Refusal of application for a European Union trade mark

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

Alicante, 29/03/2017

Victor Angelier

Rönningen 1

SE-68065 Höljes

SUECIA

Application No:	016183113
Your reference:
Trade mark:	Smart Security Scan
Mark type:	Word mark
Applicant:	Victor Angelier Rönningen 1 SE-68065 Höljes SUECIA

The Office raised an objection on 28/12/2016 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 01/02/2017 which may be summarised as follows:

The applicant did not contest the findings of the examiner and stated: “Our 'service' does exactly what our trademark suggests and exactly that why you describe in your notice. Our platform; A (SMART) or bright, system operated if by human intelligence is a piece of technology that is unique in its way. It combines multiple tools, third party open source software and pieces of self written software that fully automated scans (SCAN) for security risks and vulnerabilities. This is the part (SECURITY). I identifies the risks and reports it back to the customer which possible procedures and/or fixes to make their IT landscape secure (SECURITY) again. This scan (SCAN) can be fully automated, initiated by hand and or execute on a reoccurring bases. Smart: The use of multiple platforms, tools, and self written software and combine them as one. Operating the platform is as simple as it can get and low evel as searching with Google. Security: It does not only provide detailed information about security risks but also provides solutions to patch or prevent security risks which gives the user the 'secure' feeling that something is watching it's back. Scan: Explains it all. Our platform scan's, searches and finds security threats and risks fully automated.”.

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. The mark applied for – Smart Security Scan – is devoid of any distinctive character, as also agreed by the applicant, and is not capable of distinguishing the goods and services for which registration is sought within the meaning of Article 7(1)(b) EUTMR and Article 7(2) 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.

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).

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).

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). This has been established previously by the Office and also confirmed by the applicant.

Taken as a whole, the words Smart Security Scan immediately inform consumers without further reflection that the goods and services applied for are software analysing/controlling specific data/objects in a clever ways as if by human intelligence (using also digital communication technology), in order to provide safeness and for taking precautions against risks, and design, rental, programming services of such goods, and also respective security and security consultation services.

Therefore, the mark conveys obvious and direct information regarding the kind, quality and intended purpose of the goods and services in question. It follows that the link between the words Smart Security Scan and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Given that the mark has a clear descriptive meaning in relation to the goods and services 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.

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 16 183 113 is hereby rejected for all the goods and services 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.

Erkki Münter