Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 11/03/2016

STOBBS

Endurance House, Vision Park, Chivers Way

Cambridge CB24 9ZR

REINO UNIDO

Application No:	014815203
Your reference:	2254/10049/lvg/fn1
Trade mark:	INTERLEDGER PROTOCOL
Mark type:	Word mark
Applicant:	Ripple Labs, Inc., d/b/a Ripple 268 Bush Street, #2724 San Francisco California 94104 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 11/11/2016 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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.

The applicant submitted its observations and evidence in response on 11/03/2016, which may be summarised as follows:

Article 7(1)(b) and(c)

1. The Applicant submits that the word “INTERLEDGER” is a completely new, coined word, which is used in a brand sense and which has the greatest degree of distinctive character. It has a greater degree of distinctive character due to its position. The mark will be perceived as a whole and as a unique creation which is not descriptive. There is no direct or specific relationship between the sign´s meaning and the specification as required by case-law. The Applicant has not applied for services related to accounting. The consumer here will display a higher level of attention to the services that have been applied for, given that they are used in connection with finance. A number of words begin with inter such as interracial, interview and interact. These words don´t tell the consumer that they relate to something that is international. The average consumer of finance, telecommunication and computer hardware will not ascribe a descriptive meaning to “protocol”. It is not a creative word component, nor is it required to be by case-law. The mark is an unusual juxtaposition of terms which is more than the sum of its parts.

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 giving due consideration to the applicant’s arguments, the Office has decided to waive the objection in respect of the following goods, and otherwise maintain the objection:

Class 9 fire-extinguishing apparatus

Under Article 7(1)(c) CTMR, ‘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.

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

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 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

The Office points out that for a trade mark to be refused registration under Article 7(1)(c) CTMR,

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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 … 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) CTMR] 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. (see judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102.)

The meanings of the words “INTERLEDGER” and “PROTOCOL” are clear and make sense when viewed as a whole, particularly from the point of view of a consumer of financial services who is displaying a higher level of attention. As is clear from the wording of the Regulation as contoured by the jurisprudence cited above, the fact that any of the descriptive components have alternative meanings is irrelevant. An entirely sensible meaning may be inferred when the mark is perceived as a whole. The descriptive meaning inferred by the Office, based on the dictionary definitions supplied, is capable of being immediately and directly perceived by the relevant consumer when assessed against the goods and services applied for, as required by case-law.

The office does not accept that the meaning of the word “ledger” is inapplicable to financial services. None of the components are creative or allusive when viewed either separately or as a whole. The mark is the sum of its parts.

The goods in Class 9 are all recorded goods or recording apparatus, software, or apparatus and related instruments for processing same, together with hardware including financial hardware and ancillary hardware and software, parts and fittings all of which come under the general heading of Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;

It lies to the Office to assess whether those terms in combination may be directly linked to the Applicant´s goods, and by corollary, the necessarily ancillary services, it being settled case-law (JP Divver Holding Company Ltd v OHIM (Equipment for life), T-642/14, ECLI:EU:T:2015:753, paras 32-34, for example), that when a sign is descriptive of a main product, it is also descriptive or non-distinctive in respect of complementary services.

It is clear that the recorded content of the recorded goods relates directly to a ledger protocol which is either international, or which operates between ledgers( e.g in the sense of being peer-to-peer). The suffix “inter-“, as supplied in the letter of notification, makes perfect sense no matter which of the applicable meanings pertain.

What matters is that the activity may be the subject of the recorded goods and the software together with the apparatus which is necessary to create that content. The descriptive sign permits the consumer of all of these goods to immediately perceive the subject matter, nature and intended purpose of the products as being used in the service of e.g payments which are governed by a particular code or procedure. The specification clarifies the exact nature of what is being described by the sign as being Computer programs and computer software for electronically trading traditional currency and virtual currency; computer software, namely, electronic financial platform that accommodates payment and financial transactions; computer hardware for transmitting virtual currency and traditional currency between computers via a peer-to-peer computer network; downloadable electronic data files featuring transferrable electronic cash equivalent units having a specified cash value; parts and fittings for all the aforesaid goods.

The Office disagrees with the applicant’s claim that there is no direct link between the hybrid term and the objected goods or the financial and monetary services which are complementary to them and which may be grouped together with them. The services in Class 38 are descriptive by extension as is clear, again, from the explicit wording of the

specification:

Peer-to-peer network computer services, namely, electronic transmission

of financial data via computer terminals and electronic devices; transmission of

financial information by electronic communications networks; information, advisory

and consultancy services relating to the aforesaid, all of which come under the

heading Telecommunications; Broadcasting; Computer network communication

services; Transferring information and data via computer networks and the Internet;

Transmission of information by electronic communications networks;

As previously stated in relation to one of the descriptive permutations of the sign:

“Taken as a whole, the words ´INTERLEDGER PROTOCOL’ immediately inform

consumers without further reflection that the goods and services applied for are

financial and computer goods and services which are used in the service of

of international accounts (e.g payments) which are governed by a particular code or

procedure.”

Where a product is descriptive, a sign is also descriptive of the services which directly support and facilitate that product, or which relate to the provision of those services directly. Here, the financial goods and services together with the transmission or communication of those services all share a purpose from a market perspective. They are interconnected. There is no clear blue water between them, as they are all based on the same activity, or content.

Therefore, the mark conveys obvious and direct information regarding the nature and content (and intended purpose) of the goods and services in question, from the point of view of the relevant consumer. It is not in the public interest to give protection to words that could be perceived as characteristics of specified goods and their complementary services.

All assessments based on absolute grounds must be stringent, full, current and in context. Each mark must be assessed as a whole, on its merits, in relation to the pertinent specification and the perception of the target public.

The Office does not accept that the relevant consumer will not see the mark as descriptive, or will not see the concrete and direct relationship between the conjunction and the specification applied for.

The descriptiveness of the word elements of the mark have been considered both individually and as a whole. The mark will be perceived as a grammatically correct and meaningful expression which informs consumers that the goods and services applied for all feature or are subject to an inter-ledger protocol. The mark as a whole conveys obvious and direct information regarding characteristics of the goods and their auxiliary services. The mark is a basic word combination, entirely obvious and meaningful and as such cannot in any way be shown to be memorable.

According to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods/services leads to the conclusion that the sign is devoid of distinctive character (judgment of 19/09/2002, C 104/00 P, ‘DKV’, paragraph 21). This is clearly applicable to the present case.

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) [CTMR], 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.)

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 1 4815203 is hereby rejected for all the goods and services except:

Class 9 fire-extinguishing apparatus

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.

Keeva DOHERTY