Refusal of application for a European Union trade mark

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

Alicante, 07/06/2017

STUDIO TORTA S.p.A.

Via Viotti, 9

I-10121 Torino

ITALIA

Application No:	016424806
Your reference:	MC4229/dab
Trade mark:	TENABLE.IO
Mark type:	Word mark
Applicant:	TENABLE NETWORK SECURITY, INC. 7021 COLUMBIA GATEWAY DRIVE, SUITE 500 COLUMBIA, MARYLAND 21046 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/03/2017, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for all the goods and services applied for. The objection letter is attached.

For ease of reference the contested goods and services are:

Class 9 Computer software used to assess the vulnerability of computer software and to prevent intrusion into computer networks, websites, and other computer systems as well as related computer hardware; computer software that provides security measures and performance tests for software applications delivered over the internet.

Class 41 Training in the use and operation of computer security software and hardware.

Class 42 Scanning, auditing and monitoring computer systems and networks for vulnerabilities and other security risks; Maintenance of computer software relating to computer security and prevention of computer risks.

The applicant submitted its observations on 04/05/2017 which may be summarised as follows:

• The word "TENABLE" is not used in the common parlance or in the sector at issue to mean protecting/defending computer programs or computer devices.

• The expressions "the computer is tenable" or "the computer software is tenable" are not in use in the English language.

• Although the dictionary quoted by the Office defines the word "TENABLE" as a term with the meaning of “able to be maintained or defended”, this word is used to designate an argument, point of view, or situation, rather than devices.

• The term Tenable has various definitions depending on the dictionary consulted.

• None of the extracts from dictionaries regarding the meaning of “TENABLE” indicate that the expression as such has a connotation in the digital field.

• The word TENABLE does not describe any specific and precise characteristic of the goods and services concerned and it does not have any immediate and descriptive meaning in the context of such goods and services.

• The Office also sets out that the term "IO” Stands for "Input/Output” and describes any operation, program, or device that transfers data to or from a computer. We note that the word IO has many meanings not only INPUT/OUTPUT.

• In the case of “IO” standing for “INPUT/OUTPUT” the entire expression “TENABLE INPUT OUTPUT” has no meaning and it is grammatically incorrect.

• The consumer will perceive the trademark TENABLE.IO as unusual and uncommon when related to the products and services in classes 9, 41 and 42.

• The whole sign TENABLE.IO should not be considered as a term in use in common language or descriptive of the products/services at issue in classes 9, 41 and 42.

• The word TENABLE.IO does not exclusively consist of a term related to the goods/services at issue since it does not directly and immediately describe characteristics of the related goods/services and is thus eligible for registration.

• A number of trademarks containing the term TENABLE have been granted by EUIPO (in the name of the applicant, namely TENABLE NETWORK SECURITY No. 1 256 216, TENABLE NETWORK SECURITY No. 10 921 501.

• The parallel Application "TENABLE.IO" nr. 87296537 and the registrations “TENABLE” No. 2977079, “TENABLE” No. 2484986, “TENABLE NETWORK SECURITY” No. 2977079, filed by the Applicant in the United States were not objected by the US Patent and Trademark Office on the grounds of lack of distinctiveness. Since the United States is an English speaking country, this also suggests that there is a reason to reconsider the case at issue.

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 which underlies 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 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 (see Judgment of 23 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’,

In the present case, the goods and services covered by the mark applied for are specialised products mainly aimed at a professional public. In the light of the nature of the goods and services in question, the awareness of the relevant public will be high.

Moreover, since the mark applied for consists of an English language word and abbreviation, namely TENABLE.IO the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

The Office is of the opinion, contrary to what the applicant says, that the term TENABLE.IO is indeed descriptive of the kind, characteristics and intended purpose of the goods and services claimed.

The applicant submits that the expression ‘TENABLE’ is not used in the common parlance or in the sector at issue with regards to protecting/defending computer programs or computer devices, adding that the expressions ‘the computer is tenable’ or ‘the computer software is tenable’ are not in use in the English language.

The applicant submits that the term TENABLE is actually used I order to designate an argument, point of view, or situation, but not in relation to devices as suggested by the examiner. Furthermore, the applicant puts forward that the term TENABLE has various dictionary meanings depending on the dictionary consulted and adds that in fact none of them, no matter which is consulted, specifically indicates that the expression has an association within the digital field.

Likewise, with regards to the additional feature contained in the mark, namely the abbreviation ‘IO’, the applicant submits that this also has various different meanings in addition to the one quoted by the examiner (Input/Output - describing any operation, program, or device that transfers data to or from a computer). Thus, the applicant submits that taking the mark as a whole, namely TENABLE.IO, the examiner’s suggestion that this would be seen by the relevant consumer as ‘TENABLE Input Output’ conveys no clear meaning and is not grammatically correct and as such, the consumer will perceive the trademark TENABLE.IO as unusual and uncommon when used in relation to the goods and services at issue on the basis that it is not a common expression and does not directly and immediately describe characteristics of the related goods and services. The Office has carefully considered the applicant’s submissions but regrettably cannot agree.

The expression applied for consists of the combination of two readily identifiable dictionary terms, namely ‘TENABLE’ and ‘IO’. The Office has concluded, for the reasons previously provided, that the words applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive the mark as a whole as unusual but rather as a meaningful expression.

Furthermore, as pointed out by the examiner in the Notice of Refusal, the expression TENABLE.IO is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer, in relation to goods and services claimed.

As a result, the Office maintains that taken as a whole, the expression TENABLE.IO immediately informs consumers without further reflection that the contested goods and services are directly concerned with, and/or directly relate to the defence/protection of operations, programs, or devices that transfer data to or from a computer. Therefore, as a whole, the mark consists essentially of an expression that conveys obvious and direct information regarding the kind, characteristics and intended purpose of the goods and services in question.

Thus, the Office remains of the viewpoint that when the mark TENABLE.IO is used in connection with the contested goods and services it would be reasonable to accept that the relevant consumer is likely to perceive the expression in a descriptive sense rather than as a badge of sole trade origin.

According to Collins English Dictionary the word ‘TENABLE’ means, inter alia, able to be maintained, or defended (www.collinsdictionary.com/dictionary/english/tenable); as regards to the meaning of the abbreviation ‘IO’, according to ‘Tech Terms’ this stands for, ‘Input/Output’ and describes any operation, program, or device that transfers data to or from a computer (https://techterms.com/definition/io). Thus, it is apparent from these definitions that the combination of the word and abbreviation TENABLE.IO will clearly indicate to the relevant public certain characteristics of the goods and services in question, as previously discussed. Consequently, the Office remains of the opinion that the relevant consumer will understand the mark as a meaningful expression.

The goods and services at issue appear to all directly relate to the protection of device software and hardware from risk and attack. Thus it has to be put forward that the word ‘TENABLE’, meaning something capable of being defended against attack, when combined with the abbreviation ‘IO’ meaning Input/Output with regards to any operation, program, or device that transfers data to or from a computer, sends a clear message that the goods and services are directly concerned with, and/or directly relate to, the defence/protection of operations, programs, or devices that transfer data to or from a computer.

As such, a mark which, as in the case at hand, would simply be seen as a descriptive term, cannot guarantee the identity of the origin of the goods and services at issue to the consumer or end-user by enabling him/her, without any possibility of confusion, to distinguish the said goods and services from others which have a different origin. As such, the subject mark is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and services, 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 acquisition (see 10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 33 and the case-law cited; 03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 20).

Thus, the Office cannot agree that on seeing the expression TENABLE.IO on the goods and services concerned, (including the packaging of such goods) that consumers would not consider the combination of terms as descriptive of a characteristic of the goods and services at issue, but rather would associate the sign with the commercial origin of the goods and services in question. Indeed, with regards to packaging, consumers are accustomed to seeing not only trade marks, but also descriptive indications regarding particular features of the goods.

As such, the Office cannot agree that the expression TENABLE.IO would be perceived by the relevant consumer as an unusual and distinctive expression created by the applicant. Furthermore, it is important for the applicant to note that whether or not the sign is used on the market at the time of the application, is irrelevant, for the purposes of Article 7(1)(c) EUTMR and as follows from Article 7(1)(c) EUTMR itself, 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 and services such as those in relation to which the application is filed, or of characteristics of those goods and services. It is sufficient, as the wording of that provision itself indicates that such signs and indications could be used for such purposes. A word sign must thus be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods and services concerned (23/10/2003, C-191/01 P, Doublemint, EU:C:2003:579, § 32).

Likewise, for a mark to fall under the prohibition of Article 7(1)(c) EUTMR, it is not necessary that the characteristics of the goods and services concerned are described in full detail and in a quantified way. Therefore, with regards to the applicant’s claim that the expression TENABLE IO (tenable input/output) is not grammatically correct, it has to be put forward that a sign does not become ‘vague’ or ‘merely allusive’, simply because it does not provide a full and comprehensive description of the characteristics of the goods or services concerned. Rather, for a sign to be refused registration under Article 7(1)(c) EUTMR, what is essential is whether or not it contains an unequivocal message serving to identify a characteristic of the goods and services in question and that the sign can be used for descriptive purposes (see 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 97).

Furthermore, it is also important to recall that it is irrelevant whether or not the expression in question has more than one meaning. When considering the possible meanings of a sign, it is necessary to ascertain whether, in normal usage, from the relevant public’s point of view, that sign may serve to designate, either directly or by reference to one of their essential characteristics, the goods and services in respect of which registration is sought (see, to that effect, ‘Baby-Dry’, at § 39). Accordingly, for the purpose of deciding that a part of a sign is descriptive, it is sufficient that, as in the present case, one of the possible meanings of a component of the sign designates a characteristic of the goods and services concerned.

Thus, the mere combination of the terms TENABLE and IO, each of which are descriptive of characteristics of the goods and services concerned remains descriptive of those characteristics. Merely bringing such elements together, separated by a “full-stop” merely highlighting the fact that the mark is composed of two separate terms, without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve in trade to designate characteristics of the goods and services concerned.

It has to be reiterated that it is irrelevant whether or not the term TENABLE.IO is an existing English expression used in connection to the goods and services claimed. As the Court of Justice has stated, a trade mark consisting of a neologism composed of word elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics unless there is a perceptible difference between the neologism 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 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. This is clearly not the case here, since the merging of the two terms is nothing more than the sum of the two components.

It is thus maintained that the relevant public will immediately and without further thought understand the sign TENABLE.IO as a reference to characteristics of the goods and services at issue. Furthermore, it can be reasonably argued that other competitors would legitimately wish to use the same combination of words for the promotion of their own goods and services. It must remain possible for competitors to use, separately or combined the words TENABLE.IO when goods and services comparable to those applied for are offered to the relevant public.

The contested goods and services at issue are computer software used to assess the vulnerability of computer software and to prevent intrusion into computer networks, websites, and other computer systems as well as related computer hardware; computer software that provides security measures and performance tests for software applications delivered over the internet; training in the use and operation of computer security software and hardware; scanning, auditing and monitoring computer systems and networks for vulnerabilities and other security risks; maintenance of computer software relating to computer security and prevention of computer risks. The Office maintains that as all these goods and services clearly relate to computer security and prevention of computer risks and thus are able to protect, defend and maintain (tenable) input and output operations, programs and devices (IO).

Furthermore, the Office is of the opinion that the goods and services at issue would tend to be directed at a professional public who when buying/using the goods and services concerned would spend a great deal of time and forethought considering the merits of one producer’s products compared to another before one is finally chosen. As such, the goods and services are likely to be a considered purchase and the relevant public would undertake the relevant purchase, use, etc with a higher than average level of care and attention resulting in a heightened level of awareness. However, that said, it has to be put forward that there is no evidence to suggest that the relevant consumer in the area of the goods and services concerned would be particularly trade mark ‘educated’ or savvy and would instantly perceive TENABLE.IO as a trade mark in relation to the contested goods and services rather than as a descriptive message in relation to particular characteristics of the goods and services.

On a similar note, it must be held that the fact that the relevant public is a professional/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 public is by definition higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, paragraph 48).

As regards to the argument that other similar applications containing the term ‘TENABLE’ have been registered by the EUIPO, the Office has to point out that with regard to the mark (EUTM 10 921 501) referred to by the applicant, this previous registration is not on all fours with the mark at issue on the basis that it is not simply a word mark as it contains figurative elements that render the mark distinctive as a whole. Furthermore, with regards to the other quoted EUIPO registration, namely TENABLE NETWORK SECURITY No. 1 256 216, the Office informs the applicant that no record of this registration can be found on the EUIPO registration database.

In any case, it has to be put forward that according to settled case law, ‘decisions concerning the 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 (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T 36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T 106/00, ‘STREAMSERVE’, paragraph 67).

It must be stated that the EUIPO is under a duty to exercise its powers in accordance with the general principles of European Union law. Even though the principle of equal treatment must be applied, it must be applied in a way consistent with the principle of legality. For reasons of legal certainty and precisely 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.

Moreover, such an examination must be undertaken in each individual case depending on the factual circumstances and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T- 248/11, Pure Power, EU:T:2013:333, § 50; 10.03.2011, C-51/10 P, 1000, EU:C:2011:139, § 73 to 77). Consequently, an applicant cannot rely, to his advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else (10/03/2011, C-51/10 P, 1000, EU:C:2011:139, § 76, 77; 12/02/2009, C-39/08 & C-43/08, Volks. Handy, EU:C:2009:91, § 18).

As regards to the US Patent and Trademark Office (USPTO) decisions detailed 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/international 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/international mark.

In conclusion, the argument in the present case concerns whether TENABLE.IO can be registered as a trade mark for the contested goods and services claimed in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the term is likely to convey to a relevant consumer of those goods and services, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated.

The Office confirms, for the reasons already given, that the mark TENABLE.IO conveys obvious and direct information regarding the kind, characteristics and intended purpose of the goods and services in question. The Office has to put forward that when the mark TENABLE.IO is used in connection with the contested goods and services it is reasonable to accept that the relevant consumer is highly likely to perceive the expression in a descriptive non-distinctive sense rather than as a badge of sole trade origin.

Accordingly, the Office remains of the viewpoint that it is hard to see what could cause the relevant public to take in and remember the expression TENABLE.IO as a sign intended to distinguish the commercial origin of the contested goods and services covered by the sign. When the sign is used in respect of those goods and services, the targeted public will merely perceive it as a meaningful expression, with an obvious descriptive message, but not as a trade mark.

Consequently, 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 TENABLE.IO 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.

Sam CONGREVE