Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 08/12/2015

WILMER CUTLER PICKERING HALE AND DORR LLP

Ulmenstr. 37-39

D-60325 Frankfurt am Main

ALEMANIA

Application No:	014373906
Your reference:	CHEET_G_12022
Trade mark:
Mark type:	Figurative mark
Applicant:	CHEETAH MOBILE INC. PO Box 309, Ugland House Grand Cayman 1 1104 LAS ISLAS CAIMÁN

The Office raised an objection on 27/07/2015 pursuant to Article 7(1)(b) CTMR because it found that the trade mark applied for is devoid of any distinctive character, for the reasons set out in the attached letter.

The applicant submitted it’s observations on 24/09/2015, which may be summarised as follows:

1. The objection is generalised and therefore it cannot be applied to at least some of the goods or services – the goods and services have not been addressed independently.

2. It is not sufficient that a trade mark merely establishes a relation to the goods without giving precise information. A minimum degree of interpretation equates to distinctiveness. Only when the consumer recognises the padlock as such can it be deemed descriptive.

3. The padlock is purposefully stylised in a very simplified manner to reinforce the fact that it is an abstract image – it is not a regular padlock representation though.

4. There is no automatic link to ‘safeness’, instead it is likely to be interpreted as ‘locked things’ and further interpretation is required to make the necessary link.

5. Even if a link could be established it is highly questionable how the consumer should link safeness with the goods.

6. It is unclear what the office’s statement “the goods and services are safe to use” actually means, and the following relevant questions have been raised:

What is a “safe to use” computer?

What is a “safe to use” computer application?

What is “safe to use” business management, administration or advertisement?

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.

Under Article 7(1)(b) CTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

The marks referred to in Article 7(1)(b) CTMR 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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26).

After giving due consideration to the applicant’s arguments, the Office has decided to waive the objection for the following services:

Class 35 Advertising; Business management; Business administration; Office functions; Advertising and marketing services; online advertising services for others; Consultation services in the field of advertising via the Internet.

The objection is maintained for the remaining goods and services for the following reasons:

1. The Office has raised an objection against all goods and services present in the application, as it was considered that the sign was devoid of any distinctive character for the goods and services included; upon reflection the Office concedes that for those services in Class 35 the device may not be utilised or deemed to be devoid of any distinctive character, and therefore in respect of these services the objection has been waived.

Notwithstanding the above, where a device can be viewed as non-distinctive in relation to a plethora of goods and services it fails to perform the function of a trade mark. The simplistic padlock device here, when seen on software, hardware or other apparatus closely linked to these, and those services covered in Class 38, would be seen purely as an indication of a safe or secure utility, device, connection, website or service, or a piece of technology that supports such a feature.

As regards the applicant’s argument that reasons for non-registrability should be given for each good and service independently, it must be noted that it is sufficient that a ground for refusal applies to a single homogenous category of goods and/or services. A homogenous category is considered a group of goods and/or services which have a sufficiently direct and specific link to each other (judgment of 02/04/2009, T-118/06, ‘ULTIMATE FIGHTING CHAMPIONSHIP’, para. 28). Where the same ground or grounds for refusal is given for a category or group of goods or services, only general reasoning for all of the goods and/or services concerned may be used (judgment of 15/02/2007, C-239/05, ‘Kitchen company’, para. 38). In the present case all goods and services are internet/networks related (e.g. accessible or provided via internet or other networks) and the image of a padlock only indicates that those goods and services have/provide a safe access or possess some other secure feature. In particular, the goods in Class 9 are computer software (which is safe to use or provide safe access to services or data), devices for processing, storing or transferring data (safe processing, storing, transferring of data) and the services in Class 38 are transmission of data (safe transmission of data). There is an obvious link between these categories of goods and services and security, especially given the wording of some goods such as computer security and privacy software.

2 & 3. With respect to the applicant’s arguments under point 2 and 3, the Office considers that the relevant consumer is accustomed to seeing these type symbols (i.e. padlocks in various styles, or locking symbols, key holes, etc.) in trade, and as such would immediately perceive, without further thought, that the device would signify a safe and secure good or service. This is especially important considering that safety and security of data, its storage or transfer is an important feature of the goods and services and a padlock is an obvious and commonly used indication of security of online/networks and related goods and services. The Office considers that it is a commonly known fact that images of padlocks are used in relation to networks and transfer/storage of data in order to indicate their safety and no evidence is needed to support such a fact.

If a device is deemed non-distinctive or descriptive (the latter doesn’t apply here but the former does) then the stylisation of that device must be striking and prominent in order to convert it into a trade mark that is memorable in the mind of the relevant consumer. In the example here, the device is minimally stylised and the Office considers that the degree of stylisation presented is insufficient to imbue the mark with sufficient distinctive character to convert it into such a memorable trade mark.

4 – 6. With respect to the applicant’s arguments under points 4 - 6, to re-iterate the previous objection wording (with emphasis):

“The trade mark consists of a simple representation of a padlock. In the relevant area (in relation to the goods and services accessible/provided via internet or other networks) a representation of a padlock indicates that the goods and services are safe to use. Although the sign applied for is stylised, the stylisation is fairly simple and therefore does not render the sign distinctive as a whole.”

‘According to established case-law, only a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) [CTMR]’ (judgment of 12/01/2006, C‑173/04 P, ‘Deutsche SiSi-Werke’, paragraph 31).

For the purposes of clarity, the Office’s intention of the meaning of the term ‘safe’ is:

“affording security or protection from harm” – (Collins Dictionary on 02/12/2015 at http://www.collinsdictionary.com/dictionary/english/safe )

Therefore in response to the applicant’s questions:-

A “safe to use” computer is a data processing equipment and would be one which is set up in manner to provide one with security or avoidance of harm, from, for example virus threats, malware, dangerous websites, etc. This same logic applies to “safe to use” software (also, as explained above under point 1). For the remaining question, this has naturally been resolved by the waiving of the objection in class 35.

In conclusion, the minimally stylised device of a padlock contains insufficient stylisation to enable it to distinguish the goods and services from one undertaking in the field from those of another. Padlock signs are typically seen in these fields as a common sign of safe or secure websites, and online services. The link made by the relevant consumer in this case is not one of mere association, but rather an expectation that those goods and services utilised will provide them with a safe and secure experience.

For the abovementioned reasons, and pursuant to Article 7(1)(b) CTMR, the application for Community trade mark No 14 373 906 is hereby rejected for the following goods and services:

Class 09 Computer application software for providing users quick access to calls, messages, camera, information, and commonly used programs on mobile phones, computers and wearware; Computer software; Computer programs, recorded; Computer programs [downloadable software]; Computer antivirus software; Computer security and privacy software; Computer software for the creation of firewall; Web browser; Computer software for system cleaning and optimization; Computer software for developing and operating cloud computer networks and applications; Computer software platforms for cloud computing networks and applications; Computer software used for providing search engine services; Computer software for use in testing and evaluating the function of mobile devices and computers; Data processing equipment; Computers and computer hardware; Magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; Recorded content; Software; Communications equipment; Mobile phones; Apparatus for recording, transmission or reproduction of sound or images.

Class 38 Telecommunications services, namely, electronic and digital transmission of information and data via a global computer network, mobile telephones, computers, wearware, and other communication devices.

The application is accepted for the remaining services in Class 35.

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.

Richard PRYCE