Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 04/04/2016

MAIKOWSKI & NINNEMANN

Postfach 15 09 20

D-10671 Berlin

ALEMANIA

Application No:	014516314
Your reference:	CPH742EM
Trade mark:	NEXTGEN CX
Mark type:	Word mark
Applicant:	Genesys Telecommunications Laboratories, Inc. 2001 Junipero Serra Boulevard Daly City, California 94014 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 22/09/2015 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

After an agreed extension of time, the applicant submitted its observations on 20/01/2016, which may be summarised as follows:

1. The mark applied for, ‘NEXTGEN CX’, is by no means descriptive of the goods and services for which registration is sought. Average consumers will not immediately associate the word ‘CX’ with ‘customer experience’ when encountering the goods.

Is it doubtful whether average consumers would perceive the letters ‘CX’ as an acronym at all because they have many meanings (an internet extract from www.acronymfinder.com/CX.html is included). ‘CX’ will be perceived as what it stands for, namely the letters ‘C’ and ‘X’.

In the event that average consumers did perceive the letters ‘CX’ as an acronym, in the context of software or software-related services ‘CX’ might be perceived as ‘cancel’. It would make the combination ‘NEXTGEN CANCEL’ devoid of any particular meaning.

2. The combination of letters ‘CX’ on its own has previously been registered by the Office several times. For example, EUTM No 5 415 757, ‘CX’ for, inter alia, goods and services relating to software in Classes 9 and 42.

Pursuant to Article 75 EUTMR, 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 giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

1. 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.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR 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).

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 (judgment of 23/10/2003, C‑191/01 P, ‘Doublemint’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘Robotunits’, paragraph 34).

It is settled case-law that the assessment of the descriptiveness of a sign may be carried out only, on the one hand, in relation to the understanding of the sign on the part of the relevant public and, on the other, in relation to the goods or services concerned (judgment of 09/06/2010, T‑315/09, ‘Safeload’, paragraph 17).

Bearing this in mind, the Office notes that the goods and services for which registration is sought in Classes 9 and 42 – ‑computer software for contact center management; downloadable cloud computer software for contact center management and providing temporary use of online non-downloadable cloud computing software for contact center management; cloud computing featuring software for contact center management; software as a service (SaaS) services featuring software for contact center management; customization and implementation of computer software for contact center management; consulting services in the field of design and customization of software for contact center management‑ are specialised goods targeting a professional public.

The relevant public will be that from the field of managing contact centres as is clear from the wording of the specific goods and services claimed. This public requires specific software that meets its specific professional expectations and needs. The level of awareness of a professional contact centre manager will be high.

The applicant did not contest the level of attention of the relevant public; however, it refers to the relevant public as ‘average consumers’ which, for the reasons stated above, it is not.

Consumers of the applicant’s goods and services are not average consumers who would not perceive the combination ‘CX’ as an acronym with specific meaning, nor are they software specialists or programmers who would understand it as ‘cancel’. Instead they are professionals in contact centres, a key department in a company (or the main business of an outsourcing company) from which all methods of contacting customers (email, call centre, post, website, etc.) are managed. Consequently, professional managers of contact centres will be well aware of the meaning of the acronym ‘CX’ as ‘customer experience’, as customers are the key focus of their department or business.

This is clear from the internet extracts referred to in the Office’s communication of 22/09/2015. Those extracts show how the acronym is used in the customer management sector and they also make reference to IT solutions for better management.

The fact that the combination ‘CX’ might have other meanings is, therefore, flawed. For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision 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, emphasis added).

The applicant did not contest the definition provided for the other verbal element of the mark applied for. Consequently, the Office maintains that, taken as a whole, the mark applied for will be perceived by professionals in contact centres as a meaningful expression – ‘the next generation of customer experience’ – that describes the intended purpose or subject matter of the goods and services (customer experience) and a quality that refers to their stage of development (next generation).

In this regard, it is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 7(1)(c) EUTMR does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially (judgment of 12/02/2004, C‑363/99, ‘Postkantoor’, paragraph 102).

2. As regards the applicant’s argument that a number of similar registrations have been accepted by EUIPO, according to settled case-law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice’ (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

Furthermore, ‘it must be recalled that [EUIPO] is under a duty to exercise its powers in accordance with the general principles of EU law, such as the principle of equal treatment and the principle of sound administration. Having regard to those two principles, [EUIPO] must, when examining an application for registration of a European Union trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. That said, the way in which the principles of equal treatment and sound administration are applied must be consistent with respect for legality. Consequently, a person who files an application for registration of a sign as a trade mark cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed for the benefit of someone else. Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal’ (judgment of 21/05/2015, T‑203/14, ‘Splendid’, paragraphs 47‑60, emphasis added).

However, the Office would add that, having reviewed and analysed the earlier EUTM No 5 415 757, ‘CX’, that the applicant cited, it is clear that this mark, irrespective of the similarities between the goods and services concerned, being all related to software, is not on an equal footing with the expression ‘NEXTGEN CX’. The earlier mark was accepted for financial services, software in connection with stock exchange and financial services and software creation services in connection with financial services, and is thus not related to customer experience.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR, the application for European Union trade mark No 14 516 314, ‘NEXTGEN CX’ is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Octavio MONGE GONZALVO