) CTMR (now Article 112(6) CTMR) entered into force and in which the provisions concerning Office and Court decisions were joined, in the circumstances as in the case at hand, the period of three months for requesting a conversion started automatically once the decision had become final or acquired the authority of a final decision.
From this date, 10 March 2004, no additional or separate act was needed from the mere passing of the last day in which to file an appeal.
Therefore, it was from the day after the time-limit to file an appeal expired that the three-month period, as established in Article 112(6) CTMR, started to run.
The conversion request was submitted on 30 January 2014, and thus, well outside the set time-limit of 2 January 2014, and therefore, had to be rejected.
The Board dismissed the appeal and ordered the reimbursement of the conversion fee to the appellant, if it had been paid.
Decision of the First Board of Appeal of 18 March 2015 in case R118/2014-1 (EN) Absolute grounds for refusal – Article 7(1)(b) CTMR – well-known titles of books.
The applicant sought to register the word mark ‘THE JUNGLE BOOK’ for goods and services in Classes 3, 9, 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 32 and 41.
Third-party observations were filed claiming that ‘THE JUNGLE BOOK’ was the title of a famous collection of fictional stories written by Rudyard Kipling (1865-1936) at the end of the 19th century and should not be registrable under Article 7(1)(b), (c) and (d) CTMR.
The examiner refused the registration of the mark based on Article 7(1)(b) CTMR stipulating that ‘THE JUNGLE BOOK’ belonged to the category of famous story or book titles. It was a story that was long established and well known and it had ‘entered into the English language’ as a reference to a story that was so universally known that this knowledge eclipsed any possible trade mark understanding of it.
The applicant filed an appeal against the examiner’s rejection.
The Board concluded that THE JUNGLE BOOK was primarily well-known as the title of a collection of stories by the English author Rudyard Kipling and also the title, as such or under different variations, of numerous adaptations in books, films and television series.
The sign applied for lacked inherent distinctive character.
The relevant public would instantly understand it as providing some kind of information relating to the goods or services which could have that story as their subjectmatter (e.g. recording discs; cinematographic films, exposed films; audio discs; printer matter; baby books; books; entertainment services; amusement park and themed park services) or a claim indicating a genre which always related or adapted the life stories of young humans succeeding on their own in the wilderness, and not as indicating the commercial origin of those goods and services (see also R1856/2013-2 Pinocchio).
The Board dismissed the appeal.