Refusal of application for a European Union trade mark

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

Alicante, 27/09/2016

SCHWARZ & PARTNER

Wipplingerstr. 30

A-1010 Wien

AUSTRIA

Application No:	15 281 711
Your reference:	S19947
Trade mark:	VOICE TRACER
Mark type:	Word mark
Applicant:	Speech Processing Solutions GmbH Gutheil-Schoder-Gasse 8-12 A-1100 Wien AUSTRIA

The Office raised an objection on 13/04/2016 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 24/05/2016, which may be summarised as follows:

1. The average consumer or a member of the professional public would associate the words ‘VOICE’ and ‘TRACER’, in accordance with the meaning given at Oxford Dictionaries, with a person or thing that traces or follows speech or sound. Nothing in this combination indicates or hints that this speech or sound will be recorded, reproduced, transmitted, stored and processed. Consequently, the applicant disagrees that the combination ‘VOICE TRACER’ is descriptive for goods such as devices and computer software for recording, reproducing, transmitting, storing and processing sound signals and voice signals; dictating machines.

2. In addition, for goods such as cards provided with carriers (chips) encoded with electrically accessible information; parts and accessories to the aforesaid goods not included in other classes; data processing equipment and computers; computer peripheral devices; downloadable computer programs,· memories for data processing equipment, there is no link at all that could make the trade mark applied for descriptive.

3. In 1991 and 1993, the applicant registered the following ‘VOICE TRACER’ marks for the same list of goods: CA No 410 440, HK B 05670/1993, JP No 262 39 41, KR No 252 535, NZ B 211 370 and US 1,775,766. The applicant argues that those marks have been registered in English-speaking countries such as the US and, moreover, that in 1991 and 1993 the words ‘VOICE’ and ‘TRACER’ had the same meaning given at Oxford Dictionaries.

4. With regard to the nine internet hits provided by the Office, the applicant submits that it is the developer and manufacturer of a product named ‘VOICE TRACER’, sold for several years under the ‘PHILIPS’ trade mark based on a trade mark licence agreement with the company Philips. Furthermore, the applicant argues that most if not all of the links refer to this product or accessories such as cables for this product. Consequently, the applicant argues that those nine links do not prove that these words are commonly used it the relevant market, but rather provide proof that its product, or Philips’ product, is well known in the market under the name ‘VOICE TRACER’.

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.

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).

‘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 applicant disagrees that the combination ‘VOICE TRACER’ is descriptive for goods such as devices and computer software for recording, reproducing, transmitting, storing and processing sound signals and voice signals; dictating machines because, in accordance with the meaning of the words ‘VOICE’ and ‘TRACER’ given at Oxford Dictionaries, the average consumer or a member of the professional public would associate ‘VOICE TRACER’ with a person or thing that traces or follows speech or sound; however, nothing in this combination indicates or hints that this speech or sound will be recorded, reproduced, transmitted, stored and processed. In addition, the applicant submits that, for goods such as cards provided with carriers (chips) encoded with electrically accessible information; parts and accessories to the aforesaid goods not included in other classes; data processing equipment and computers; computer peripheral devices; downloadable computer programs, memories for data processing equipment, there is no link at all that could make the trade mark applied for descriptive.

To refuse to register a trade mark 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 provisions 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 (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32).

The signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage from a consumer’s point of view to designate, either directly or by reference to one of their essential characteristics, goods or services such as those in respect of which registration is sought.

In the present case, the goods to which an objection has been raised and which are covered by the mark applied for are specialised goods and are aimed at both average consumers and professionals. Taken as a whole, the expression ‘VOICE TRACER’ immediately informs consumers without further reflection that the goods applied for are voice tracer devices, as well as software and parts and accessories used in connection therewith intended to trace voices or make recordings. Therefore, the mark conveys obvious and direct information regarding the kind and intended purpose of the goods in question. Moreover, according to Article 7(1)(c) EUTMR, there are sufficient grounds for refusal of a trade mark if it designates, either directly or by reference to one of its essential characteristics, the goods for which registration is sought.

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 (judgment of 20/07/2004, T‑11/02, ‘LIMO’, paragraph 30).

The trade mark consists of two word elements, ‘VOICE’ and ‘TRACER’. According to Oxford Dictionaries, the word ‘VOICE’ is defined as ‘the sound produced in a person’s larynx and uttered through the mouth, as speech or song’, and the word ‘TRACER’ is defined as ‘a person or thing that traces something or by which something may be traced’. Consequently, the relevant consumer, in this case the English-speaking consumer with a degree of awareness that is high or at least higher than that of the average consumer, who is reasonably well informed and reasonably observant and circumspect, will understand the words ‘VOICE TRACER’ as a meaningful expression, namely ‘a thing that traces voices or sounds or by which voices or sounds may be traced’.

When encountering the trade mark ‘VOICE TRACER’, the relevant consumer will not have to make any mental effort to understand its meaning. It is considered that, when encountering the mark applied for in relation to the relevant goods, consumers will be well aware of the descriptive message conveyed. In relation to the relevant goods in Class 9, the target consumer will be in no doubt that these are devices that are to be used for tracing or following speech or sound, or that the software, parts and accessories are to be used in connection therewith, and that these goods are intended to trace voices or produce recordings.

It should be pointed out that the relevant public is formed of both professionals and average consumers. However, in view of the nature of some of the goods in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48).

Please note that the public interest underlying Article 7(1)(c) EUTMR is that no exclusive rights should be created in purely descriptive terms which other traders might wish to use; it is also in the interest of the public that terms which have a purely informational value should not be reserved for one single trader (such a mark may, of course, be registered if the applicant can show evidence of acquired distinctiveness).

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.

According to Article 7(1)(b) EUTMR, marks that are not capable of exercising the essential function of a trade mark, which is to identify the origin of the goods, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or, to avoid it if it proves to be negative, on the occasion of a subsequent purchase, shall not be registered.

In this regard, the Office maintains the view that, given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin. Consequently, in the present case, the relevant consumer, when encountering the mark ‘VOICE TRACER’ in relation to the goods for which registration is sought, will not be capable of identifying the origin of those goods and, thus, the consumer will not be able to repeat or avoid the experience. Moreover, in the notice of 13/04/2016, the Office provided nine internet hits that demonstrated that the words in question are commonly used in the relevant market, thus eclipsing any impression that the sign ‘VOICE TRACER’ could indicate a trade origin.

With regard to the applicant’s argument that in 1991 and 1993 it registered the mark ‘VOICE TRACER’ in Canada, Hong Kong, Japan, New Zealand, South Korea, and the United States, 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).

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Union, cannot be accepted as relevant in this case’ (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 40).

As the applicant correctly states, of all the countries in which it has registered its mark, only in the United States is English spoken and understood by the consumers. The fact that in 1991 and 1993 the words ‘VOICE’ and ‘TRACER’ had the same meaning given at Oxford Dictionaries is not relevant. It should be pointed out that the fact that National Offices accepted these trade marks 23-25 years ago does not oblige EUIPO to register a similar trade mark if that trade mark is descriptive. Decisions relating to descriptiveness and distinctiveness depend to some extent on the evaluation in an individual case or even on the current practice of the Office or on market needs, which are continuously developing. In addition, 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. Such an examination must be undertaken in each individual case.

Moreover, it is on the basis of 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 (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

The applicant failed to provide information on the circumstances in which its marks were registered in the countries in question, and also failed to prove that the trade mark applied for has inherent distinctive character or has acquired distinctive character through use.

With regard to the nine internet hits provided by the Office in the notice of grounds for refusal of 13/04/2016, the applicant argues that it is the developer and manufacturer of a product named ‘VOICE TRACER’, sold for several years under the ‘PHILIPS’ trade mark based on a trade mark licence agreement with the company Philips. Furthermore, the applicant argues that most if not all of the links refer to this product or accessories such as cables for this product. Therefore, the links do not prove that these words are commonly used in the relevant market; rather, they prove that its product, or Philips’ product, is well known in the market under the name ‘VOICE TRACER’.

With regard to the abovementioned argument, it should be noted that in three of the links Philips is mentioned as the manufacturer; in link No 4, Philips voice tracers are mentioned along other voice tracer devices; and in the remaining links no manufacturer is mentioned.

Furthermore, it should be pointed out that the applicant merely mentioned the existence of a licence agreement, without providing a copy of this agreement. In addition, the applicant submitted no proof that there is a link between Philips’ voice tracer products and its products or that the sign applied for would be recognised by the consumers in the relevant market as belonging to the applicant.

The Office fails to see how the applicant’s mark refers to a distinct and identifiable entity, since from the internet hits provided by the Office it is clear that the words in question are used in common parlance in relation to the goods for which registration is sought.

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 15 281 711 ‘VOICE TRACER’ is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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.

Roxana PISLARU