Refusal of application for a European Union trade mark

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

Alicante, 23/03/2016

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	014613103
Your reference:	T345598CTM/DM
Trade mark:	GiSmapp
Mark type:	Figurative mark
Applicant:	Jeremy Benn Associates Limited South Barn Broughton Hall Skipton North Yorkshire BD23 3AE REINO UNIDO

The Office raised an objection on 17/11/2015, pursuant to Article 7(1)(b) and (c) EUTMR and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character. The objection letter is attached.

For ease of reference, the contested goods are listed below:

Class 9 Scientific, nautical, surveying, measuring, signalling apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; computer software; electronic databases; data processing software; data collection apparatus; data processing equipment; data processing software for the assessment of asset data: computer software for use in assessing environmental risk; electronic databases; data processing software; data collection apparatus; data processing apparatus; application software; software for tablet computers; software for mobile phones; satellite imagery photo-interpretation software; computer software for use in remote meter monitoring; computer digital maps, software for web-based mapping applications.

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation and repair of computer software; computer consultancy services; software consultancy services; web-based mapping services; environmental research, reports, information, advice and consultancy services in relation to environmental risks, environmental status; environmental surveys; installation, maintenance and repair of computer software; software as a service [SaaS] for use in assessing environmental risk; software as a service [SaaS] for data processing and database management.

The applicant submitted its observations on 15/01/2016, which may be summarised as follows:

• The public policy interest behind Article 7(1) is to allow all traders the freedom to use descriptive terms.

• It is the consumers’ immediate impression which matters most, as they will not proceed to analyse the mark’s various details.

• The mark being applied for is not GISmap but GISmapp, with an extra ‘P’ at the end of the mark thus creating a new word with no meaning.

• The mark is actually a clever neologism based on the union of words GIS, MAP, and APP. At most the mark may distantly allude to the descriptive meanings of these three words, but its principal impression is that of a highly effective trade mark.

• Protection is sought for the mark as a whole, not its individual elements.

• The mark surpasses the level of distinctiveness required for registration, such that its descriptive capacities are overwhelmed by its qualities as an indicator of trade origin.

• The blue colouring of the lettering and the red iconography form a distinctive contrast. Such a contrast would not present in the normal use of the words GIS and MAP and is obvious to the average consumer on first inspection.

• The omission of spacing between GIS and MAPP. A descriptive user of these verbal elements would never eliminate this spacing.

• The mark’s highly distinctive iconography. The stylisation of the dot above the ‘I’ is visually striking and unusual.

• The unusual combination of lower case and upper case in the first half of the mark GIS breaks the recognised format used to designate the acronym GIS, such that the first half of the mark is not seen as the acronym GIS, but merely alludes to the acronym GIS.

• The double PP of map negates the mark’s descriptive qualities. Not only is this alteration highly noticeable, map is a simple word that the average consumer would misspell; it also has a significant visual impact as a double PP at the end of a word is grammatically highly unusual.

• The mark possesses a certain originality and resonance requiring some interpretation by the relevant public to decipher its possible meaning and so sets of a cognitive process in the minds of the public.

• The average consumer should be considered as solely the relevant professional public. A professional consumer will pay a higher degree of attention to his purchase as well as having a higher level of technical expertise.

• The relevant consumer will immediately note the stylisation of the mark, the neologism created by the union of GIS and MAPP, as well as the misspelling of MAPP, all of which will denote to him that the sign has trade mark significance.

• The mark is allusive rather than directly descriptive and possesses well beyond the minimum level of distinctive character required for registration.

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.

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 which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (see Judgment of 16 September 2004, Case C-329/02P SAT.1 SatellitenFernsehen GmbH / OHIM (EUIPO), (SAT.2), ECR I-8317, 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, paragraph 31).

The Office remains of the opinion, contrary to what the applicant says, that the mark applied for, namely:

is indeed descriptive of the kind and characteristics of the of the goods and services in question.

To reiterate, the Office remains of the opinion that taken as a whole, the mark applied for, as shown above, immediately informs consumers without further reflection that the contested goods and services are all concerned with, and/or directly relate to, diagrammatic representations produced by or directly from a geographic information system. Therefore when the sign applied for is used in conjunction with the objectionable goods and services, the mark would merely be viewed in a descriptive sense. Consequently, the mark will be perceived as conveying obvious and direct information regarding the kind and characteristics of the goods in question rather than as a badge or sole trade origin.

Furthermore, the Office is of the viewpoint that the combined words the sign consists of provide a straightforward and clear message in relation to the goods and services concerned. There is nothing abstract about the expression GISmapp as its semantic content, in relation to the relevant goods and services is quite obvious.

The Office notes that the applicant is of the opinion that the mark is actually a clever neologism based on the union of words GIS, MAP, and APP, adding that at most the mark may distantly allude to the descriptive meanings of these three words, but its principal impression is that of a highly effective trade mark. However, the Office cannot agree with this viewpoint.

The Office concurs with the applicant that since the trade mark at issue is made up of several components, for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

Furthermore, it is important to note that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [EUTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts, that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (See judgment of 12/01/2005, joined cases T‑367/02, T‑368/02 and T‑369/02, ‘SnTEM’, paragraph 32.)

The Office remains of the opinion that the meaning conveyed by the expression GISmapp contained in the mark, when applied to the contested goods and services are simply the sum of the individual terms GIS and MAPP and it will be perceived with that meaning. As previously stated in earlier correspondence the Office notes that the mark contains the term “MAPP” and not “MAP” however, the Office considers that this would merely be perceived as an obvious misspelling and as such would instantly be recognised as such by the relevant English-language consumer, especially taking into account that the pronunciation of the words ‘MAPP’ and ‘MAP’ are identical, as well as the fact that the term is to be used in connection with ‘digital maps’ and goods and services concerned with ‘mapping’, etc.

As such, the combined terms GISmapp is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer.

As a result, the message conveyed by the mark is clear, direct and immediate to the relevant public and in relation to all the contested goods and services on the basis that it is not vague in any way, nor does it lend itself to different interpretations, nor is it akin to an allusive fanciful sign in relation to the goods and services claimed.

Furthermore, the applicant is reminded that 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 and services such as those in relation to which the application is filed, or of characteristics of those goods. 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 and services concerned (See judgment of 23/10/2003, C-191/01 P, ‘Wrigley’, paragraph 32.).

In the Notice of Refusal the Office submitted that the objectionable goods covered by the mark applied for are everyday consumption goods as well as specialised goods and services mainly aimed at both average consumers and a professional public. However, it is noted that the applicant disagrees with this viewpoint.

The applicant attests that the average consumer of the goods and services concerned should be considered as solely the relevant professional public. As such the applicant is of the opinion that a professional consumer will pay a higher degree of attention to his purchase as well as having a higher level of technical expertise. Thus, the applicant appears to be suggesting that as the relevant public would have a heightened level of awareness they would see the sign as a badge of sole trade origin and not as a descriptive/non-distinctive term in relation to the goods concerned. Regretfully, the Office cannot agree with this viewpoint.

There is no evidence to suggest that the relevant consumer in the area of the goods and services claimed would be particularly trade mark ‘educated’ or savvy and would instantly perceive the sign as a trade mark in relation to the contested goods and services rather than a descriptive message in relation to the kind and characteristics of the goods and services concerned.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional/specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

The Office therefore remains of the opinion that, contrary to what the applicant says, the term does indeed convey obvious and direct information regarding the kind and characteristics of the goods and services in question.

Furthermore, the Office maintains that in terms of the goods and services claimed the words GISmapp would merely be perceived in a descriptive sense. As such, the words would not be seen as a trade mark, nor would the relevant consumer perceive the words as a badge of sole trade origin.

Additionally, the Office remains of the opinion that the term ‘GIS’ is totally descriptive in relation to the goods and services claimed. As stated in previous correspondence, research shows that ‘GIS’ is a geographic(al) information system used for storing, editing, and displaying geographical information on computers (Collins English Dictionary); and the term ‘MAP’ is a diagrammatic representation of the earth's surface or part of it, showing the geographical distributions, positions, etc., of natural or artificial features such as roads, towns, relief, rainfall, etc.; a map like drawing of anything (Collins English Dictionary). Furthermore, as previously stated, due to its near identical spelling and identical pronunciation (insofar as the English language is concerned) the term ‘Mapp’ contained in the mark will be understood by the relevant consumer as the word ‘Map’. Moreover, the applicant is reminded that an Internet search has revealed that ‘GIS’ (Geographic Information System) is used in the relevant market to, amongst other things, analyse map data (http://education.nationalgeographic.co.uk/encyclopedia/geographicinformation- system-gis/).

Therefore, taking into account the totally descriptive nature of ‘GIS’ combined with ‘mapp’ in respect of the goods and services claimed the question of distinctiveness hinges on whether the additional features present in the mark are sufficiently distinctive in relation to the goods and services claimed in order to render the mark distinctive as a whole.

The applicant submits that the mark, as a whole, surpasses the level of distinctiveness required for registration, such that any descriptive capacities are overwhelmed by its qualities as an indicator of trade origin. The applicant points out that the blue colouring of the lettering and the red iconography present in the mark form a distinctive contrast, adding that such a contrast would not present in the normal use of the words GIS and MAP and is obvious to the average consumer on first inspection. The applicant also points out that there is an omission of a space between GIS and MAPP adding that a descriptive user of these verbal elements would never eliminate this spacing. Furthermore, the applicant points out that the mark’s highly distinctive iconography, being a stylised dot above the ‘I’ is visually striking and unusual. Additionally, the applicant submits that the unusual combination of lower case and upper case lettering which breaks the recognised format, such that the first half of the mark is not seen as the acronym GIS, but merely alludes to the acronym GIS. Finally, the double ‘PP’ of map negates the mark’s descriptive qualities, on the basis that not only is this alteration highly noticeable, ‘map’ is a simple word that the average consumer would not misspell and also it also has a significant visual impact as a double ‘PP’ at the end of a word is grammatically highly unusual.

Whilst in is noted that the mark applied for contains certain figurative elements that confer upon it a degree of stylisation, the Office remains of the opinion that these elements are so minimal in nature that they do not endow the trade mark applied for as a whole with any distinctive character. The Office maintains that those elements mentioned by the applicant do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C-37/03 P, ‘BioID’, paragraph 74).

The applicant has submitted a very analytical breakdown of the individual elements present in the mark, however the Office is of the opinion that the relevant consumer is unlikely to over-analyse the trade mark in such a way. Furthermore, the impact of the figurative colour elements referred to by the applicant for the relevant public is limited.

This is because the figurative elements are likely to play a purely decorative role within the mark and will be perceived in this way by the relevant public. It should also be noted that where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name rather than by describing the figurative element of the trade mark.

Furthermore, cartographical icons such as the one present in the mark, namely is known as a map marker / map pin, and such icons are now commonly used as navigational indicators, in relation to goods and services such as those claimed in this application in order to inform the user where they are on a given map or location. Therefore, in terms of the words contained in the mark in conjunction with the goods and services claimed this element will not convey any trade mark significance but merely reinforces the descriptive message present in the mark.

The applicant further submits that as there is no spacing between GIS and mapp suggesting that this also adds distinctiveness to the mark on the basis that in the known term ‘GIS map’ the space would never be eliminated. However, the Office does not agree that this presentation adds any distinctiveness to the mark on the basis that in this instance the conjoining of the two words does not imbue the mark with distinctiveness as it fails to sufficiently disguise the obvious meaning conveyed by the mark. Therefore, even though the two words have been conjoined the message in the mark remains clear as the mark can only be pronounced and interpreted one way, namely ‘GIS mapp’. As a result, when the mark is used in conjunction with the objectionable goods and services the mark would be viewed in a purely descriptive sense. Therefore, the mark conveys obvious and direct information regarding the kind and characteristics of the goods and services in question.

Consequently, the Office remains of the opinion that the relevant consumer will immediately and without further thought understand that the trade mark conveys obvious and direct information regarding the kind and characteristics of the goods and services. As such due to the reasons set out above, and pursuant to Article 7(1)(b) and (c), and 7(2) EUTMR, the application for the European Union Trade Mark is hereby rejected for all the contested goods and services, namely:

Class 9 Scientific, nautical, surveying, measuring, signalling apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; data processing equipment, computers; computer software; electronic databases; data processing software; data collection apparatus; data processing equipment; data processing software for the assessment of asset data: computer software for use in assessing environmental risk; electronic databases; data processing software; data collection apparatus; data processing apparatus; application software; software for tablet computers; software for mobile phones; satellite imagery photo-interpretation software; computer software for use in remote meter monitoring; computer digital maps, software for web-based mapping applications.

Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; installation and repair of computer software; computer consultancy services; software consultancy services; web-based mapping services; environmental research, reports, information, advice and consultancy services in relation to environmental risks, environmental status; environmental surveys; installation, maintenance and repair of computer software; software as a service [SaaS] for use in assessing environmental risk; software as a service [SaaS] for data processing and database management.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60 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 800 has been paid.

Sam CONGREVE