Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 01/02/2016

Zivko Mijatovic & Partners

Avenida Fotógrafo Francisco Cano 91A

03540 Alicante

Spain

Application No:	014368807
Your reference:
Trade mark:	MOBILE WITHOUT BORDERS
Mark type:	Word mark
Applicant:	T-Mobile USA, Inc. 12920 SE 38th Street Bellevue, Washington 98006 United States (of America)

With the notification of 08/09/2015 (attached) the applicant was informed, that the sign applied for can not be registered under Article 7(1)(b) and 7(2) CTMR.

With the above notice the applicant was given opportunity to submit observations in reply.

 

On 14/10/2015 the applicant submitted its observations which can be summarized as follows:

1. The mark ‘MOBILE WITHOUT BORDERS’ is distinctive and not descriptive for the goods and services applied for.

2. The mark ‘MOBILE WITHOUT BORDERS’ is fanciful.

3. The mark ‘MOBILE WITHOUT BORDERS’ requires reflection and is open to interpretation.

4. The mark ‘MOBILE WITHOUT BORDERS’ does not convey a clear defined meaning but instead requires thought to enable a connection to be made with the goods and services.

5. The mark ‘MOBILE WITHOUT BORDERS’ comports with the criteria laid down in the relevant case law.

6. The Office has registered similar marks.

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 having given the above arguments careful consideration, the Office maintains the grounds for refusal in respect of the goods and services. The reasons are explained hereunder.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (e.g. judgments C-102/77 Hoffmann-La Roche and C-299/99 Remington).

The Court of Justice has consistently held that a trade mark is distinctive if it makes it possible to identify the product or the service for which registration is sought as originating from a given undertaking and therefore to distinguish the product or the service from those of other undertakings (e.g. judgment of 27/02/2002, T-79/00, ‘LITE’).

Article 7(1)(b) CTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function [e.g. judgment of 16/09/2004, C-329/02 P, (‘SAT.2’)].

The marks referred to in Article 7(1)(b) are, in particular, those which 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 (e.g. judgment ‘LITE’).

Although it is clear from Article 7(1) CTMR that each of the grounds for refusal listed in that provision is independent of the others and calls for separate examination, there is a clear overlap between the scope of the grounds for refusal set out in subparagraphs (b), (c) and (d) of Article 7(1) CTMR. In particular, a word mark which is descriptive of characteristics of goods or services for the purposes of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character in relation to those goods or services within the meaning of Article 7(1)(b). A mark may nonetheless be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (see, to that effect, judgment of 12/02/2004, C-265/00, ‘Biomild’).

Article 7(2) CTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

The issue to be addressed is, whether the mark ‘MOBILE WITHOUT BORDERS’ is inherently distinctive as a trade mark for the goods and services designated by the CTM application. In particular, it must be determined, in the context of the a priori examination, and without reference to any actual use of the sign within the meaning of Article 7(3) CTMR, whether targeted consumers, when they come to make a purchasing choice, will perceive that sign as a trade mark indicating that the goods and services emanate from a specific commercial source.

The question that must be asked, when applying Article 7(1)(b), is how the sign applied for will be perceived by typical consumers of the goods/services in question. Since consumers are not highly attentive if a sign does not immediately indicate the origin and/or intended use of the object of his intended purchase, but merely conveys purely promotional, abstract information, they will not take the time either to enquire into the sign's various possible functions or mentally to register it as a trade mark (e.g. judgment of 05/12/2002, T-130/01, ‘Real People, Real Solutions’; judgment of 09/07/2008, T-58/07, ‘Substance for Success’; and consistent case-law on absolute grounds for refusal).

It must be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question (consistent case-law on absolute grounds for refusal).

Although the descriptiveness and/or distinctiveness of a trade mark may comprise an assessment of the individual elements separately, it must, in any event, depend on an appraisal of the mark as a whole. In order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (e.g. judgment ‘SAT.2’).

The particular word combination ‘MOBILE WITHOUT BORDERS’ may be perceived as a slogan. It is true that, as a rule, the concrete distinctive character of so-called advertising maxims cannot be disputed by arguing that a certain advertising effect can be attributed to them in addition to the identifying function (e.g. judgment C-398/08 P of 21/01/2010, ‘Vorsprung durch Technik’).

Settled case-law establishes that difficulties in establishing distinctiveness for certain categories of trade marks, such as those consisting of advertising slogans, do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness (e.g. judgment C-311/11 P of 12/07/2012, WIR MACHEN DAS BESONDERE EINFACH’). However, in the case of advertising slogans, it must always be examined whether there are elements which, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and/or services designated. A lack of necessary distinctiveness is a bar to registration of the trade mark.

A sign which, like an advertising slogan, fulfils functions other than that of a trade mark is only distinctive for the purposes of Article 7(1)(b) CTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (see ‘Real People, Real Solutions’, at paragraphs 19-20).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, the relevant public’s perception of such signs is not necessarily the same. Whilst the public is accustomed to perceive traditional word marks instantly as identifying the trade origin of the goods or services, the same is not necessarily true of advertising slogans, even if the owner were to apply for its registration as a word mark. The applicant’s trade mark ‘MOBILE WITHOUT BORDERS’ is such an advertising slogan.

The Court has also held that if it were established, when assessing the distinctiveness of the trade mark in question, that it served a promotional function (consisting, for example, of commending the quality of the product in question), and that the importance of that function was not manifestly secondary to its purported function as a trade mark, namely that of guaranteeing the origin of the product, the authorities may take account of the fact that average consumers are not in the habit of making assumptions about the origin of products on the basis of such slogan (e.g. judgments T-138/00 and C-64/02 P, ‘Das Prinzip der Bequemlichkeit’).

A sign must be refused registration under Article 7(1)(c) CTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (judgment of 23/10/2003, C-191/01 P, ‘Doublemint’, paragraph 32). In the Office’s view, the same applies when evaluating a mark’s distinctiveness under Article 7(1)(b) CTMR.

The applied-for mark ‘MOBILE WITHOUT BORDERS’ is made up of a combination of three common English words, whose meanings have not been disputed. Bearing this in mind, the assessment of the mark is not limited to those Member States in which English is the official language (Article 7(2) CTMR).

The applicant submits that the sign applied for ‘MOBILE WITHOUT BORDERS’ possesses the requisite level of distinctiveness necessary for its registration owing to the fact that it does not contain any immediately comprehensible information, in connection with the goods and services but instead encourages reflection. At best the mark only makes a subtle allusion to the nature of some specific goods and services. In defence of the mark, the applicant relies largely on established trade mark principles and on the case-law, in particular the judgments in the cases ‘SAT.2’ (C-329/02 P), ‘New Born Baby’ (T-140/00), ‘EUROCOOL’ (T-34/00) and ‘EASYBANK’ (T-87/00) and the decision of the Boards R 1877/2014-2, ‘YO.TV’. In further support of the mark, the applicant refers to similar marks accepted by the Office.

The Office respectfully disagrees with the applicant’s submissions/arguments. The applicant does not provide any credible explanation why these words together would be held in mind as trade mark material when seen with the objected goods and services. Bearing in mind the meaning of the sign, it is highly unlikely that the relevant consumers will recognize the mark sought automatically as a sign which could distinguish the contested goods and services from those of other competitors. The applicant does not cast any doubt on the Office’s assessment of the mark by way of raising an alternative meaning. Even if the applied-for words do not describe a specific and objective characteristic of the contested goods and services, there is no reason to believe that the potential customer will see the words ‘MOBILE WITHOUT BORDERS’ as forming a trade mark denoting a particular commercial source of the goods and services at issue.

Confronted with the words ‘MOBILE WITHOUT BORDERS’ it is highly unlikely that, without substantial use, the consumer could perceive it as a badge of origin to distinguish the contested goods and services. This assessment of the trade mark applied for is in accord with the case‑law, which means that the applicant’s reference to registrations by the Office which are possibly worded similarly is unconvincing.

As also the applicant submits, a lack of distinctiveness cannot be based on the absence of imagination or an element of originality (judgment ‘EUROCOOL’ (T-34/00); judgments T-323/00 and C-329/02 P, ‘SAT.2’). But that is not the issue here. It is sufficient, in order to retain the lack of distinctive character of the sign applied for, that the semantic content of the expression ‘MOBILE WITHOUT BORDERS’ gives the consumer merely promotional information regarding the goods and services.

The meaning of the word sequence contained in the trade mark does not differ from that which arises out of the combination of its constituent terms. This expression is grammatically correct and intellectually meaningful. It just consists of words with an obvious meaning. It exclusively conveys a message that is easily understandable. Even though the sign does not have a direct and exclusive descriptive connotation, it is nonetheless composed of a configuration of words which, taken as a whole, have a clear meaning.

The conjoining of the terms ‘MOBILE WITHOUT BORDERS’ will not be perceived as unusual by relevant consumers, but rather as a meaningful expression indicating that the applicant provides mobile (wireless/portable) telecommunications devices and services which for the user (seem to) have no borders (or territorial boundaries), in terms of geography and/or any other features that might be relevant in that context (e.g. costs, roaming, coverage). In other words, the expression ‘MOBILE WITHOUT BORDERS’ conveys clear information about the purported positive effects of the goods and services applied for.

The other meanings of the term ‘MOBILE’ (movable, free to move) which can be attributed to the sign, as the applicant submits, is not such as to confer distinctiveness on the mark in connection with the goods and services. The mark´s informational message remains obvious and direct in relation to the goods/services applied for. Any possible nuances of a meaning of a slogan are irrelevant if these are in fact similar and do not depart from the common meaning of the words constituting the slogan and are in any case perceived overall as promotional or advertising (e.g. judgment ‘Real People, Real Solutions’; judgment of 12/02/2014, T-570/11, ‘La qualité est la meilleure des recettes’).

The word combination, as a whole, communicates a direct message to the relevant public. There is no ambiguity in this message and the applicant could also not provide arguments why the English speaking general and professional consumer would perceive the expression as a trade mark. Used in respect of the goods and services claimed in Classes 9, 35 and 38, the unambiguous message is evident, without any particular mental exertion, to the relevant public. Despite the nature of these goods and services, they all serve to contribute being ‘mobile without borders’ (decision R 876/2004-1 of ‘MAKING YOUR MOBILE LIFE EASIER’).

Thus, the sign is easily understood as signifying that the applicant’s goods and services consist in providing solutions mobility/mobile (wireless/portable) telecommunications devices and services which for the user (seem to) have no borders (or territorial boundaries), namely that by using them the user will not notice any restrictions in terms of place (country), pricing, coverage etc., i.e. (wireless/portable) telecommunications which surpass usual limits, in terms of geography, cost, coverage and/or any other features that might be relevant. Since nowadays nearly everybody wants to communicate all over the world by mobile telephone, email, Twitter, Facebook, Instagram etc. when travelling and moving around, the relevant public will be likely to perceive that the products/services offered are intended to provide mobility. In other words, the expression merely states that the aim of the applicant’s activity is to provide goods and services which transcend normal (territorial) boundaries in some way, like for example “cellular calling plans that exempt cellular roaming charges for cellular voice, text and data communications between countries” (Class 38).

Different conclusions for the individual claimed goods and services of classes 9, 35 and 38 are finally not possible. All the goods and services have to do with mobile (wireless/portable) telecommunications in some way. A determination of the characteristics of each individual product or service is not required in the scope of Article 7(1)(b) CTMR. In this respect, it should be underlined that the objection was not based on Article 7(1)(c) CTMR. No reference is made to the descriptive character of the sign. The Office considers Article 7(1)(b) CTMR to be sufficient as a ground to refuse the mark for the goods and services in classes 9, 35 and 38.

The relevant public does not expect promotional slogans to be precise or convey all of the information which is required to make an informed choice when selecting the goods and services. Rather, it is a common characteristic of promotional slogans to convey only abstract information which allows every consumer to appreciate that its individual needs are addressed. Accordingly, the case-law has consistently refused registration to slogans which could appear a priori as ‘vague and indefinite’ when seen in the abstract (for example, see judgments of 03/07/2003, T-122/01, ‘Best Buy’; ‘Real People, Real Solutions’; of 17/11/2009, T-473/08, ‘Thinking ahead’).

In consequence, based on its inherent meaning, the sign in question mainly fulfils the function of a promotional announcement intended to exhibit positive characteristics of the goods and services for whose presentation it is to be used. Such a slogan does not constitute an indication of a given business or commercial origin. These findings do not contradict the case law on which the applicant relies.

Furthermore, there is nothing about the term ‘MOBILE WITHOUT BORDERS’ that might, beyond its obvious promotional meaning, enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services designated. Even if the sign were used alone, without any other sign or trade mark, the relevant public would not, in the absence of prior knowledge, perceive it other than in its promotional sense.

It derives from all the foregoing that the applied-for mark does not supersede the threshold of the necessary inherent distinctiveness. The message ‘MOBILE WITHOUT BORDERS’ is not capable of individualising providers, from the view of potential customers. They are therefore unable to make any distinction between these providers. The message is a positive statement which may apply to any provider and also to any purchasing situation (see, in analogy, decision of 07/01/2013, R 1628/2012-4, ‘BE HAPPY’). The sign is therefore, based on its inherent meaning, devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR. Consumers will only perceive such expression as a trade mark if they are exposed to use of that expression intensely and for a very long time and therefore learn to associate it with a particular trader (Article 7(3) CTMR). That finding cannot be called into question by the other arguments put forward by the applicant.

With regard to the Community trade marks which the applicant considers on a par with the case at hand, the Office can only point out that that argument has been consistently rejected in case-law, which prescribes that the legality of decisions taken by the Office must be assessed only on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of a previous decision-making practice (e.g. judgment of 30/06/2004, T-281/02, ‘Mehr für Ihr Geld’, paragraph 35). Likewise, it would be a futile exercise for the Office to list the numerous slogans that were rejected.

As regards the marks referred to, the Office observes that the marks have not much in common (when seen with the respective goods and services) and therefore the perception of the relevant public may be different. Furthermore, the mere fact that these marks contain the word ‘MOBILE’ does not make them (evidently) similar with the sign at hand nor could it be concluded that the application mark would be distinctive. Therefore, despite what might be true or not with regard to the similarity of the marks ‘MOBILE ASSISTANT’, ‘MOBILE OFFICE’ and ‘(Intenso) Mobile Line’, it cannot result in an assessment that is more favourable for the applicant.

It must also be kept in mind that the assessment of absolute grounds for refusal has to be made on a case by case basis. The mere fact that, in other cases relating to other marks, a less restrictive approach may have prevailed, does not amount to a violation of the principle of non-discrimination, or to a reason for invalidating a decision which per se appears to be reasonable and to conform to the CTMR, as interpreted by EU judicature.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that the sign ‘MOBILE WITHOUT BORDERS’ will be perceived by the consumers as pointing to the commercial/business origin of the goods and services at issue in classes 9, 35 and 38. The mark sought, despite the interpretations put on it by the applicant, does not allow the relevant public to immediately (prima facie) perceive that sign as an indication of a trade origin in the sense that the goods/services offered by the applicant may be distinguished from the same goods/services with a different origin.

From the above considerations, the Office concludes that the mark sought lacks inherent distinctive character, for the goods and services indicated in classes 9, 35 and 38, unless the consumer has first been taught to appreciate it as a trade mark. Since the mark lacks an inherent distinctive character for those services, it is prima facie barred from registration pursuant to Article 7(1)(b) CTMR in respect of those goods/services. The absolute ground for refusal under Article 7(1)(b) precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) CTMR).

Since the mark lacks inherent distinctive character, it is prima facie barred from registration and hereby refused pursuant to Article 7(1)(b) and 7(2) CTMR for all the goods and services, namely¹:

Class

9 Wireless telephones; smartphones; phablet phones; handheld computers; tablet computers; netbooks; laptop computers; radio transceivers configured as data sticks with USB connectivity; femtocells; picocells; wireless access points (WAP) devices; wireless network signal repeaters; wireless modems; cellular access points; cellular base stations; Ethernet cables; GPS antenna extension cables; encoded smart cards containing programming used to interact with wireless telecommunications devices and respond to a signal contact that requests customer identification and account information; memory cards; carrying cases for wireless telecommunications devices; gel skins in the nature of rubber coverings for protecting wireless telecommunications devices; adhesive vinyl covers for wireless telecommunications devices; protective transparent display coverings; audio cables; USB cables; high definition multimedia interface (HDMI) adapters and cables; hands-free microphone and earphone adapters; audio speakers; stereo headphones; ear buds; ear bud covers; batteries; battery chargers; car battery chargers; wall battery chargers; power supply adaptors for use with portable electronic devices; belt clip holsters for carrying wireless telecommunications devices; docking stations for wireless telecommunications devices; in-vehicle holders for wireless telecommunications devices; fitted pouches for wireless telecommunications devices; magnetically encoded prepaid wireless service cards; downloadable electronic data files consisting of audio, video and multimedia works; wireless telecommunications device software for use in controlling and monitoring prepaid wireless services; computer software enabling user management of telecommunications services.

35 Retail store services and online retail store services in connection with wireless telecommunications devices and accessories; the bringing together, for the benefit of others, of a variety of wireless telecommunications services enabling consumers to conveniently compare and purchase those services and services; the bringing together, for the benefit of others, of a variety of wireless telecommunications services enabling consumers to conveniently compare and purchase those services and services over the internet; providing a buy-back and trade in program for used wireless telecommunications devices; advertising services; data processing services; gathering, systematization, compilation and economic analysis of data and information in computer databases; arranging and conducting of commercial exhibitions in the fields of computers, data processing services, information technology and electronic business transactions via a global computer network.

38 Cellular calling plans that exempt cellular roaming charges for cellular voice, text and data communications between countries; cellular telecommunications services, namely, transmission of voice, audio, data, text, images, video, music, information, facsimiles, advertising, gaming and graphics via cellular telecommunications networks; cellular telecommunications services, namely, two-way real-time transmission of voice, audio, video and data between wireless telecommunications devices; audio chat services; video chat services; electronic mail services; text messaging and multimedia messaging services; electronic voice messaging services, namely, recording and subsequent transmission of audio messages and transmitting textual transcriptions of audio messages; providing multiple-user access to a global computer network; ringback tone services; cellular roaming services; cellular service plans allowing rollover between billing periods of wireless data connection speed management limits; rental of wireless telecommunications devices and accessories; voice-over-Internet protocol (VoIP) services; streaming services, namely, transmission of audio, video, text and multimedia content on the internet and via wireless telecommunications networks; providing multiple-user access to a global computer network; ringback tone services; providing technical support regarding the usage of cellular and IP-based telecommunications services and equipment; streaming of audio, video, and audiovisual material on the Internet, namely, streaming prerecorded music, video, online radio, and audiovisual content featuring entertainment and cultural events; information on telecommunications, namely, information about telecommunications, home and office connectivity solutions and data storage, data computing and data security.

According to Article 59 CTMR, you have a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at 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.

Peter SCHYDLOWSKI