CANCELLATION No 26 985 C (INVALIDITY)

Bumble Holding Limited, The Broadgate Tower Third Floor, 20 Primrose Street, London, EC2A 2RS, United Kingdom (applicant), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, London WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

Match Group, LLC., P.O. Box 25458, Dallas, Texas 75225, United States of America (EUTM proprietor), represented by Barker Brettell Sweden AB, Östermalmsgatan 87B, 114 59 Stockholm, Sweden (professional representative).

On 04/08/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 14 900 310 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 14 900 310 SWIPE (word mark) (the EUTM). The request is directed against all the goods and services covered by the EUTM, namely:

Class 9: Computer application software for mobile devices, namely, software for social introduction and dating services.

Class 45: Dating services; internet based social networking, introduction and dating services.

The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b), (c) and (d) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The case for the applicant

The applicant argues that the proprietor should be prevented from creating a monopoly over the use of a common word which is widely used to describe a physical action or gesture, particularly in relation to smartphone usage. The term has been in use for a long time and certainly before its registration by the proprietor. Such a monopoly would run counter to the public interest that the sign should not be unduly restricted for other operators offering the same type of goods or services.

Article 7(1)(c) EUTMR

Designers and manufacturers of touchscreen devices such as mobile telephones and tablet computers have long used the term ‘SWIPE’ to refer to the common touchscreen gesture of moving the thumb or finger across a touchscreen to activate a function. Exhibit 3 demonstrates reference to ‘swiping’ in connection with touchscreen technology as far back as 2006 while in 2007, Steve Jobs repeatedly used the term ‘swipe’ to refer to the touchscreen gesture, as can be seen from Exhibit 4.

Since the introduction of smartphones, the use of the term ‘swipe’ has increased so much that the use of the word to refer to the touchscreen is now prevalent. The applicant encloses evidence of this in Exhibits 5-7, which include instruction manuals from mobile telephone companies from 2008 and 2011. The descriptive use of the word ‘swipe’ by companies such as Samsung and Apple is particularly significant as the combined share of these companies in the EU smartphone market was approximately 55% in July 2018 (Exhibit 10).

‘Swiping’ is also used in connection with mobile gaming software, as demonstrated in Exhibits 11 and 12. It is also used in the computer hardware and software industries to refer to touchscreen gestures, as seen in Exhibits 13 and 14.

The applicant also attached as Exhibit 15 a patent application filed by the proprietor on 21/10/2013 in which it clearly and explicitly uses the term ‘swipe’ in a descriptive manner, as seen in the following excerpt:

The applicant also points out that the proprietor uses the term ‘swipe’ descriptively in a patent infringement complaint filed against the applicant in the Western District of Texas (attached as Exhibit 16).

In Exhibit 17, the applicant demonstrates that the proprietor itself uses the word descriptively in its own consumer targeted publications. On the iTunes page advertising the Tinder app, the proprietor says, in September 2014, ‘Swipe right to like or left to pass’.

It is clear that the EUTM designates a particular characteristic of the manner of use of the Class 9 goods and the Class 45 services.

Article 7(1)(b) EUTMR

The mark ‘SWIPE’ is not distinctive. According to the Oxford English Dictionary, ‘swipe’ means ‘to move (one’s finger) across a touchscreen in order to activate a function’ (definition attached as Exhibit 18). The word ‘SWIPE’ also has the same meaning in Dutch.

As Exhibit 20, the applicant attaches multiple examples of use of the word ‘SWIPE’ in the English speaking territories of the EU, in particular in Malta and Ireland, taken from third party publications. Exhibit 21 consists of examples of the use of ‘SWIPE’ in Dutch, again taken from the press and third party publications. Exhibits 22 and 23 consist of examples of use taken from publications in Belgium and Germany. Exhibits 24 and 25 contain further examples of use, many of which are taken from the Internet.

According to the applicant, all of this evidence proves that the mark ‘SWIPE’ is devoid of distinctive character.

Article 7(1)(d) EUTMR

‘SWIPE’ is a common word which is used generically by both the target public and in the trade. It is the most commonly used word to denote the action or gesture of swiping. It is neither fanciful nor invented.

As regards the territory to which the objection pertains, the applicant submits that the grounds for non-registrability apply across the European Union as a whole. A very large proportion of European consumers and professionals have knowledge of the English language, as well as English being the official language of the United Kingdom, Malta and Ireland. ‘SWIPE’ is an elementary word which is commonly used and especially in relation to the popular language associated with smartphone usage. Therefore, it will be widely understood by a significant proportion of European consumers.

In support of its observations, the applicant filed the following evidence:

• Exhibit 1: With Her Dating App, Women Are in Control ‐ New York Times, March 18 2017

• Exhibit 2. Sutori – The History of Tinder

• Exhibit 3. Synaptics and Pilotfish Collaborate to Develop Next Generation Mobile Phone Concept Press Release ‐ 21 August 2006

• Exhibit 4. The original iPhone announcement annotated: Steve Jobs' genius meets Genius (extract) ‐ 9 September 2015

• Exhibit 5. Samsung Behold User Manual – 2008

• Exhibit 6. Samsung Galaxy SII User Manual - 2011

• Exhibit 7. HTC Radar User Manual - 2011

• Exhibit 8. iPhone User Guide – iOS 12

• Exhibit 9. Samsung Galaxy User Manual - 2018

• Exhibit 10. Mobile Vendor Market Share in the EU – September 2012 and September 2018

• Exhibit 11. Fruit Ninja: Slice & Dice on the iPhone Wired ‐ 25 April 2010

• Exhibit 12. Amazon.com: Swipe This!: The Guide to Great Touchscreen Game Design – 11 June 2012

• Exhibit 13. Apple Human Interface Guidelines: Gestures – October 2018

• Exhibit 14. Abstract from Proceedings of the Human Factors and Ergonomics Society Annual Meeting – Computational Modeling of Finger Swipe Gestures on Touchscreen – 8 September 2016

• Exhibit 15. USPTO Patent No. 9733811 B2 in the name of Tinder, Inc ‐ 15 August 2017

• Exhibit 16. Match Group, LLC v Bumble Trading, Inc ‐ No. 6:18‐cv‐00080‐RP‐JCM ‐ First Amended Complaint – 30 April 2018

• Exhibit 17. Tinder description as shown on iTunes ‐ September 2014

• Exhibit 18. Oxford English Dictionary extracts

• Exhibit 19. References to Dutch sources for "swipen"

• Exhibit 20. Examples of third party descriptive use of "swipe" in Malta and Ireland

• Exhibit 21. Examples of third party descriptive use of "swipe" in the Netherlands

• Exhibit 22. Example of third party descriptive use of "swipe" in Belgium

• Exhibit 23. Examples of third party descriptive use of "swipe" in Germany

• Exhibit 24. Press articles showing third party descriptive use of "swipe" in various further EU Member States

• Exhibit 25. Examples of third party descriptive use online for "swipe" in German and Dutch languages.

In its second round of observations, the applicant reiterates many of its previous arguments. It also responds in detail to issues raised by the proprietor.

The applicant recalls that it is common ground that the ‘swiping functionality’ existed long before the relevant date in relation to smartphones, tablets and other devices. Where the goods "software for social introduction and dating services" and the provision of "dating services; internet based social networking, introduction and dating services" are so intrinsically linked with the functionality of swiping on a touchscreen, then the word to describe said functionality is also directly linked to the actual product and services provided. The proprietor's attempt to put up an artificial divider between the goods and services in the dating sector on the one hand and the 'swiping functionality' on the other is therefore simply not convincing.

The applicant refers to decisions of the Office refusing similar marks for similar goods and services to those at issue here. For example, the Office has refused the registration of ‘SWIPE AND SHARE’ for services in Class 38, ‘SWIPE ID’ for goods and services in Classes 9, 36 and 42, and ‘SWIPE PAY’ for goods and services in Classes 9, 14 and 36, a refusal which was upheld by the Boards of Appeal.

The applicant denies the proprietor’s claim that it did not prove that ‘SWIPE’ was objectionable at the relevant date and files additional evidence to prove this, which will be listed below.

The applicant goes on to criticise the evidence of acquired distinctiveness filed by the other party, saying that it is not possible to assess the proprietor’s market share in relation to the mark. There is no breakdown of data attributable to each Member State. Furthermore, the evidence clearly blurs the boundaries between the TINDER mark and the contested EUTM. It is not reasonable to claim that just because the ‘swiping functionality’ is embedded in TINDER, the user of the TINDER app will be aware that SWIPE is being used in a trade mark sense. Even though the TINDER trade mark may be well known among EU consumers, that does not automatically allow the conclusion that SWIPE enjoys the same level of recognition. Furthermore, the evidence filed mainly refers to the years 2015-2017.

The applicant files the following additional evidence in support of its claims:

• 1 Lexico Dictionaries, powered by Oxford English Dictionary: Definition of 'catch' in English

• 2.1 Mashable.com: The Touching History of Touchscreen Tech – 9 November 2012

• 2.2Google Patents: Apple Inc. US patent no. US8059101B2: Swipe gestures for touch screen keyboards

• 2.3 WIPO: Apple Inc. patent no. WO2009002787: Swipe gestures for touch screen keyboards

• 2.4 New Media Age: Digital Comics; Comic action! – 21 May 2009

• 2.5 Macworld.com: First Look: Apple Magic Mouse – 21 Oct 2009

• 2.6 The Times Educational Supplement: Promoting literacy comes to a screen near you – 22 January 2010

• 2.7 i-Pod Nano user guide – 15 September 2010

• 2.8 Atlantic Online: iPad Apps: Best App for Twitter – 2 February 2011

• 2.9 The Seattle Times: Lion brings iPad interface to Mac users of the future; PersonalTechnology – 23 July 2011

• 2.10 PC Magazine: Skype (for iPad) – 2 August 2011

• 2.11 Wikipedia: Proto.io

• 2.12 Mail Online: It's the App you've all been waiting for…Try it for FREE! – 21 December 2012

• 2.13 Motorola.com support : Talkback's "Explore By Touch" feature – 2012

• 2.14 Motorola Talkback: Talkback's "Explore By Touch" feature – 2012

• 2.15 The Guardian: Temple Run 2 – review (iPhone) – 17 January 2013

• 2.16 Google support: Use a screen reader with Google Calendar – April 2013

• 2.17 Snapguide: How to Install and Set-Up Mailbox for iPhone (with metadata) – April 2013

• 2.18 TheNextWeb.com: Room for one more? Swipes is a beautiful to-do list app for iPhone with tagging and scheduling – 1 July 2013

• 2.19 The Guardian: Guardian Android app update: new features and adverts – 2 July 2013

• 2.20 Dribbble.com: Education App by NeverBland – 2013

• 2.21 Vox.com: For Mobile Apps Like Tinder, Cards and Swipes Rule the Day – 14 March 2014

• 2.22 MailOnline: Forget fingers – this helmet lets you control gadgets with your TONGUE: Smartphone sensor detects gestures through the cheek – 28 April 2014

• 2.23 Mashable: LinkedIn's Mobile March Continues With New SlideShare App – 16 April 2014

• 2.24 Facebook.com: JSwipe

• 2.25 App Store: JSwipe

• 2.26 JSwipeApp.com via Wayback Machine (webarchive.org): – 5 June 2014

• 2.27 Wales Online: Snapchat 101: Want to join us but don't know how – we've got all you need to get started; WalesOnline snapchat: Step-by-step instructions on how to join us – 16 June 2014

• 2.28 International New York Times: Android aims for your wrist, but there's still a way to go before it's handy – 25 July 2014

• 2.29 App Store: BarkBuddy

• 2.30 Play Store: BarkBuddy

• 2.31 BarkBuddy.com

• 2.32 TechCrunch.com: Bark & Co Debuts Its First E-Commerce Site With Doggie Destination BarkShop – 5 years ago

• 2.33 Youtube.com (channel: appfinders): BarkBuddy: Dog Adoption App for iPhone & iPad – 23 June 2014

• 2.34 Harri.com: Introducing the Harri Mobile App – 24 July 2014

• 2.35 AppAnnie.com: Shapr

• 2.36 App Store: Shapr

• 2.37 Digital Trends: iOS 8 keyboards – September 2014

• 2.38 User Experience Stack Exchange Forum: Swipe left to delete or swipe right to delete – September 2014

• 2.39 She's Wanderful: Tripnary – November 2014

• 2.40 Lifehacker: Tripnary tracks your travel bucket list helps your decide – January 2015

• 2.41 Twitter: Tripnary – 13 May 2015

• 2.42 peHUB: Job app Switch raises $1.4 mln in seed – 10 December 2014

• 2.43 Pitchmate: Introducing Pitchmate the agency matchmaker – 3 December 2014

• 2.44 Spotify Community: iPhone Swipe right add to queue – January 2015

• 2.45 Microsoft Outlook: Deeper look Outlook iOS Android

• 2.46 TheVerge.com: Snapchat's new Discover feature puts news and entertainment a swipe away from your stories – 27 January 2015

• 2.47 App Store: Soul – Black Dating (SoulSwipe, Inc.)

• 2.48 Business Insider: There's a new Twitter feature that lets you swipe away pictures on your phone, and people are griping – 13 February 2015

• 2.49 2ndcrush.com via Wayback Machine (webarchive.org): - 11 March 2015

• 2.50 UrbanCrushApp.com via Wayback Machine (webarchive.org): - 12 March 2015

• 2.51 Excerpt from 'App Store: Urban Crush' development notes

• 2.52 The Mirror: Microsoft Lumia 535 review: The budget phone comes calling

• 2.53 Medium.com: Design Mobile Swiping That Enhances User Experience

• 2.54 TateChow.com: Work History

• 3.1 CNet.com: Five essential Instagram tips – 17 April 2012

• 3.2 App Annie: Instagram iOS development notes

• 4.1 Techerator.com: How to create Instagram-style photos without Instagram – 12 December 2012

• 4.2 App Annie: Twitter iOS development notes

• 5.1 TechCrunch.com: Facebook article – 2011

• 5.2 iOS Guides: Facebook for iPhone – June 2013

• 5.3 App Annie: Facebook iOS development notes

• 6.1 Engadget.com: Snapchat 5.0 for iOS brings a swipe-based interface, in-app profiles – 6 June 2013

• 6.2 App Annie: Snapchat iOS development notes

• 7.1 TheTechPanda.com: Introducing a New YouTube App for Your iPhone and iPod Touch – 12 September 2012

• 7.2 App Annie: YouTube iOS development notes

• 8 Examples of Proprietor translating SWIPE.

The case for the EUTM proprietor

The EUTM proprietor makes the point that in its initial application, the applicant did not provide detailed arguments or evidence to substantiate its claims.

The proprietor goes on to claim that the applicant has not been specific enough about how its objection to the registration of the word ‘SWIPE’ applies to the services at issue. The applicant has only given reasons as regards the goods at issue. The applicant has also failed to define the relevant public. The applicant chose when to file the invalidation action and should have taken due care to ensure it was correctly pleaded. The proprietor therefore requests that the Office rejects the invalidity application or in the alternative, limits its assessment to the limited and legally deficient arguments filed by the applicant.

The proprietor explains that it launched its Tinder dating app in 2012 in the US and worldwide. The contested EUTM has been used within the dating app and for the provision of online dating services since at least 2015 in the EU. The EUTM is therefore undoubtedly associated and synonymous with the proprietor. Indeed, the proprietor developed and created the computer software which enabled the data to be presented in a specific way and coined ‘SWIPE’ as a unique term.

The proprietor recalls that the relevant date for deciding on the cancellation request is the date of application of the EUTM, namely 23/04/2015. The proprietor goes on to criticise various items of evidence filed by the applicant, claiming that they are dated after the relevant date. The proprietor also points out that several of the exhibits filed by the applicant have not been translated into the language of proceedings, namely English. The proprietor files dictionary entries in order to prove that in many languages of the EU, ‘SWIPE’ is meaningless.

In response to the applicant’s claims that the proprietor uses the term ‘SWIPE’ in a descriptive way in its own patent application, the proprietor states that it is accepted that “swipe” is a dictionary word referencing a touch screen gesture, amongst other meanings, and may be referred to as such within the US patent drafting. This is however, separate and distinct, to the proprietor’s use of the registered mark in the context of the product and service offering which is much more evolved and complex. An explanation of the product and service offering is included in the Affidavit of the Senior Manager of Communications, responsible for the Tinder® mobile application, for Match Group, LLC at Exhibit RJN4. As such, there is a mental leap between the mark and the goods and services which renders the mark inherently registrable and distinctive.

Regarding the Oxford Dictionary entry supplied by the applicant, the proprietor points out that the following part of the definition is missing which demonstrates that the term has been coined by the proprietor:

For all the above reasons, the proprietor claims that the applicant’s request based on Articles 7(1)(b), (c) and (d) EUTMR should be rejected. The proprietor files the following evidence in support of its arguments:

• RJN1 BBC News Article – The dating game

• RJN2 Examples of current use of the mark

• RJN3 EU dictionary definitions

• RJN5 Historic press coverage

• RJN6 Schedule of other SWIPE trade marks globally

In the alternate, the proprietor claims that the mark has acquired distinctiveness through use and files the following evidence as Exhibit RJN4 to prove this. As the EUTM proprietor requested to keep certain commercial data contained in this Exhibit confidential vis-à-vis third parties, the Cancellation Division will describe the evidence in these annexes only in the most general terms without divulging any such data.

• Affidavit of Senior Manager of Communications, responsible for the Tinder® mobile application, for Match Group, LLC, dated 9 March 2019.

• Annex EB1 – Current examples of brand use

• Annex EB2 - examples of use from social media platforms

• Annex EB3 – The Independent, newspaper article

• Annex EB4 – English language press coverage

• Annex EB5 – European press coverage – different EU languages

• Annex EB6 – European marketing communications

In its second round of observations, the proprietor contests the applicant’s arguments regarding the relevant public, relevant date and translation issues surrounding the evidence filed. It states that the previous Office decisions cited by the applicant are irrelevant to the current proceedings.

Regarding the further evidence filed by the applicant, the proprietor claims that almost every exhibit contains deficiencies.

The proprietor maintains that the relevant public is more than capable of seeing the distinction between swiping within an app on a mobile device to navigate between pages and the conscious decision to create a possible match with another user through a SWIPE choice.

The class 45 services are “Dating services; internet based social networking, introduction and dating services” and that access to these services is not only possible via mobile devices but that the services can be accessed from static desktop computers. All of the applicant’s arguments on the descriptiveness of ‘swipe’ are tied exclusively to the use of mobile devices and tablets. Absolutely no arguments have been provided regarding the provision of the services from a desktop computer. There is absolutely no descriptive connotation between the registered mark and the services regardless of how the services are accessed.

The proprietor underlines that it made several applications for the word ‘SWIPE’ in national trade mark offices, and none of them raised objections to the application.

As for the criticisms made by the applicant concerning the evidence of acquired distinctiveness filed, the proprietor stands by its conviction that the mark ‘SWIPE’ is inherently distinctive. The evidence was not intended to be an all-encompassing summary of its use of the mark for the goods and services throughout the European Union. It is unreasonable for the applicant to expect the proprietor to commit to the cost of survey evidence and demonstrating evidence of acquired distinctiveness when it has no reason to believe that the EUIPO will reverse its original decision of accepting the registered mark.

The EUTM proprietor files the following additional evidence in support of its claims:

• RJN7 Atlantic Online – showing US jurisdiction

• RJN8 Mailbox article – showing US jurisdiction

• RJN9 NeverBland app – not available in EU

• RJN10 Vox/Recode – showing US jurisdiction

• RJN11 BarkBuddy - – showing US jurisdiction

• RJN12 Harri - showing US jurisdiction

• RJN13 The Verge - showing US jurisdiction

• RJN14 Soul-Black Dating - showing US jurisdiction

• RJN15 2nd Crush app – Terms of Service showing US jurisdiction

• RJN16 2nd Crush app – not available in EU

• RJN17 UrbanCrushApp – Terms of Service showing US jurisdiction

• RJN18 UrbanCrushApp – not available in EU

• RJN19 Summary of Cancellation Applicant Exhibit deficiencies

• RJN20 Summary of Cancellation Applicant Exhibit deficiencies

• RJN21 EUIPO prior registrations

• RJN22 Google Trends graphs – search engine platforms

• RJN23 www.internationaldatingsites.org

• RJN24 Google Trends – Top 10 EU dating providers

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR

According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.

Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.

However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.

Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C‑332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).

The registration of a European Union trade mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings, since the applicable rules expressly allow for that registration to be challenged subsequently in an application for a declaration of invalidity or a counterclaim in infringement proceedings (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 25).

Otherwise, challenging the registration of an EUTM in the context of invalidity proceedings would, where the subject-matter and the grounds were the same, be deprived of any practical effect, even though such a challenge is permitted under the EUTMR (22/11/2011, T‑275/10, Mpay24, EU:T:2011:683, § 18).

Preliminary remark

The EUTM proprietor makes the point that in its initial application, the applicant did not provide detailed arguments or evidence to substantiate its claims.

However, according to Article 12(4) EUTMDR, an application for cancellation may also contain a reasoned statement on the grounds setting out the facts and arguments on which it is based and supporting evidence [emphasis added].

Both the reasoned statement on the grounds and the supporting evidence are optional at the stage of filing the application for revocation or for a declaration of invalidity. Therefore, the EUTM proprietor’s claim must be set aside as the applicant acted in line with the rules in this regard and indeed supplied detailed arguments and evidence subsequent to making the initial application.

Descriptiveness – Article 7(1)(c) EUTMR

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.

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.(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

The distinctive character and descriptiveness of a trade mark must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, ECLI:EU:T:2003:318, § 29).

The average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik Meyer, ECLI:EU:C:1999:323, § 26).

The contested EUTM consists of the word ‘SWIPE’ and the contested goods and services are:

Class 9: Computer application software for mobile devices, namely, software for social introduction and dating services.

Class 45: Dating services; internet based social networking, introduction and dating services.

In the present case, the goods and services covered by the contested mark are aimed at the average consumer. In light of the nature of the goods and services in question, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect. This does not seem to be disputed by either party, even if the proprietor points out that the relevant public consists of users of social introduction and dating services. The proprietor nevertheless concedes that the relevant public should be defined as the average consumer. Moreover, since the mark ‘SWIPE’ consists of an English word, and is very similar to a Dutch word, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking and Dutch-speaking consumer in the Union (22/06/1999, C‑342/97, Lloyd Schuhfabrik Meyer, ECLI:EU:C:1999:323, §26; and 27/11/2003, T‑348/02, Quick, ECLI:EU:T:2003:318, §30).

It is settled case law that the relevant point in time in respect of which the assessment of the claimed descriptive character of the mark ‘SWIPE’ must be made is the date of filing of the EUTM. In other words, it is necessary to establish whether or not ‘SWIPE’ was descriptive in relation to the contested goods and services on 23/04/2015.

In order to demonstrate the descriptiveness of the word ‘SWIPE’, the applicant provides the following.

• A definition from the Oxford English Dictionary: ‘swipe’ means ‘to move (one’s finger) across a touchscreen in order to activate a function’ (definition attached as Exhibit 18).

• Evidence of use of the term ‘SWIPE’ on the Internet. The following are just a sample of the numerous Internet extracts filed by the applicant:

  • Exhibit 3 demonstrates reference to ‘swiping’ in connection with touchscreen technology as far back as 2006 while in 2007, Steve Jobs repeatedly used the term ‘swipe’ to refer to the touchscreen gesture, as can be seen from Exhibit 4.

  • Exhibits 5-7, which include instruction manuals from mobile telephone companies from 2008 and 2011. The descriptive of the word ‘swipe’ by companies such as Samsung and Apple is particularly significant as the combined share of these companies in the EU smartphone market was approximately 55% in July 2018 (Exhibit 10).

  • Exhibits 11 and 12: ‘Swiping’ is also used in connection with mobile gaming software.

The applicant also makes reference to the proprietor’s own descriptive usage of the term ‘SWIPE’ in documents such as patent applications in 2013 and its own consumer-targeted publications.

The Cancellation Division is satisfied that the applicant has demonstrated that at the relevant date, the term SWIPE had, and continues to have, the following meaning:

‘to move (one’s finger) across a touchscreen in order to activate a function’.

The EUTM proprietor criticises the dictionary definition provided by the applicant because it says that part of it is missing, namely:

The proprietor states that this missing part demonstrates that it coined the term since the proprietor’s own dating app, ‘TINDER’, is mentioned. However, in the view of the Cancellation Division, this does not mean that the dictionary definition provided is invalid. The reference to the proprietor’s dating app does not appear in the body of the definition, but rather in the phrases listed as examples of current usage in order for the reader to put the term into context. This does not detract from the clear descriptive and generic meaning of the word ‘SWIPE’.

In any event, the applicant has also demonstrated multiple times that ‘SWIPE’ is widely used on the Internet by computing, telecommunications or gaming companies in order to describe the gesture of moving a finger across the screen of a device in order to activate a function. Furthermore, many of these examples are clearly dated before 23/04/2015.

For the sake of completeness, the Cancellation Division points out that the Oxford Dictionary is not the only one which contains a pertinent definition of the word ‘SWIPE’. For example, the Collins English Dictionary contains the following definition:

The applicant also claims that SWIPE is descriptive in Dutch and files dictionary entries such as the following:

The proprietor also supplies a dictionary entry for the Dutch language:

In the examples provided by both parties, it can be seen that the word which appears in the Dutch language is ‘SWIPEN’ rather than simply ‘SWIPE’. Therefore, it is not correct to assert that the word ‘SWIPE’ as such forms part of the Dutch language. Nevertheless, ‘SWIPEN’ is undoubtedly highly similar to ‘SWIPE’. ‘SWIPEN’ in Dutch means, by the proprietor’s own admission, ‘to operate a touch screen by passing the finger(s) with a sweeping movement’. Furthermore, a basic understanding of English by the general public, in any event, in the Scandinavian countries, the Netherlands and Finland is a well-known fact. (09/12/2010, T-307/09, Naturally active, EU:T:2010:509, § 26-27 and 22/05/2012, T-60/11, Suisse Premium, EU:T:2012:252, § 50).

As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the EUTM, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings. The applicant puts forward a well-grounded argument that ‘SWIPE’ will be understood in Dutch. Its claims regarding the understanding in other countries such as Germany are not backed up by convincing evidence such as dictionary entries and the fact that ‘SWIPE’ appears in some German language articles does not mean that this word is generally understood and incorporated in the German language. Furthermore, the applicant’s claim that ‘SWIPE’ is an elementary word which is commonly used and especially in relation to the popular language associated with smartphone usage and will be widely understood by a significant proportion of European consumers is not backed up by sufficient evidence such as dictionary entries for other European languages. In the opinion of the Cancellation Division, ‘SWIPE’ is not a basic word in English. The fact that ‘SWIPE’ occasionally appears in inverted commas in specialist articles published in other languages is not sufficient to demonstrate that the English word has become incorporated into the common parlance of EU languages.

For all of the above reasons, the Cancellation Division finds it reasonable to extend the relevant public to including Dutch speakers, in addition to the English-speaking public, as laid out above.

Therefore, it is clear that ‘SWIPE’ refers to the action of moving (one’s finger) across a touchscreen in order to activate a function.

For the purposes of assessing descriptiveness, it must be determined whether the relevant public will make a sufficiently direct and specific association between the expression and the goods/services for which registration is sought (20/07/2004, T‑311/02, LIMO, §ECLI:EU:T:2004:245´§ 30).

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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

When ‘SWIPE’ is used in conjunction with the goods at issue, namely, computer application software for mobile devices, namely, software for social introduction and dating services, it will be seen as describing a characteristic of these goods. Specifically, ‘SWIPE’ will be seen as conveying the idea that the proprietor’s software functions by means of using a ‘SWIPE’ gesture. The goods expressly refer to ‘software for mobile devices’, so in this context, the message is clear: the mobile telephone software incorporates a ‘SWIPE’ function, which in accordance with the definitions given above, refers to the fact that users will move a finger across the touchscreen of their mobile telephones in order to access the proprietor’s dating and social introduction services. Therefore, ‘SWIPE’ describes the purpose of the software (namely to swipe in order to access the services provided by the proprietor).

The proprietor maintains that the relevant public is more than capable of seeing the distinction between swiping within an app on a mobile device to navigate between pages and the conscious decision to create a possible match with another user through a SWIPE choice. The first part of this statement is an acknowledgement by the proprietor that ‘SWIPE’ may be viewed as a function enabling the user to navigate between pages. Indeed, the dictionary definition taken from the Oxford Dictionary, and referred to by both parties, refers merely to the action of moving a finger across a touchscreen in order to activate a function. The objection of the Cancellation Division rests on this clear definition of ‘SWIPE’. The second part of the proprietor’s statement, namely that SWIPE will be seen as denoting a conscious decision to create a possible match with another user through a SWIPE choice, seems to indicate that the proprietor believes that ‘SWIPE’ has gained a secondary meaning by association with its dating app. In the opinion of the Cancellation Division, this falls within the realm of acquired distinctiveness and will be examined below.

When ‘SWIPE’ is used in conjunction with the services at issue, namely, dating services; internet based social networking, introduction and dating services, ‘SWIPE’ describes a characteristic of the services, namely the technical means of accessing the services. All of the services mentioned can be accessed via the internet, meaning that they may be accessed via smartphones or tablets which incorporate a touchscreen. As already explained above, ‘SWIPE’ refers to moving a finger across a touchscreen in order to activate a function or to give an instruction.

The proprietor claims that all of the applicant’s arguments on the descriptiveness of ‘SWIPE’ are tied exclusively to the use of mobile devices and tablets. Absolutely no arguments have been provided regarding the provision of the services from a desktop computer. It is true that the Class 45 services may also conceivably be accessed via a desktop computer. This does not, however, remove the obstacle to registration of the word SWIPE for these services. It is common for fixed computer screens to also be touchscreens, making a ‘SWIPE’ gesture possible. There are also peripherals on the market to be used in conjunction with desktop computers which incorporate ‘SWIPE’ gestures. For example, a wireless mouse could enable swiping gestures to be used, as is clear from an annex filed by the applicant in its second round of observations (2.5) :

Consequently, while in this day and age, it is extremely common for the Class 45 services referred to above to be supplied via touchscreen devices such as smartphones, even if these services are supplied via fixed desktop computers, the term ‘SWIPE’ is still descriptive of a characteristic of the services, namely the technical means of accessing the services because ‘SWIPE’ gestures may be incorporated into all sorts of technology nowadays.

Regarding the criticisms made by the proprietor that the applicant failed to translate certain items of evidence or that some documents are not dated within the relevant period, the Cancellation Division finds that even if that is the case, the applicant filed sufficient evidence, free of defect, in order to prove the basis of its claims. In particular, the dictionary reference supplied along with the Internet evidence referred to above (Exhibits 3-7, 10-11) are, on their own, sufficient to demonstrate the descriptiveness of the term ‘SWIPE’ in connection with the goods and services.

The proprietor also refers to the fact that ‘SWIPE’ has been accepted by many national trade mark offices without any objection being raised on the basis of descriptiveness. According to case-law 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 (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

It follows that the link between the sign and the specified goods and services in Classes 9 and 45 is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) EUTMR. Pursuant to constant case-law, it is sufficient that one of the absolute grounds for refusal enumerated in Article 7(1) EUTMR applies for a trade mark to be rejected or, as in the case at stake, to be cancelled. (22/05/2014, T-228/13, exact, EU:T:2014:272, § 63, and 03/12/2015, T-647/14, DUALSAW, EU:T:2015:932, § 39). Consequently, there is no need to deal with the question of whether the contested EUTM was also registered in breach of Article 7(1)(b) or (d) EUTMR.

The EUTM proprietor claims that the contested EUTM had acquired distinctiveness through use both prior to and after the application date of the EUTM, in accordance with Articles 7(3) and 59(2) EUTMR.

Acquired distinctiveness

In cancellation proceedings, a trade mark that was registered in breach of the provisions of Article 7(1)(b) EUTMR may nevertheless no longer be declared invalid if, in consequence of the use that has been made of it, it has, after registration, acquired distinctive character for the goods or services for which it is registered (Article 59(2) EUTMR).

The precise purpose of this norm is to maintain the registration of those marks that, due to the use that has been made of them, have in the meantime — that is to say, after their registration and in any event before the application for an invalidity request — acquired distinctive character for the goods or services for which they were registered, in spite of the fact that, when registration took place, they were contrary to Article 7 EUTMR (judgments of 14/12/2011, T-237/10, Clasp lock, EU:T:2011:741, § 52-53, 86; 15/10/2008, T-405/05, Manpower, EU:T:2008:442, § 127, 146; 10/12/2008 T-365/06, BATEAUX MOUCHES, EU:T:2008:559, § 37-38).

In the present case, it was incumbent upon the EUTM proprietor to demonstrate to the Cancellation Division that its EUTM had acquired distinctive character in the relevant territory on or before the date of application of the contested EUTM, namely, 23/04/2015, or at the latest by the date of application for a declaration of invalidity (05/03/2003, T-237/01, BSS, EU:T:2003:54, § 53), namely 28/08/2018.

Evidence of acquired distinctiveness must be examined as a whole, taking into account, in particular, the market share held by the trade mark, and the intensity, frequency and duration of use of the mark. The evidence must establish that a significant proportion of the relevant public is able, by virtue of that mark, to identify the goods concerned as originating from a particular undertaking.

In the present case, the contested trade mark has been found descriptive in the English-speaking and Dutch-speaking territories of the European Union.

Summary of the evidence

In order to prove the acquired distinctiveness of ‘SWIPE’, the proprietor files as Exhibit RJN4 an Affidavit by the Senior Manager of Communications, responsible for the Tinder® mobile application, for Match Group, LLC, dated 09/03/2019. As the EUTM proprietor requested to keep certain commercial data contained in this Exhibit confidential vis-à-vis third parties, the Cancellation Division will describe the evidence in these annexes only in the most general terms without divulging any such data.

The Senior Manager of Communications explains that the proprietor owns the ‘Tinder app’. The Tinder app is incredibly successful. It was launched in 2012 and is one of the world’s leading social apps for meeting new people. Indeed, every day, Tinder app users view over 2 billion profiles and make 26 million matches. More than 30 billion matches have been made to date. Tinder is famously characterized by a stack of cards containing profiles of potential matches nearby. If a user is interested in the person shown, the user makes a gesture to the right, to indicate an interest. The proprietor has coined this as a SWIPE RIGHT selection. If the user is not interested in the potential match, they would use a left gesture to remove the possible match from the stack of cards. The proprietor has coined this as a SWIPE LEFT selection. If two users both make a SWIPE RIGHT selection, then a match is made, and the users are then permitted to communicate with each other through the app. The app has become so well-known that an entire generation is often described as the “Tinder generation”.

The Senior Manager of Communications explains that ‘SWIPE’ is a trade mark which has been used as an associated brand within the Tinder app since 2012. As he puts it, ‘where there is Tinder, there is SWIPE’.

He also goes on to explain that in addition to SWIPE within the Tinder app, the proprietor also markets the ‘Swipe app’ and has done so since 2017.

The public encounters ‘SWIPE’ within the Tinder dating app, within the Tinder website www.tinder.com and via the Apple App Store. SWIPE is often used in conjunction with LIFE.

A selection of advertisements are included, such as the following which are dated April 2015:

In addition to using SWIPE is on its own; it is also used in conjunction with other matter. For example, “SWIPE RIGHT”, “SWIPE LIFE” or “SWIPE SESSIONS” or “SWIPE. MATCH. CHAT” and “SWIPE SURGE”. SWIPE RIGHT in particular has been used since 2012 in the EU and is still used today.

The Senior Manager of Communications explains that celebrities frequently endorse the SWIPE brand and the brand has formed part of important sports sponsorship deals such as the sponsorship of the Manchester City football club in 2018, in which the slogan ‘Tinder swipes right on Manchester’ was used.

The Senior Manager of Communications claims that there is evidence of longstanding use of the ‘SWIPE’ mark both on its own and in conjunction with other words.

As regards figures, a table is given showing the amount of downloads in the EU of the proprietor’s app for the years 2015-2018 and another one for downloads in the English-speaking territories of the EU for the years 2015-2017. For reasons of confidentiality, these figures will not be revealed. However, the Cancellation Division notes that it is not clear whether the figures, substantial as they are, concern the Tinder app or the Swipe app on its own.

Reference is made to an article appearing in ‘The Independent’, a UK national newspaper, on 23/07/2018, in which it is said that Tinder is ‘possibly the best-known dating app of them all’.

A table of marketing figures for the ‘TINDER’ brand in the EU for the years 2015-2017 is given. The figures are subject to a confidentiality request. While they are substantial, there is no breakdown to show which marketing covers promotion of ‘SWIPE’ as opposed to ‘TINDER’. A table of revenue figures for the TINDER app within the EU are also given covering 2015-2017. Once again, these figures are substantial.

The Senior Manager of Communications attaches several annexes to his affidavit:

• Annex EB1 – Current examples of brand use

• Annex EB2 - examples of use from social media platforms

• Annex EB3 – ‘The Independent’, newspaper article

• Annex EB4 – English language press coverage

• Annex EB5 – European press coverage – different EU languages

• Annex EB6 – European marketing communications

Although most of the information contained in these annexes is within the public realm having been published as advertising or by third party press, the Cancellation Division will nevertheless does not find it necessary to go into detail about the content of the annexes, but rather make an assessment in general terms.

The brand use at EB1 displays one example of ‘SWIPE’ on its own, presumably as a separate dating app. The further material makes it clear that the main and prominent brand is ‘TINDER’, with ‘SWIPE’ appearing at the bottom of the advertising in the phrase ‘SWIPE RIGHT’.

Annex EB 2 features frequent reference to ‘TINDER’, with ‘SWIPE’ used in a descriptive manner as part of expressions like ‘SWIPE RIGHT’ or ‘If you can’t see, you can’t swipe’.

Annex EB 3 carries the headline ’13 best dating apps. Searching for The One? It’s time to swipe right and tap ‘like’ to find them’. ‘SWIPE’ is then used generically throughout the article such as ‘For some people, swiping through fellow singles and potential romantic partners is merely a bit of fun and a way to entertain themselves during TV ad breaks.’ The verb ‘swipe’ is used throughout this article in conjunction with almost all of the dating apps reviewed, and not just the ones belonging to the proprietor.

Annex EB4 contains press coverage in the UK. The articles are predominantly about the ‘TINDER’ app and reference is made to ‘SWIPE RIGHT/LEFT’.

The remaining evidence concerns publications which are not in the English language.

Assessment of the evidence

The EUTM proprietor had to prove that the expression ‘SWIPE’ had acquired distinctiveness after registration in conjunction with the following goods and services:

Class 9: Computer application software for mobile devices, namely, software for social introduction and dating services.

Class 45: Dating services; internet based social networking, introduction and dating services.

As pointed out by the applicant, the majority of the evidence pertains to the period after the date of application of the contested EUTM, namely after 23/04/2015, rather than the period of time leading up to that date.

In the view of the Cancellation Division, the proprietor has not succeeded in proving that ‘SWIPE’ is used on a standalone basis. The evidence of use filed features ‘TINDER’ prominently, whereas ‘SWIPE’ appears within the body of the text of advertisements or press and social media articles and is used in a descriptive manner.

It is possible to prove acquired distinctiveness of a sign that has been used together with other trade marks (judgment of 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 27), provided that the relevant consumer attributes to the sign in question the function of identification (judgments of 07/07/2005, C-353/03, Have a break, EU:C:2005:432; 30/09/2009, T-75/08, !, EU:T:2009:374, § 43; 28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 46). The Court further ruled that, although the trade mark for which registration is sought may have been used as part of a registered trade mark or in conjunction with such a mark, the fact remains that, for the purposes of the registration of the mark itself, the trade mark applicant must prove that that mark alone, as opposed to any other trade mark that may also be present, identifies the particular undertaking from which the goods originate (judgment of 16/09/2015, C-215/14, Nestlé KIT KAT, EU:C:2015:604, § 66). See also in this respect, judgments of 24/02/2016 in T-411/14, Shape of a bottle (3D), EU:T:2016:94, § 76; 16/03/2016 in T-363/15, LAATIKON MUOTO (3D), EU:T:2016:149, § 51.

Moreover, the Court has held on numerous occasions that advertising material on which a sign that is devoid of any distinctive character always appears with other marks that, by contrast, do have distinctive character does not constitute proof that the public perceives the sign applied for as a mark that indicates the commercial origin of the goods.

It is clear from a large amount of the evidence filed that ‘SWIPE’ is not used on a standalone basis. It frequently appears together with the distinctive mark ‘TINDER’. There is very little evidence to prove that the relevant consumer sees ‘SWIPE’ as an identifier. Furthermore, ‘SWIPE’ is hardly ever used on its own, but rather as a verb in expressions like ‘SWIPE RIGHT/LEFT’.

As regards the remaining evidence, such as the confidential marketing expenditure, the evidence does not go so far as to prove that at least a significant proportion of the relevant section of the public identifies the products or services concerned as originating from a particular undertaking because of the trade mark (judgment of 15/12/2015, T-262/04, Briquet à Pierre, EU:T:2005:463, § 61 and the case-law cited therein). There is no breakdown of which figures correspond to the ‘SWIPE’ trade mark. Although the proprietor claims that ‘SWIPE’ exists as an app in its own right, it files no evidence whatsoever to prove this, except for one sheet of advertising. Furthermore, the proprietor did not file any other sort of evidence which could have proved that ‘SWIPE’ has acquired distinctiveness, such as statements from independent trade associations, consumer organisations and competitors, statements from chambers of commerce and industry or other trade and professional associations or certifications or awards received. Nor did the proprietor file a document such as a survey or an opinion poll which could also assist in proving that the relevant public sees ‘SWIPE’ on its own as an identifier.

Consequently, the EUTM proprietor has failed to prove that the contested EUTM ‘SWIPE’ has acquired distinctive character in the English and Dutch speaking territories of the European Union.

Conclusion

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Nicole CLARKE

Lucinda CARNEY

Richard BIANCHI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.