Refusal of application for a European Union trade mark

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

Alicante, 08/09/2016

MITSCHERLICH, PATENT- UND RECHTSANWÄLTE, PARTMBB

Sonnenstraße 33

D-80331 München

ALEMANIA

Application No:	014967921
Your reference:	M35306/EU
Trade mark:	VIZSERVER
Mark type:	Word mark
Applicant:	Silicon Graphics International Corp. 900 N. McCarthy Boulevard Milpitas California 95035 ESTADOS UNIDOS (DE AMÉRICA)

SUMMARY OF FACTS

The Office raised an objection on 27/01/2016 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 25/05/2016, which may be summarised as follows:

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 waive the objection for the following goods:

Class 9 Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity.

The objection is maintained for the remaining goods.

GROUNDS FOR THE DECISION

General remarks

Under Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 25).

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

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

For a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific link between the sign and those goods or services to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (15/01/2013, T-625/11, EcoDoor, EU:T:2013:14, § 16; 22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25).

Response to applicant’s observations

As regards the applicants remarks the Office agrees on the applicant’s observations that a minimum degree of distinctive character is sufficient to render inapplicable the ground for refusal set out in the Article 7(1)(b).

1. The mark ‘VIZSERVER’ is a word coined by the applicant and does not appear in any dictionaries. The word as such is a fanciful expression. The word should not be artificially dissected into two words.

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 (19/09/2001, T-118/00, Tabs (3D), ECLI:EU:T:2001:226, § 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T 367/02 - T 369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 31).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T 173/03, Nurseryroom, EU:T:2004:347, § 21).

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).

As regards the applicant’s argument that the term ‘VIZSERVER’ is a coined word and should not be artificially dissected, the Office points out that the mark is formed by joining two words ‘VIZ’ and ‘SERVER’ together. The relevant public will recognize the two elements even though written as one word. The mere juxtaposition of the words in grammatically correct order does not change its descriptive nature neither does it diminish the intelligibility of the word combination.

2. The word ‘VIZ’ is not a commonly used abbreviation for ‘visualization’. The Internet hits using the word are insufficient to constitute that the word has become a common abbreviation.

Abbreviations of descriptive terms are in themselves descriptive if they are used in that way, and the relevant public, whether general or specialised, recognises them as being identical to the full descriptive meaning. The mere fact that an abbreviation is derived from a descriptive term is not sufficient (13/06/2014, T-352/12, Flexi, EU:T:2014:519).

The Office has inserted five different examples from different sources at the industry demonstrating its observation that the word ‘VIZ’ is indeed being used generically as a synonym/abbreviation for the word ‘VISUALIZATION’ on the market. Internet search by Google has revealed numerous more hits, but in order to substantiate its claim of the generic nature of the word ‘VIZ’, the Office has set these five examples demonstrating that the word is used and understood by different undertakings, researchers and specialists, inter alia, in the field of data visualization, programming and software development. Furthermore, the Office has made a reference that the word is being used as a keyword and social media tag on different publications to refer to contents and topics about visualization.

The Office points out that the descriptiveness of a mark must be assessed, not only in relation to the goods concerned, but also in relation to the relevant public. As stated by the Office in the objection letter on 27/01/2016, the relevant public consists of average consumers as well as professional public. In the light of the results of the examination and Internet search by the Office, showing, that the word ‘VIZ’ is used on the market generically in the meaning of ‘VISUALIZATION’, and, therefore, it is presumable, that the term would be immediately grasped at least by the specialised public, as the sign is composed of words which relate to the field in which the public is active (see 11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27-28; 20/08/2013, R 2295/2012-1, STORYTELLER, § 23). Despite the lack of official dictionary entries regarding the abbreviation ‘VIZ’, when considering the above mentioned factors, namely, the relevant public or the significant part of it, as well as the Internet hits cited by the Office, the fact that the sign could be used for descriptively to designate a characteristic of the goods concerned, is sufficiently established.

3. To reach the conclusion that the term ‘VIZSERVER’ is a descriptive expression for any of the goods applied for, several mental steps are required. ‘VIZSERVER’ is suggestive term that requires imagination, thought or perception for the relevant public to reach to the conclusion as to the exact nature of the goods at issue. In the light of the judgment T-749/14, AROMA, of the General Court, the threshold with respect to the distinctiveness of the EUTM application ‘VIZSERVER’ is set too high.

Firstly, the Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T 129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T 194/01, Soap device, EU:T:2003:53, § 48).

Secondly, it needs to be taken to account that professional training and experience will allow the relevant public more easily to understand the descriptive connotations of the mark applied for (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27-28).

A high attentiveness on the part of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (see in this respect also, for example, judgment of 11 October 2011, T-87/10, ‘Pipeline’, paras 27 to 28). Therefore, for the assessment of the absolute grounds for refusal, it is sufficient if a part of the relevant public […] perceives a descriptive or non-distinctive indication in relation to the goods covered by the [EUTM] application at issue.

(22/01/2014, R 1660/2013-2, HILUX, § 15.)

Therefore, as regards the professional public, which are familiar with the vocabulary used in the field of data visualization, will, due to their professional knowledge, understand the word element ‘VIZ’ denoting ‘VISUALIZATION’ without any mental efforts. Moreover, the Office has demonstrated that the concept of ‘visualization server’ is commonly used in the relevant market. Hence, it is presumable, that a professional consumer working with visualization servers is also aware of the abbreviation ‘VIZ’ as belonging to the vocabulary of professional argot. It is clearly established that there is a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods at issue.

Thirdly, the applicant has pleaded, in order to support his argument that the mark is only indirectly suggesting to certain characteristics of the goods in question, to the judgment 12/05/2016, T-749/14, AROMA, EU:T:2016:286 of the General Court. After giving a due consideration to the applicant’s observations on the threshold of the distinctiveness, the Office has come to a conclusion that the ‘AROMA’ case is not comparable to the mark ‘VIZSERVER’ in question.

There is a perceptible difference between these two cases. As the General Court stated the function or intended use of the goods (electrical cooking utensils), covered by the ‘AROMA’ sign, is not to obtain beverages or foodstuffs with aroma, since that is rather a desirable characteristic of food prepared or cooked with the help of those goods. Therefore, the word ‘AROMA’ is not directly descriptive of the goods in question, but rather to a desirable characteristic of other goods (foodstuff), which may be used in conjunction with the goods for which the sign AROMA was requested, but which do not, in any event, have any direct connection with those goods (12/05/2016, T-749/14, AROMA, EU:T:2016:286, § 48).

Conversely, in this case the mark ‘VIZSERVER’ is directly descriptive for the goods in question. The word ‘VIZSERVER’, meaning a ‘visualization server’ and, as previously explained, effortlessly grasped by (at least) the specialised consumer to denote a computer or program that supplies data or resources converted into picture form to other machines on a network and/or a thing that turns data and summary information into charts and graphs, with the result that the nature or essential characteristics of the goods at issue have direct relationship with the sign ‘VIZSERVER’.

As explained in the Office’s letter on 27/01/2016, the intended purpose of the goods (software, apparatus, data processing equipment etc.) applied for in Class 9 is to convert data into picture form/graphics and supply the data over network or, alternatively, these apparatus, instruments and software utilize data visualization systems (calculating machines, for example, possess functions which convert numerical data into graphics) and remote visualization and/or are included in these broad categories of goods at issue (such as scientific, nautical, surveying, photographic, cinematographic, optical, measuring, signalling, checking (supervision) and teaching apparatus and instruments). As regards the goods objected in Class 16 (user manuals, instructional material etc.) the Office explained that the word ‘VIZSERVER’ conveys obvious and direct information regarding the subject matter of these goods, i.e. the goods are manuals etc. for the use of visualization servers, namely the goods objected.

Furthermore, in the case 25/09/2015, T‑591/14, PerfectRoast, EU:T:2015:700 the General Court stated that in order for the sign to be descriptive, it is not relevant that these goods serve directly for the roasting but it may be enough that they are in a sufficiently close relation to this activity. These goods may serve for the preparation of a roast or for maintaining it or its ingredients warm or for preparing sauces. To this extent the sign describes a characteristic of these goods in the sense that they specifically are intended to be used in the context of the preparation of a perfect roast (§ 25-26). However, for the goods “water heaters, immersion heater and egg cooker” (Class 11) the General Court found the situation different. For the first two categories of goods the connection with roasts or the preparation thereof is not as strong as for the other goods mentioned in the preceding paragraphs. Also in relation with “egg cookers” which are in principle used to boil water, the contested decision did not explain to which extent there would be a specific link with the cooking or preparation of a perfect roast (§ 29-31).

Consequently, the mark conveys obvious and direct information regarding the kind, intended purpose and other characteristics, namely the subject matter, of the goods themselves within the meaning of Article 7(1)(c) EUTMR and not, as the applicant interprets, of other goods, which may be used in conjunction with the goods applied for, as was the case in the ‘AROMA’ judgment (see paragraph 48). In analogy to the PerfectRoast case, the objectionable goods covered by the mark are in a sufficiently close relation to the activity of data visualization. However, the Office has waived the objection for ‘apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity’ in Class 9 as the purpose of these goods is not to supply data or resources converted into picture form to other machines on a network and/or turn data and summary information into charts and graphs, but to conduct, switch, transform, accumulate, regulate or control electricity. After partially waiving the objection, the refusal regarding the remaining goods is in line with the case law practise.

4. The applicant is also the owner of EUTM No 4814414 ‘VIZSERVER’ registered for relevant goods in classes 9 and 16 and, in addition, national trade mark registrations for the same mark.

EUIPO must, when examining an application for registration of a Community trade mark, take into account the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not (see, by analogy, with regard to Article 3(1)(b) and (c) of Directive 89/104, order of 12 February 2009 in Joined Cases C-39/08 and C-43/08 Bild digital and ZVS, summary published at ECR I 20, paragraph 17).

Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered (EUIPO v Erpo Möbelwerk, paragraph 45, and EUIPO v BORCO-Marken-Import Matthiesen, paragraph 45). That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see, to that effect, as regards Article 3 of Directive 89/104, Case C-218/01 Henkel [2004] ECR I-1725, paragraph 62).

The earlier registration No 4814414 ‘VIZSERVER’ was filed on 26/06/2006 and registered on 24/01/2007. The EUTM was not renewed and, therefore, it was cancelled from the EUTM register on 02/08/2016.

The earlier EUTM was filed 10 years ago. Especially in the field of IT the development of new software, methods and processes is very rapid and new concepts and words are developed, adopted and spread in the professional jargon. The Office has to take into account this development and also the future trends when assessing the descriptiveness and distinctiveness of a EUTM applied for. Thus, it cannot be concluded that even if the sign in question was not spread or commonly used 10 years ago which made it eligible for registration at that time, it would automatically render the identical mark for the same goods and services being distinctive now. The Office has examined the mark and in the light of the results found, that the word ‘VIZSERVER’ is, at the time of the examination, descriptive and void of distinctive character.

As regards the national registrations in Canada, Israel, Japan and the USA referred to by the applicant, 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).

5. There are numerous EU trade marks containing the element ‘VIZ’ registered in class 9 and/or 16.

In addition to the above mentioned, the Office has taken into account the earlier EU trade mark registrations containing the element ‘VIZ’ cited by the applicant. However, these do not change the outcome reached by the Office in the present case. The Office remarks that assessing distinctiveness is not an exact science. According to well-established case-law, while the Office must strive for a coherent practice in assessing signs with respect to absolute grounds for refusal, the registrability of a sign as a European Union trade mark must be assessed solely on the basis of the EUTMR, as interpreted by the Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47 and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 35). Each case must be examined on its own merits. As it turns out, some of the marks have been registered several years ago, some almost a decade ago (e.g. No 5938436 ‘VIZ’, No 7020506 ‘SmartViz’). Even though, these EUTMs cited by the applicant are registered for the same goods, they need to be considered as a whole; part of the marks submitted by the applicant contains additional word elements (e.g. No 6293534 ‘HI-VIZ GRIP’). Due to the findings specified above, the Office will maintain the objection.

DECISION

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 14 967 921 is hereby rejected for the following goods:

Class 9 Computer graphics software; Operating system software; Computer networking software; Remote user software; User manuals in electronic form sold in association therewith; Scientific, nautical, surveying, photographic, cinematographic, optical, measuring, signalling, checking (supervision) and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Calculating machines, data processing equipment, computers; Computer software.

Class 16 User manuals; Printed matter; Photographs; Instructional and teaching material (except apparatus).

The application is accepted for the remaining goods. According to Article 59 EUTMR, you have a right to appeal 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.

Volker Timo MENSING