Refusal of application for a European Union trade mark

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

Alicante, 31/05/2016

Hucke Hucke Schubert

An der Fuchskaul 14

50259 Pulheim

Germany

Application No:	014678403
Your reference:	00195-CERTIFIED_IN_DATA
Trade mark:	Certified in Data Protection (CDP)
Mark type:	Word mark
Applicant:	Identity Management Institute 20555 Devonshire Street # 366 Chatsworth California 91311 United States (of America)

With the notification dated 05/11/2015 (attached) the applicant was informed, that the sign applied for can not be registered under Article 7(1)(b), (c) and 7(2) of the former Community trade mark regulation.

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

 

On 04/01/2016 the applicant submitted its observations which can be summarized as follows:

 

1. The applicant submits that the mark does not give rise to the objections under Article 7(1)(b) and (c).

2. The relevant public for the goods and services are likely to be average consumers. Given that the products of the applicant are high priced and/or require special knowledge, the consumer will pay particular attention to quality of the product and product details.

3. The expression ‘CERTIFIED IN DATA PROTECTION (CDP)’ is a fanciful neologism.

4. The overall mark is less meaningful than it might suggest. The term ‘DATA PROTECTION’ term is very broad. The relevant consumer will not be able to immediately identify the exact subject matter of the goods and services. The wording ‘CERTIFIED IN’ removes the mark from being descriptive of subject matter.

5. The mark ‘CERTIFIED IN DATA PROTECTION (CDP)’ comports with the criteria laid down in the relevant case law.

6. The Office has registered similar marks.

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

For a mark to possess distinctive character it must serve to identify the product or service in respect of which registration is applied for as originating from a particular undertaking, and thus enable the consumer or end user, without any possibility of confusion, to distinguish that product from products of other undertakings (judgment of 18/06/2003, C-299/99, Philips, and of 29/09/98, C-39/97, Canon).

Article 7(1)(b) EUTMR 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)(c) EUTMR are 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.

The refusal of a trade mark as being descriptive is already justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (e.g. judgment T‑106/00, ‘Streamserve’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

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 T-79/00 of 27/02/2002, ‘LITE’).

Pursuant to Article 7(1)(b) EUTMR, EU trade marks which are devoid of any distinctive character, i.e. trade marks that are unable to distinguish the goods or services specifically applied for by one undertaking from those of other undertakings, shall not be registered.

A mark may be devoid of any distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (e.g. judgment of 12/02/2004, C-363/99, ‘Postkantoor’).

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

 

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods in respect of which registration is sought (e.g. judgment 20/03/2002, T-356/00, ‘Carcard’). A sign’s descriptiveness can only be assessed by reference to the goods or services concerned and to the way in which it is understood by a specific intended public (quoted judgment).

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. ‘SAT.2’).

 

As regards trade marks composed of words, such as the sign here at issue, descriptiveness must be determined not only in relation to each word taken separately, but also in relation to the whole which they form (e.g. judgment of 12/02/2004, C-265/00, ‘Biomild’).

In the case of a trade mark consisting of a number of elements, what matters is the relevant meaning of the trade mark as understood on the basis of all of its constituent elements as a whole – and not just on the basis of one or more elements. As a general rule, the mere combination of descriptive terms remains descriptive unless, because of the unusual nature of the combination, the term in question word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the overall term is more than the sum of its parts (‘Biomild’). Merely bringing a number of descriptive elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark that is descriptive as a whole (‘Biomild’).

Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary whether or not the words are used in their descriptive sense in trade. It is sufficient if it is capable of being used as such.

The absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

The issue to be addressed is, whether the mark sought ‘CERTIFIED IN DATA PROTECTION (CDP)’ is inherently distinctive as a trade mark for the contested goods and services designated by the 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) EUTMR, 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.

When assessing the distinctive character of the mark applied for, account has to be taken of the presumed perception by the public targeted by the goods and services claimed. Because of the language used, this is the English‑speaking public, in other words primarily the public in the United Kingdom, Ireland and Malta (see Article 7(2) EUTMR). As the word mark consists of words of basic English vocabulary, the word sequence will undoubtedly also be understood by the relevant public in a number of other Member States that need not be defined in any greater detail.

The goods and services of the application are:

9 CD and DVD study materials in the field of international security standards and laws in personal and business information protection.

16 Printed matter, newsletters, magazines and study material, in the field of international security standards and laws in personal and business information protection.

41 Educational services, namely, conducting classes, seminars, conferences, web based seminars, and self-study programs in the field of international security standards and laws in personal and business information protection and distributing course materials in connection therewith.

The applicant submits that the applied-for mark ‘CERTIFIED IN DATA PROTECTION (CDP)’ possesses the requisite level of distinctiveness necessary for its registration. The words ‘CERTIFIED IN’ remove the mark from simply being a descriptor of subject matter. The goods and services might be capable of relating to the field of data protection, they cannot themselves be ‘certified in data protection’. In defence of the mark, the applicant relies largely on established trade mark principles, the Offices’ ‘Guidelines’¹ and on the case-law, in particular the judgments in the cases ‘LIVE RICHLY’ (T-320/03), ‘EUROCOOL’ (T-34/00) and ‘1000’ (C-51/10 P). In further support of the mark, the applicant refers to other and registered ‘Certified’-marks. In comparison, the Office’s attention is drawn, in particular, to the mark ‘CERTIFIED IN SUPPLY MANAGEMENT’ (No. 010 669 877) of which details are provided.

The Office respectfully disagrees with the applicant’s submissions and arguments. They are not convincing. The applicant does not provide any credible explanation why the words ‘CERTIFIED IN DATA PROTECTION (CDP)’ together would be held in mind as trade mark material when seen with the goods and services. Bearing in mind their meaning, it is highly unlikely that the potential customer will see the sign ‘CERTIFIED IN DATA PROTECTION (CDP)’ as forming a trade mark denoting a particular commercial source of the goods and services at issue.

A preliminary observation is that there is nothing unusual about the words ‘CERTIFIED IN DATA PROTECTION (CDP)’. The meaning of the words is not in dispute and the sign is formed in full accordance with the grammatical rules of the English language. Bearing this in mind, the assessment of the mark is not limited to those Member States in which English is the official language, i.e. United Kingdom, Ireland and Malta (Article 7(2) EUTMR).

A mark must have some distinguishing feature in order to be capable of functioning as a trade mark that is, being able to distinguish the goods and services of one undertaking from those of another. The Office is unable to detect any such distinguishing feature in the mark applied for. The mark clearly conveys the message to the relevant English speaking public that the goods and services in question are such which one would (normally) expect to be provided by someone (a person) or a body (an organization) which is ‘Certified in Data Protection’ or for someone/a body who aims at acquiring the qualification ‘Certified in Data Protection’. The ‘(CDP)’ element does not add any distinctive character to the mark: ‘CDP’ will immediately be recognised as an abbreviation of ‘CERTIFIED IN DATA PROTECTION’ and it is a perfectly common approach to place the acronym of a title in parentheses after the full title. The Office finds it most likely that the relevant public is familiar with this approach. This would apply to the professional as well as the private consumer.

In the case at hand, the applicant’s sign covers goods and services which are aimed, in principal, at (potential) professionals/specialists “in the field of international security standards and laws in personal and business information protection”, but they can also be aimed at average consumers with an interest in international security standards and laws in personal and business information protection.

Clearly the conjoined wording ‘CERTIFIED IN DATA PROTECTION (CDP)’ is not unusual and will be immediately understood by relevant consumers as meaning what the components separately suggest (e.g. decision of 06/09/2012, R 2471/2011-1, ‘Chartered Global Management Accountant’).

Given these considerations, it must be recalled that a word mark which consists of a combination of elements, each of which is descriptive of characteristics of the goods or services, in respect of which registration is sought itself remains descriptive of those characteristics even if the combination creates a neologism. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (see judgment of 12/02/2004, C-265/00, ‘Biomild’, paras 39 to 43). Moreover, the word combination as a whole may have a meaning on its own that renders it descriptive.

The term ‘DATA PROTECTION’ is clear enough. Data protection is the process of safeguarding important information from corruption and/or loss. It includes file and record locking (see thereto for example: https://www.gov.uk/data-protection/the-data-protection-act ). Everyone responsible for using data has to follow strict rules called ‘data protection principles’. They must make sure the information is

• used fairly and lawfully.

• used for limited, specifically stated purposes.

• used in a way that is adequate, relevant and not excessive.

• accurate.

• kept for no longer than is absolutely necessary.

• handled according to people's data protection rights.

• kept safe and secure.

Thus, the word part ‘DATA PROTECTION’ is meaningful considering the scope (goods and services) of the application, i.e. international security standards and laws in personal and business information protection.

The Office does not share the applicant’s argument that the word part ‘CERTIFIED IN’ is capable of attracting the attention of the relevant public since the term ‘CERTIFIED’ is commonly and widely used to refer to a person or organization who is member of a particular professional body since his/her/its professional profile and background fulfils certain qualifications and/or standards established by such a body. Consequently, this adjective is not distinctive or particularly memorable or eye-catching at all, but is understood as indicating a professional affiliation.

As a result, taken as a whole, the applicant’s sign immediately informs the target public - whether specialised “in the field of international security standards and laws in personal and business information protection” or simply the average consumer of any of the claimed services - that the services concern the field of data protection. The words ‘CERTIFIED IN DATA PROTECTION’ refer to a professional credential guaranteeing that the services at stake are rendered by a knowledgeable person or organization in the field of data protection who is accredited by a certain professional association.

The acronym ‘CDP’ stands for “Continuous Data Protection (backup technology)” or ”Certified (in) Data Protection”, either way it is descriptive.

The applicant’s arguments that the term as a whole cannot designate the goods and services must be rejected for various reasons. Firstly, this does not alter the fact that each of the words on its own remains descriptive. Secondly, Article 7(1)(c) EUTMR covers any characteristics of the services, not only the nature, quality or intended purpose, provided that those characteristics are desirable or otherwise relevant for the target public. Article 7(1)(c) EUTMR does not require that those characteristics are commercially essential, they may be merely ancillary (see judgment ‘Postkantoor’, par. 102).

Thirdly, the indication of a particular professional qualification is in itself a characteristic which is covered by the field of application of Article 7(1)(c) EUTMR. The Court has held that the relationship between an undertaking and its client qualifies as a characteristic of the services so provided (see judgment of 08/07/2004, T-270/02, ‘Bestpartner’, par. 23 and 24). For example, the Boards of Appeal found the word combinations ‘CERTIFIED PUBLIC ACCOUNTANT’ (decision of 27/09/2012, R 71/2012-1), ‘CERTIFIED IT PROFESSIONAL’ (decision of 22/06/2009, R 236/2009-2) and ‘CERTIFIED SENIOR ADVISOR (CSA)’ (decision of 14/09/2004, R 3279/2004-2) unregistrable.

The fact that services are rendered by a person/organization certified in data protection suggests something about the objective characteristics of the services in Class 41, namely teaching in the field of international security standards and laws in personal and business information protection. The same applies to the aspect of describing the target group, in the sense that the services are apt and suitable for that target group. For example, for promoting the interests of certified data protection managers/officers, it describes its subject-matter, namely that it promotes the interests of the affiliated certified data protection managers/officers.

In view of the above, the term ‘DATA PROTECTION’ constitutes the subject matter of the services and the addition of the terms ‘CERTIFIED IN’ does not bestow on the conjoined expression ‘CERTIFIED IN DATA PROTECTION (CDP)’ the minimum of distinctiveness required to distinguish the commercial origin of the services for which protection is sought.

The message conveyed by the mark is, without further thought, intelligible to the relevant public who will not see it as an indicator of origin but merely as a common and general statement to the effect that the services in demand (educational services, namely, conducting classes, seminars, conferences, web based seminars, and self-study programs in the field of international security standards and laws in personal and business information protection and distributing course materials in connection therewith) are provided by someone/an organization who has obtained the title ‘CERTIFIED IN DATA PROTECTION (CDP)’ or for someone/an organization who aims at obtaining that qualification/title [decision of 14/09/2004, R 327/2004-2, ‘CERTIFIED SENIOR ADVISOR (CSA)’].

Of course the goods claimed in Classes 9 and 16 are not themselves ‘certified in data protection’. However, in relation to the goods, consisting of “CD and DVD study materials, printed matter, newsletters, magazines and study material”, all of which relate to “international security standards and laws in personal and business information protection”, the mark applied for provides a clear indication that those goods are for use by data protection professionals in performing their duties or are to be used in the furtherance of the data protection qualification/title ‘CERTIFIED IN DATA PROTECTION’.

Thus, the sign ‘CERTIFIED IN DATA PROTECTION (CDP)’ only informs the public immediately about the subject matter and intended purpose of the goods and services covered by the application. The trade mark applied for can therefore be regarded as designating, in trade, the intended purpose or other characteristic (subject matter) within the meaning of Article 7(1)(c) EUTMR. As the wording of this provision - Art. 7(1)(c) - indicates, it is enough that one descriptive meaning is possible and can be perceived by the relevant public (e.g. judgment of 23/10/2003, C-191/01 P, ‘Doublemint’). In the Office’s view, those conditions are met in the present case.

The word mark ‘CERTIFIED IN DATA PROTECTION (CDP)’ is therefore unable to distinguish the goods and services objected to in terms of their origin. A word mark which is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

With regard to the 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 EUTMR, as interpreted by the EU 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).

Furthermore, the mere fact that the marks referred to contain the word ‘CERTIFIED’ does not make them (evidently) similar with the sign at hand nor could it be concluded that the application mark would be distinctive.

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 EUTMR, as interpreted by EU judicature. It is clear from the case‑law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality (e.g. judgments of 27/02/2002, T‑106/00, 'Streamserve'; of 08/07/2004, T‑289/02, ‘Telepharmacy Solutions’; of 02/05/2012, T- 435/11, ‘UniversalPHOLED’).

Taking into account all the aforementioned, the applicant cannot rely on the registration, as a European (Union) trade mark, of the words ‘CERTIFIED IN SUPPLY MANAGEMENT’ (No 010 669 877), CERTIFIED INFORMATION SECURITY MANAGER’ (No. 002 787 489), ‘CERTIFIED WEALTH MANAGER’ (No. 002 152 577), ‘CERTIFIED SCRUM DEVELOPER’ (No. 008 996 191) and ‘CERTIFIED ENERGY MANAGER’ (No. 010 514 421), for the same or similar goods and services.

It derives from all the foregoing that the applicant has not succeeded in convincing the Office that ‘CERTIFIED IN DATA PROTECTION (CDP)’ will be perceived by the consumers as pointing to the commercial origin of the goods and services at issue.

For the reasons set out above, and in the previous notification, it must be concluded that the mark sought ‘CERTIFIED IN DATA PROTECTION (CDP)’ is not eligible for registration pursuant to Article 7(1)(b) and (c) EUTMR as it does not create the overall impression of a distinct identifiable entity. Given the fact that the mark pertains to the vocabulary of the English language, the grounds of refusal of refusal laid down in article 7(1)(c) and (b) EUTMR are appropriate at least for countries of the European Union where English is the official language (Article 7(2)).

The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. The applicant has not claimed that its mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

Consequently, the application is hereby rejected pursuant to Article 7(1)(b), (c) and 7(2) EUTMR.

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

Peter SCHYDLOWSKI