Refusal of application for a European Union trade mark

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

Alicante, 02/05/2016

D YOUNG & CO LLP

120 Holborn

London EC1N 2DY

REINO UNIDO

Application No:	014872709
Your reference:	jbp123xyz
Trade mark:	INTELLIGENTHELP
Mark type:	Word mark
Applicant:	Drake International Inc. 320 Bay Street, Suite 1400 Toronto, Ontario M5H 4A6 CANADÁ

The Office raised an objection on 16/12/2015 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.

The applicant submitted its observations on 16/02/2016, which may be summarised as follows:

1. There is no clear and direct link between the sign and the services for which registration is sought.

2. The applicant has registered the application in various countries.

3. The examiner has erred by not fully assessing the mark against all of the individual services for which registration is sought.

4. The examiner has erred by not considering the trade mark as a whole.

5. The application is not wholly devoid of distinctive character.

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. Regarding the descriptive character of the sign

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.

The application in question seeks registration for the sign ‘INTELLIGENTHELP’.

Since the trade mark at issue is made up of several components (a compound mark), 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).

The adjective ‘INTELLIGENT’ means ‘having or indicating intelligence; having high intelligence; clever; guided by reason; rational’ (information extracted from Collins Dictionaries on 19/04/2016 at http://www.collinsdictionary.com/dictionary/english/intelligent );

and the substantive ‘HELP’ is defined as ‘the act of helping, or being helped, or a person or thing that helps’ (information extracted from Collins Dictionaries on 19/04/2016 at http://www.collinsdictionary.com/dictionary/english/help ).

The whole combination also appears to be a meaningful expression, namely clever, intelligent, well-reasoned help, and would be perceived in this sense by the relevant public.

In its statement submitted on 16/02/2016, the applicant criticised the examiner for not fully assessing the mark against all of the individual services for which registration is sought and stated that the word ‘help’, meaning ‘assistance to others’, could not be objected to automatically for all services, as services as such are a kind of assistance.

The Office cannot see why this should not be possible. There are words, in general laudatory expressions, that are objectionable for all kinds of goods and services. Furthermore, a trade mark always has to be assessed as a whole. The word ‘help’, in combination with a distinctive word or graphic element, may be perfectly acceptable. In the present case, however, the combination of ‘intelligent’ and ‘help’ produces a laudatory, descriptive whole. Not only is assistance offered, but it is intelligent assistance.

Specifically, the applicant referred to ‘Human resources services, namely skills testing and assessment services, employee engagement and exit interviews, personality testing, performance management consulting services and recruitment services, namely the selection and provision of temporary and permanent employees to businesses of all kinds, assessing employee productivity and profitability, all of the aforementioned provided via an online platform’.

Human resources services as such are generally considered assistance services. The website ‘Entrepreneur’ defines them as follows: ‘The department or support systems responsible for personnel sourcing and hiring, applicant tracking, skills development and tracking, benefits administration and compliance with associated government regulations. A human resources department is a critical component of employee well-being in any business, no matter how small. HR responsibilities include payroll, benefits, hiring, firing, and keeping up to date with state and federal tax laws’ (information extracted from Entrepreneur on 22/04/2016 at https://www.entrepreneur.com/encyclopedia/human-resources ).

A company contracting skills testing and assessment services called ‘INTELLIGENTHELP’ would immediately expect to receive valuable help through these services, for example by recruiting the right person. Recruitment services are often outsourced and carried out for a third party. Recruitment services are a considerable help to the contracting companies, as they do not have to carry out recruitment procedures themselves, which can be lengthy and time-consuming. If these services are carried out in an intelligent manner, that will be even better for and even more appreciated by the contracting companies.

The service ‘providing information via a website’ could relate to intelligent, helpful information, whereas ‘providing a human resources helpline for organisations that do not have a human resources department’ or ‘human resources management’ are clearly services offering help and assistance. ‘Providing training’ is also an assistance service, because all training is of help to those who attend it: to be better trained, to understand a problem better or to improve skills in a specific area.

The link between the expression ‘INTELLIGENTHELP’ and the services for which registration is sought, which are all assistance services, is in our opinion clear and direct.

The Office agrees that the sign ‘INTELLIGENTHELP’ describes not the services as such but characteristics of them, namely that they offer intelligent, clever assistance.

2. Lack of distinctiveness

Furthermore, the applicant criticised the examiner’s approach of ‘only considering the individual meaning of each word and not considering the mark as a whole’. On the other hand, it did not give any explanation of how the ‘mark as a whole’ should be considered.

How should the mark ‘INTELLIGENTHELP’ be perceived if not with its literal meaning of intelligent, well-reasoned help? What originality in the sign could make it distinctive? How could consumers interpret it? No arguments in these respects were made in the applicant’s statement.

The expression ‘INTELLIGENTHELP’ is a simple combination of an adjective and a substantive. The structure of this expression does not diverge from the rules of English grammar but rather complies with them. There is nothing unusual about it, apart from the missing space between ‘INTELLIGENT’ and ‘HELP’. However, this does not alter either the meaning or the visual impact of the sign. Therefore, the relevant consumer will not perceive it as unusual but rather as a meaningful expression: intelligent, well-reasoned help.

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 Board of Appeal decisions the applicant mentioned are, of course, to be taken into account, but cannot be applied to the present application. Expressions such as ‘Defining tomorrow, today’ or ‘Impossible becomes possible’ have, without any doubt, a somewhat vague meaning and could be interpreted in different ways. There is room for analysis and the relevant public may not perceive a clear and direct message in the mark.

In the present case, however, the expression is nothing more than the sum of its parts. The meaning of ‘INTELLIGENTHELP’ is obvious and clear. There is no play on words, no additional element of conceptual intrigue or surprise or any particular originality that could provide the sign with the required minimum distinctive character.

3. Previous registrations

As regards the national decisions referred to by the applicant, according to case law the following applies: the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (see judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 47).

Furthermore, the former registrations of the trade mark ‘INTELLIGENTHELP’ refer to countries outside the European Union, such as New Zealand, Australia, Canada, Hong Kong and the USA, which may have practices and trade mark regulations different from those of the EU.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 14 872 709 – INTELLIGENTHELP – is hereby rejected for the following services:

Class 35 Human resources services, namely skills testing and assessment services, employee engagement and exit interviews, personality testing, performance management consulting services and recruitment services, namely the selection and provision of temporary and permanent employees to businesses of all kinds, assessing employee productivity and profitability, all of the aforementioned provided via an online platform; providing information via a website in the field of human resources and recruitment, namely skills testing and assessment services, employee engagement and exit interviews, personality testing; performance management consulting services and recruitment services, namely the selection and provision of temporary and permanent employees to businesses of all kinds, assessing employee productivity and profitability; providing a human resources helpline for organizations that do not have a human resources department; human resources management; human resources outsourcing services.

Class 41 Providing training and development programs in the fields of soft skills, leadership and management and the training of temporary and permanent employees via an online platform; providing information via a website in the field of training and development programs in the fields of soft skills, leadership and management and the training of temporary and permanent employees; providing employee training content, via an online platform, to be administered online; providing online courses in the fields of health and safety, computer training, workplace compliance, financial management and business skills.

The application is accepted for the remaining goods.

According to Article 59 EUTMR, you have a right to appeal against 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.

Patricia MOTZER