Refusal of application for a European Union trade mark

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

Alicante, 12/09/2017

BRANDSTOCK LEGAL RECHTSANWALTSGESELLSCHAFT MBH

Rückertstr. 1

D-80336 München

ALEMANIA

Application No:	016416901
Your reference:	TM28891EU00-11/ks
Trade mark:	THINKAGILE
Mark type:	Word mark
Applicant:	Lenovo (Singapore) Pte. Ltd. 151 Lorong Chuan, 02-01 New Tech Park Singapore 556741 SINGAPUR

The Office raised an objection on 15/03/2017 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

After an extension of two months, the applicant submitted its observations on 10/07/2017, which may be summarised as follows:

1. The mark is distinctive.

2. Similar marks have previously been registered by the EUIPO.

2. The mark has acquired distinctiveness through use.

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.

Distinctiveness

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

The applicant argues that the mark is distinctive, as the mark ‘THINKAGILE’ is fanciful for the goods covered and not a typical combination of the two words it contains. Neither the word ‘THINK’ nor the word ‘AGILE’ describes the goods covered, so relevant consumers would not associate ‘THINKAGILE’ with the goods for which registration is sought.

Contrary to the applicant’s argument, the mark ‘THINKAGILE’ is not fanciful but is merely a combination of the two words ‘THINK’ and ‘AGILE’. Apart from not having a space between them, the combination of the two words is grammatically correct. Whether the word combination is typical or not does not influence the assessment of the distinctive character of the mark, as it is the perception of the mark as a whole that the assessment is based on, and not whether consumers often encounter this combination of words.

The word ‘AGILE’ does not have only one synonym or one way in which it can be meant; therefore, the Office has provided two possible ways of interpreting the mark, namely ‘think flexible and ‘think responsive’. Both variations have the same underlying meaning as ‘THINKAGILE’.

Furthermore, the Office does not claim that the words ‘THINK’ and ‘AGILE’ directly describe the goods in question, but instead that the combination ‘THINKAGILE’ is a promotional laudatory message implying that the consumer should consider or expect the goods to be flexible and/or responsive. In terms of the goods for which protection is sought, the application was not refused on the grounds of the word combination conveying some specific descriptive message about particular characteristics of the goods, that is, it was not based on Article 7(1)(c) EUTMR. Rather, the refusal was based on the fact that the word combination would be perceived as a mere laudatory reference to characteristics of the goods in question. The mark is a typical promotional laudatory message that highlights the positive aspects of the goods concerned, namely that they flexibly and responsively consider and adapt to consumer needs and market forces. Nothing in the expression ‘THINKAGILE’ would make consumers believe that it is an indication of commercial origin.

With regard to the applicant’s statement that if the Office claims that the mark is commonly used for the goods, the Office is obliged to show that the alleged recognition of the mark is indeed prevalent, the Office has not claimed that the mark is commonly used in the marketing of the goods in question, but that the relevant consumers would not perceive it as an indication of commercial origin.

Furthermore, 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).

The applicant argues that the relevant consumers are likely to link the goods for which protection is sought to the applicant when encountering the mark ‘THINKAGILE’, as the applicant owns a family of registered trade marks containing the element ‘THINK’, which will be associated with the applicant. In particular, the trade mark ‘THINKPAD’, which has a red dot as part of the letter ‘I’, is well known and has a reputation within the computer sector; it will therefore hint that the goods covered by ‘THINKAGILE’ originate from the applicant.

The mark ‘THINKAGILE’ must be able to function as a trade mark not only within the applicant’s current trade circles, comprising consumers who are familiar with the applicant’s previous trade marks, but also for potential new consumers.

The mark applied for is a word mark, so, the red dot of the ‘I’, which the applicant claims is distinctive in its other trade marks, is not part of the mark in question. The fact that the relevant consumers would potentially perceive a mark with a red dot and starting with ‘THINK’ as an indication that the commercial origin of the goods is the applicant is therefore not relevant in the present case. The question that remains is whether or not the element ‘THINK’ would be sufficient for the relevant consumers to perceive the mark as originating from the applicant. The Office considers this not to be the case, as the word ‘THINK’ is a commonly used word which does not add distinctiveness to the mark.

The Office therefore maintains that the mark ‘THINKAGILE’ would be perceived by the relevant consumers as merely a laudatory promotional message highlighting the positive aspects of the goods in question, namely that they are flexible and responsive and adapted to the consumers’ needs.

Similar marks previous registered

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).

The registered trade marks that the applicant highlights in its letter were either registered several years ago, are registered for software with a specific purpose or have been considered to have sufficient distinctive character in relation to the goods and services for which they were sought.

Acquired distinctiveness through use

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it. In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader ….

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages ….

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation ….

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied ….

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect ….

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

Evidence submitted

Articles from trade circles on the launch of the applicant’s new brand:

• Article: ‘Lenovo launches the largest data center portfolio in its history’, 30/06/2017, upgrademag.com (Annex collection 1).

• Blog article: ‘Research paper: Lenovo ThinkAgile CX Competes on Cost Economics and Time to Value’, 19/12/XXXX, moorinsightsstrategy.com (Annex collection 1).

• Article: ‘“Data centres are Lenovo’s third business engine”, says global chairman Yang Yuanqing’, 21/06/2017, Data-economy.com (Annex collection 1).

• Article: ‘Lenovo launches largest data centre portfolio in its history’, not dated, Smartcitieswordforum.com (Annex collection 1).

• Article: ‘Lenovo appoints ThinkSystem and ThinkAgile Data Center Solutions’, 05/07/2017, Bloomberg.com (Annex collection 1).

• Article: ‘Lenovo Targets Data Center and PC market with expanded portfolio’, 21/06/2017, Silicon.co.uk (Annex collection 1).

• Graphic illustration: not dated, Silicon.it (Annex collection 1).

• Article: ‘“ThinkSystem” e “ThinkAgile”, Lenovo rilancia la scommessa data center’, 23/06/2017, Silicon.it (Annex collection 1).

• Article: ‘Degliesposti (Lenovo), “Integrazionen conclusa, ora focus sul mercato con ThinkAgile CX e HX”’, 22/11/2016, Silicon.it (Annex collection 1).

• Article: ‘Levono präsentiert de Data-Center-Sparten ThinkAgile und ThinkSystem’, 23/06/2017, Tim-vad.com (Annex collection 1).

An article in which the author has played with the word ‘THINK’ as appears in the applicant’s brands:

• Article: ‘Lenovo re-launches data centre range with two new ThinkThing lines’, 21/06/2017, theregister.co.uk (Annex 2).

Internet searches showing hits relating to the applicant’s goods:

• Internet search results on the word ‘Thinkagile’ from google.de (Annex collection 2).

• Information sheet on the Lenovo ThinkAgile CX series, not dated (Annex collection 2).

• Internet search results from www.crn.com (Annex collection 2).

• Product info ‘Lenovo ThinkAgile overview’ from system.lenovofiles.com (Annex collection 2).

• Article ‘Lenovo ThinkAgile brand debuts, adds converged option’, 17/10/2016, from searchonvergedinfrastructure.techtarget.com (Annex collection 2).

• Product guide ‘Lenovo ThinkAgile SX2200N’, 21/03/2017, from Lenovopresss.com (Annex collection 2).

Applicant’s arguments

The applicant argues that the mark has acquired distinctiveness through use, as the launch of the applicant’s new brand is frequently the subject of conversation in the industry.

Assessment of the evidence submitted

For a mark to be considered to have acquired distinctiveness through use under Article 7(3) EUTMR, the applicant must show that the relevant consumer would perceive the mark in question as originating from the applicant.

To show that the mark has acquired distinctiveness it is not only necessary to show significant sales in the relevant territories with a clear link to the mark applied for, but also that the relevant public perceives the mark as an indicator of trade origin, for instance through a market survey. Statements from chambers of commerce and industry, or other trade or professional organisations could also give weight to the applicant’s claim (10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 56-59). No such documents have been filed.

Furthermore, the evidence must prove that distinctiveness through use was acquired prior to the EUTM application’s filing date. The applicant filed the application on 01/03/2017, and of the evidence submitted only two articles are dated prior to this date.

Therefore, in an overall assessment, the Office cannot but conclude that the evidence submitted is insufficient to demonstrate that, in the eyes of the relevant public, the mark ‘THINKAGILE’ has become distinctive in relation to the goods for which registration is sought, as a result of the use made of it. Consequently, acquired distinctiveness under Article 7(3) EUTMR has not been proven.

Further proceedings

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 16 416 901 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.

Anja Pernille LIGUNA