CANCELLATION No 14 050 C (INVALIDITY)

Clouds Sky GmbH, Am Mediapark 4c, 50670 Köln, Germany (applicant), represented by Hübsch & Weil, Patent- und Rechtsanwaltskanzlei, Patentanwalt Dirk Hübsch, Rechtsanwalt Christian Weil, Partnerschaft mbB, Oststr. 9-11, 50996 Köln, Germany (professional representative).

a g a i n s t

The Cloud Networks Limited, 54 Bartholomew Close, London EC1A 7HP, United Kingdom (EUTM proprietor), represented by CMS Cameron McKenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative).

On 29/01/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 9 436 817, , (figurative mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Electronic, electrical apparatus and instruments for the input, storage, processing and transmission of data; digital apparatus and instruments; electronic games; cinematographic, signalling and measuring apparatus and instruments; fault finding apparatus and instruments; data processing, storage and retrieval apparatus and instruments; computer apparatus and instruments; computer software; computer peripherals; networking apparatus and instruments; telecommunications, communications and satellite apparatus and instruments; electronic, electrical and digital entertainment, music, video and gaming apparatus and instruments; televisions; radios; visual and audio recording and reproduction apparatus and instruments; gaming apparatus and instruments; mobile telephone ring tones (downloadable); videos, CDs, DVDs, CD-ROMs, tapes and cassettes; electronic, digital and magnetic media and data storage, reproduction and retrieval apparatus and instruments; electronic publications; juke boxes; automatic vending apparatus and instruments; coin-operated apparatus and instruments; parts and fittings for all of the aforesaid goods.

Class 28: Gambling apparatus and instruments.

Class 38: Telecommunications, communications, satellite and digital communications services; telecommunication services for the provision and down-loading of mobile telephone ring tones and of television, radio, film, video and audio material; networking services; internet service provider services; provision of communication services enabling commerce to be conducted over networks and the Internet; television, satellite, digital and radio broadcasting, transmission and diffusion services; rental of telecommunications, communications, digital and satellite communications apparatus and instruments; advice, information and consultancy services relating to all of the aforesaid services.

Class 41: Entertainment services; leisure, sport and cultural services; provision of leisure activities; provision of sports and cultural activities; rental of electronic, electrical and digital entertainment, video, music, gaming, gambling and sports apparatus and instruments; education and training services; gaming, gambling and lottery services; provision and commission of television and radio programmes and videos; publishing services; advice, information and consultancy services relating to all of the aforesaid services.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (d) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the term “The Cloud” refers to cloud computing and is therefore totally descriptive in relation to the registered goods and services. The applicant defines the term “cloud computing” as a kind of Internet-based computing that provides shared processing resources and data to computers and other devices on-demand. It also refers to a Wikipedia article where it is stated that cloud computing is a model for enabling ubiquitous, convenient, on-demand network access to a shared pool of configurable computing resources (e.g., networks, servers, storage, applications and services) that can be rapidly provisioned and released with minimal management effort.

The applicant holds that the relevant consumers are the English-speaking average consumers and professionals in the field of computer technology, and that in view of the goods and services in question the consumers will understand the mark as indicating that the goods and services relate to or are provided through cloud computing. It also points out that because the mark is descriptive it is also non-distinctive. The applicant also states that the term “Cloud” is commonly used in trade, and that because of this the mark is also non-distinctive in relation to the goods and services at issue.

The applicant further holds that not only are the words “The Cloud” in the mark descriptive, but that the mark “Wi-Fi Powered by The Cloud” as a whole is also descriptive. The applicant further considers that the figurative element in the mark, namely the cloud device, is descriptive of cloud computing, and that it therefore does not add any distinctiveness to the mark.

In support of its observations, the applicant filed the following evidence:

• A Wikipedia extract for the term “Cloud Computing” dated 01/03/2016.

The EUTM proprietor states that it is the largest WIFI provider in the UK, and consumers recognise the brand ‘Wi-Fi Powered by The Cloud’ as belonging to the applicant, and places where the public in the UK can access hot spots.

It continues to argue that the applicant failed to establish that at the registration date the mark would have been deemed descriptive and/or non-distinctive for the goods and services for which it is registered. In particular it states that the evidence filed by the applicant does not refer to the relevant date, and that it does not allow an inference to be drawn for the situation at the time of the filing. It also finds that the applicant’s arguments relate to “cloud computing” and not “the cloud”.

The EUTM proprietor notes the applicant’s arguments only refer to the two words “the cloud”, and not the whole mark. It also considers that the applicant’s sweeping statement that “the cloud” is “100 % descriptive” is erroneous and without warrant, for instance, the applicant fails to show how “leisure, sport and cultural service” or “videos, CDs, DVDs, CD-ROMs, tapes and cassettes” would enable the public without further thought to know or describe a characteristic of the goods and services.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards the assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

Relevant public

The Cancellation Division concurs with the EUTM proprietor’s view that the relevant public are the English-speaking average consumers and professionals in the field of computer technology.

Relevant point in time

The Cancellation Division notes that the relevant point in time in respect of which the assessment on the claimed descriptive, non-distinctive and customary character of the sign in question must be made is the filing date, namely 24/09/2010. In other words, it is necessary to establish whether the words in the mark were seen as a term designating an essential feature, or that it had become a customary term of the goods and services concerned at the filing date.

Descriptiveness – Article 7(1)(c) EUTMR

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.

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, Wrigley, 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 Cancellation Division shares the EUTM proprietor’s opinion that the applicant did not show that the mark was descriptive at the filing date of 24/09/2010.

As the EUTM proprietor points out the applicant focuses entirely on the meaning of the term “The Cloud”, but did not explain in what way the whole mark or the combination of the verbal elements ‘Wi-Fi Powered by The Cloud’ is descriptive. As for the cloud device, the applicant finds that it is descriptive of the term “The Cloud”, however, it fails to explain in what way the mark as a whole is descriptive in respect of the contested goods and services. The descriptiveness of the cloud device in relation to the words “the cloud” is not determining for the descriptiveness of the mark as a whole. The applicant’s submissions do not sufficiently explain the relationship between the sign and the goods and services, which must be sufficiently direct and specific (20/07/2004, T-311/02, Limo, EU:T:2004:245, § 30; 30/11/2004, T-173/03, Nurseryroom, EU:T:2004:347, § 20), as well as concrete, direct and understood without further reflection (26/10/2000, T-345/99, Trustedlink, EU:T:2000:246, § 35).

In the absence of a comprehensive argument and explanation as to why the mark as a whole is descriptive, the Cancellation Division finds that the applicant failed to show that the mark as a whole was descriptive at the time of the filing of the EUTM.

Therefore, the applicant has failed to submit, substantiate and prove its claim that the mark was registered contrary to Article 7(1)(c) EUTMR in relation to the contested goods and services.

Non-distinctiveness – Article 7(1)(b) 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). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

In essence the applicant argues that because the mark is descriptive of the goods and services, it is also devoid of any distinctive character for those goods and services. However, as reasoned above, the applicant failed to show that the mark is descriptive in relation to the goods and services in question, and therefore also failed to show that the mark is devoid of distinctive character because of its descriptiveness.

The applicant did not provide any other evidence or convincing arguments which prove that the contested EUTM and its verbal elements ‘Wi-Fi Powered by The Cloud’ is devoid of distinctive character in relation to the goods and services. The applicant’s arguments and evidence all relate to the term ‘the cloud’, and not the registered mark as a whole.

Therefore, the applicant has failed to submit, substantiate and prove its claim that the mark is devoid of distinctive character under Article 7(1)(b) EUTMR in relation to the goods and services for which it is registered.

Customary character – Article 7(1)(d) EUTMR

In order to apply Article 7(1)(d) EUTMR there must be clear evidence, that a substantial part of the relevant market recognises the mark as the usual way of designating the goods or services which follows from the wording “customary in the current language” as well as from the expression “in the bona fide and established practices of trade”. The emphasis is in the adjectives “customary” and “established” that points to the vast majority of the relevant persons. These are not only the end consumers, but also the other traders, i.e., those who supply the goods or services (29/04/2004, C‑371/02, Bostongurka, EU:C:2004:275).

The Cancellation Division considers that the evidence must be overwhelmingly convincing in order to exclude such word from registration in accordance with Article 7(1)(d) EUTMR.

The applicant did not provide any evidence at all regarding the term ‘Wi-Fi Powered by The Cloud’ as a whole, and only provided a Wikipedia article regarding the term “the cloud”.

Thus, the applicant did not provide any evidence or convincing arguments which prove that the contested EUTM has become customary in the current language in relation to the goods and services in question.

Conclusion

In the light of the above, the Cancellation Division concludes that the application must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Robert MULAC

Anne-Lee KRISTENSEN

Natascha GALPERIN

According to Article 67 EUTMR, any party adversely affected by this decision has 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.