Refusal of application for a European Union trade mark

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

Alicante, 15/11/2016

REDDIE & GROSE LLP

16 Theobalds Road

London WC1X 8PL

United Kingdom

Application No:	015396906
Your reference:	t/24028.em01
Trade mark:	CLEARSIGHT
Mark type:	Word mark
Applicant:	Jaguar Land Rover Limited Trade Marks Department W/1/6 Abbey Road, Whitley, Coventry Warwickshire CV3 4LF United Kingdom

The Office raised an objection on 25/05/2016 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 26/09/2016, which may be summarised as follows:

1. The mark applied for should be considered as a whole. CLEARSIGHT does not have any dictionary meaning. The Examiner has merely combined one of the dictionary definitions of the two terms to form the expression “easy to see, distinct vision”. There is a perceptible difference between the CLEARSIGHT and the sum of its individual parts.

2. The examiner has not provided reasons as to how the mark describes the kind and intended purpose of any of the goods. The goods applied for are not the goods that English-speaking consumers normally associate with the human ability to “see”. The goods applied for which are or comprise cameras only provide a projected view of recorded images. The remaining goods have no connection with cameras. In particular, the mark can not be descriptive of electronic control panels and connections, autonomous vehicles, application software, safety and alarm systems, technology devices, telemetry devices, drones, ultrasonic detectors, radar detectors and lidar detectors.

3. CLEARSIGHT is not commonly known in the market or in the English language.

4. CLEARSIGHT, as a whole, is not descriptive but is allusive and vague.

5. The mark applied for is fanciful enough to reach the minimum degree of distinctive character that is required for registration.

6. The EUIPO has accepted to registration several CLEARSIGHT marks or marks for which the word CLEARSIGHT is the dominant and distinctive element in relation to goods in Classes 9 and 10. More precisely EUTM 15 547 888 CLEAR SIGHT for computer software for improving digital images and photographs in mobile device cameras.

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.

Regarding the applicant´s statement that ‘if the objection is to be maintained, we request another official letter outlining the reasons why the objection is maintained before the application is refused’ the Office notes that this does not constitute an explicit unconditional request for a further extension of time and that additionally the applicant did not put any reasons forward that would justify a further extension.

Furthermore, the Office raised all its arguments in the notice of grounds for refusal of 25/05/2016, after having been granted a two month extension of the time limit set by the Office in the referred notice the applicant submitted its observations on 26/09/2016. Due to the fact that the Office does not raise new arguments, it does not consider necessary to give the applicant further opportunity to make further submission.

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).

1. The Office fully agrees with the applicant that the sign for which registration is sought must be considered as a whole for the purposes of assessing its distinctive character, although it is made up of several components.

As a matter of fact, from a close inspection of the notice of grounds for refusal, it can clearly be established that, contrary to the applicant’s contention, the mark CLEARSIGHT has been considered as a whole for the purposes of evaluating its distinctiveness, with a focus on the overall impression conveyed by all its constituent elements together. Notwithstanding this broad approach, an analysis of the components of the trade mark may also be made when evaluating that overall impression (09/07/2003, T 234/01, Orange und Grau, EU:T:2003:202, § 32).

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) CTMR, ‘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).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [CTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

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).

The merging of two common words by simply removing the space or hyphen that would normally separate them in written language or combining them in a grammatically correct expression does not necessarily give rise to an invented word that is fanciful or arbitrary. It has virtually no effect on the meaning transmitted by the merged or combined words when displayed in a written message, and no effect at all on the meaning as far as the pronunciation of these words is concerned. The fact that the first two words are merged into one would not be perceptible to a listener to a message or advertisement broadcast on the radio, for instance.

The combination of the words CLEAR and SIGHT is not meaningless, but merely a combination of two words, each of which maintains its own separate meaning and written form, as confirmed by the definitions and explanations provided in the provisional refusal. The sign in question is composed of readily identifiable and ordinary words from the English Language. There is nothing unusual about the structure of the sign at hand. The combination follows ordinary composing and spelling rules of English grammar. There is no unusual variation as to syntax or meaning. The sign as a whole is immediately intelligible to English speakers, as previously stated, as a meaningful expression.

The expression resulting from the combination of the abovementioned components does not create, contrary to the applicant’s claim, an impression which is sufficiently far removed from that produced by the elements CLEAR and SIGHT.

From the above, it is irrelevant that the individual words composing the mark may have other meanings, since the expression CLEARSIGH’ may still be perceived by the relevant consumer as a meaningful expression (providing relevant information about the goods).

Moreover, 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, emphasis added.)

2. Furthermore, the descriptiveness of a sign must be assessed not in the abstract but with reference to the specific context of the goods and/or services for which protection is sought.

The applicant submits that the objection raised by the Office only relates to the human ability to see which is not applicable to the goods of reference and that the examiner has therefore failed to establish a link with the specific goods of the application.

Having regard to the specific goods objected to in Classes 9 and 12 and to the particular context of reference, mainly concerning the vehicle or automotive industry, it is worth mentioning that nowadays vehicles can incorporate all kinds of electronic intelligent or computer based systems (for purely illustrative purposes see information in annex 1). Among the referred systems are, for example, computer or machine vision systems that provide automatic image capturing, evaluation and processing capabilities. Computer vision plays a key role, among others, in advanced driver assistance systems. Cameras (in combination with other devices), may gather, store and archive important information so that users or software can make decisions that would be unfeasible (or more difficult) without that visual data.

Likewise, autonomous vehicles and drones employ radar, ultrasound, vision based systems, and pre-recorded 3D laser scan maps of the road or the airspace to determine the direction and speed of a vehicle as well as the conditions of the environment surrounding them. These systems, for example, make it possible to detect and track vehicles, objects, lane markings or pedestrians and recognise the road signs using a frontal camera and some additional sensors such as radar.

This is further supported by the applicant’s own description of the goods, as for example in the case of the software applied for which has been specifically described as intended to detect obstructions and transmit external views around a vehicle (emphasis added) or the hardware and software applied for which has been described as used to provide enhanced visibility from inside a vehicle.

Autonomous vehicles use lidar technology for obstacle detection and avoidance to navigate safely through environments, using rotating laser beams.

Lidar is a surveying method that measures distance to a target by illuminating that target with a laser light. This technology is used in adaptive cruise control (ACC) systems for automobiles, for example, to monitor the distance between vehicles (https://en.wikipedia.org).

From the above it is evident that the reference to the faculty of seeing (vision) or to the act or instance of seeing cannot be limited to human beings and that the sign applied for is equally descriptive when applied to the goods of reference.

Notwithstanding that the abovementioned goods are not spectacles, sunglasses, contact lenses, binoculars or telescopes, they are still devices that may be used for providing a distinct, clear vision or view. As admitted by the applicant itself, when indicating that cameras or goods comprising cameras provide a projected view of recorded images.

Furthermore, the objected goods can additionally, or alternatively, contain visual displays or screens that can offer a clear, distinct vision or view as it is the case of control panels, connections or even accessories since they normally offer added functionalities.

Although some of the individual goods objected to are not so directly involved with the capturing, storage or processing of images (like for example sensors, alarms, etc.) considering that they still may be combined and form part of a complex system (such as a computer vision system, a safety system, driving assistance system) that can in one way or another provide or use distinct images or views, it is considered that the mark is descriptive in respect of all of the objected goods including the electronic, autonomous vehicles, application software, safety and alarm systems, technology devices, telemetry devices, drones, ultrasonic detectors, radar detectors and lidar detectors.

From all the above, it is clear that the fact that the objected goods provide a distinct, clear or precise vision is certainly a meaningful piece of information which is of particular interest to the relevant consumer of concern.

Therefore, the mark as a whole conveys obvious and direct information regarding the kind and intended purpose of the goods in question.

Thus, contrary to the applicant’s contention, the expression ‘CLEARSIGHT’ is particularly suitable to describe desirable characteristics of the goods objected to in Classes 9 and 12.

Furthermore,

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

3. The applicant’s arguments that CLEARSIGHT is not commonly used, it should be noted that for a trade mark to be refused registration under Article 7(1)(c) CTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

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

Moreover,

‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question … The lack of prior use cannot automatically indicate such a perception.’

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 88).

4. For the reasons set out above, it cannot be reasonably maintained that the trade mark applied for will merely be perceived as allusive or suggestive because it is vague and requires clarification, rather than being directly descriptive, and that it will enable the relevant consumers to identify the origin of the goods applied for. In this context, the Office refers to the following decision of the Board of Appeal of 13/10/1998, R 62/1998 - 3 – ‘LASER TRACER’, § 11:

a trade mark is considered to be allusive whenever it makes reference to certain characteristics of the products or services in an indirect way (See Decision of the Second Board of Appeal of 22 September 1998, in Case R 36/98-2, The Oilgear Company, ‘OILGEAR’, paragraph 10), or through a mental association process which requires a special effort on the part of consumers who are expected to transform a suggestive or emotional message, into a rational evaluation.

(See also decision of 27/11/1998, R 26/1998 - 3 – ‘NETMEETING’, § 24.)

This is clearly not applicable in the present case, since the message conveyed by the trade mark is not merely allusive but rather directly descriptive of the kind and intended purpose of the goods in question. When faced with the trade mark CLEARSIGHT in relation to the relevant goods, the public will readily comprehend its descriptive meaning, as already defined above, without the need for a mental association process requiring a special effort. It follows that the link between the word CLEARSIGHT and the goods objected to is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and 7(2) CTMR.

5. As regards the applicant’s argument that the sign applied for is fanciful and perfectly well adapted to performing a trade mark function, it is noted that given that the mark has a clear descriptive meaning in relation to the goods objected to, 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.

Although the Office agrees with the applicant in that distinctive character of a sign is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness on the part of its proprietor, It is sufficient that a trade mark enables the public to identify the origin of the protected goods or services and to distinguish these from other goods or services (16/09/2004, C 329/02 P, SAT/2, EU:C:2004:532, § 41). It is clear, from the above analysis and explanations, that in the present case the sign under analysis does not, prima facie, give the relevant consumers the impression that it is an indicator of origin.

As stated by the General Court:

the fact remains that if an applicant [holder] claims that a trade mark applied for is distinctive, despite OHIM’s analysis, it is for the applicant [holder] to provide specific and substantiated information to show that the trade mark applied for has either intrinsic distinctive character or distinctive character acquired through usage.

(03/07/2013, T 236/12, Neo, EU:T:2013:343, § 62).

Consequently, the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it as only an informative statement. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR.

6. As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, according to settled case‑law, ‘decisions concerning registration of a sign as a European Union trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, 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).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

Furthermore, the mere fact that, in other cases relating to other trademarks, a less restrictive approach seems to have prevailed, does not amount to a violation of the principle of non-discrimination, or a reason for invalidating a decision which per se appears to be reasonable and conforms to the EUTMR, as interpreted by EU judicature.

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 15 396 906 is hereby rejected for the following goods:

Class 9 Cameras for vehicles; vehicular surveillance system comprised of cameras, sensors, monitors, operating system; application software to detect obstructions and transmit external views around a vehicle; computer hardware and software used to provide enhanced visibility from inside a vehicle; vehicle safety equipment, namely electronic sensors and detectors and cameras; safety and driving assistant system; ultrasonic detectors for use on vehicles; radar detectors and apparatus; lidar systems and apparatus; electric control panels and connections; telemetry devices for motor vehicle applications; wireless controllers to remotely monitor and control the function and status of other electrical, electronic, signaling systems and mechanical devices for use in connection with vehicles; automobile safety features and warning or alarm functions, namely warning horns, devices for making audible warning sounds, warning triangles, warning lights for vehicle dashboard; communications apparatus to transmit and receive communications between vehicles and between driver and vehicle; electric sensors; computer hardware, software and electrical apparatus to provide tactile, audible and visual interfaces to interact with occupants of the vehicle; downloadable software and on-board computer software that provides users with remote and in-vehicle access to functions relating to safety; parts and fittings for any of the aforesaid goods.

Class 12 Drones; autonomous vehicles; driving control unit for vehicles; driver assistance systems for motor vehicles; transmission control systems for vehicles; alarm systems for vehicles; safety systems for vehicles; accessories for vehicles; accessories for the interior of vehicles; electronic interface modules sold as an integral part of a motor land vehicle.

The application may proceed for the remaining goods.

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.

Isabel DE ALFONSETI HARTMANN

Annex 1

Relevant information on autonomous vehicles and machine/computer vision retrieved from the internet on 14/11/2016 at the indicated addresses.

Autonomous vehicles employ a "sense-plan-act" design that is the foundation of many robotic systems. A suite of sensors and cameras on the vehicle gathers data about the outside world and the vehicle's relation to its environment. Software algorithms interpret the data, which is then used to plan the vehicle's actions: its overall trajectory down the road, its speed, and lane changing. These plans are then converted into commands to the vehicle's control system — steering, throttle, and brakes.

Making sense of the world. One of the greatest difficulties is building a vehicle that can make sense of world around it — traffic infrastructure, other vehicles, pedestrians, cyclists, traffic workers, and wildlife. Although the sensor systems can gather much more data about the environment than the human eye can, they are less adept at turning the data into a clear understanding of the environment. (Is that obstruction in the roadway a deer? A cardboard box? A bicycle?) Interpreting sensor data remains a fundamental research challenge.

(emphasis added)

http://www.rand.org/pubs/research_briefs/RB9755.html?utm_source=t.co&utm_medium=rand_social

For several decades, the technology has been steadily advancing in commercial vehicles. Adaptive cruise control, debuted by Mitsubishi in 1995, was the first “smart car” feature using lidar or radar sensors to maintain a constant distance from the car ahead using throttle control and downshifting. Later systems marketed as “preview distance control” or active cruise control evolved to apply the brakes and accelerate as needed. Nearly every major car company in the market now offers adaptive cruise control as an option in high-end vehicles.

In the past decade, adaptive cruise control has further evolved into full collision-avoidance systems in more than a dozen vehicle makes from Acura to Volvo. Such systems use lidar, radar, cameras, sensors or a combination of those to monitor dangerous situations in front of, behind and even beside the vehicle. The first such system in the 2006 Mercedes could apply the brakes and bring the car to a full stop, then resume again from a standstill in the case of a potential threat – in other words, it could navigate in a traffic jam or through a roundabout without the driver touching the pedals. In just the past few years, nearly all automakers have either begun to offer, or have made plans to offer, further automated systems that use sensing and imaging technology to autonomously steer, brake, accelerate and park without driver input.

[… ]

The Mercedes S-Class for 2014 is the first vehicle on the market to offer camera-assisted “magic body control,” a system that can identify bumps in the road ahead and adjust the suspension to quell them in real time.

[… ]

The key to Google’s autonomous navigation is the HDL-64E (E for Ethernet) lidar sensor from Velodyne LiDAR of Morgan Hill, Calif., which uses 64 fixed-mount IR (905 nm) laser-detector pairs to map out a full 360° horizontal field of view by 26.8° vertica

[… ]

The Ford Fusion hybrid research vehicle, designed by Ford in collaboration with the University of Michigan and State Farm, also uses real-time lidar to map out the environment 360° around the car to determine distances to street signs and the condition of the roadway.

http://www.photonics.com/Article.aspx?AID=56625

Summary

Computer vision plays a key role in advanced driver assistance systems (ADAS) as well as in exploratory and service robotics. Visual odometry, trajectory planning for Mars exploratory rovers and the recognition of scientific targets in images are examples of successful applications. In addition, new computer vision theory focuses on supporting autonomous driving and navigation as applications to unmanned aerial vehicles (UAVs) and underwater robots. From the viewpoint of geometrical methods for autonomous driving, navigation and exploration, the on-board calibration of multiple cameras, simultaneous localisation and mapping (SLAM) in non-human-made environments and the processing of non-classical features are some of current problems. Furthermore, the adaptation of algorithms to long image sequences, image pairs with large displacements and image sequences with changing illumination is desired for robust navigation and exploration. Moreover, the extraction of non-verbal and graphical information from environments to remote driver assistance is required.

https://www.dagstuhl.de/en/program/calendar/semhp/?semnr=15461

Deep-Learning Vision Processing

Although many companies are currently developing deep learning solutions, THINCI states that its technique is superior to the alternatives due to the company’s “silicon architecture capable of processing extremely large amounts of data in the same amount of time a human would.”

Now, normally you would expect a computer to be able to process data much quicker than a human. But in the realm of vision processing, we have an evolutionary advantage over our silicon counterparts due to our naturally optimized visual cortex. So THINCI’s claim is actually more impressive than it might first sound.

THINCI’s technique involves processing entire images in parallel, which can enable pattern recognition akin to what humans do. The company claims that this approach reduces power consumption and boosts performance by eliminating the need for costly memory access.

http://www.engineering.com/AdvancedManufacturing/ArticleID/13466/Vision-Processing-for-Next-Gen-Autonomous-Vehicles.aspx

8. Autonomous vehicles • Autonomous vehicles use Lidar for obstacle detection and avoidance to navigate safely through environments. • Lidar sensor provide data for software to determine where potential obstacles exist in the environment and where the vehicle is in relation to those potential obstacles.

http://www.slideshare.net/SourabhJain89/applications-of-lidar-technology