Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/01/2018

BOEHMERT & BOEHMERT Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte

Kurfürstendamm 185

D-10707 Berlin

ALEMANIA

Application No:	016523201
Your reference:	S61393EU
Trade mark:	ADVISOR LINK
Mark type:	Word mark
Applicant:	salesforce.com, inc. The Landmark @ One Market Street, Suite 300 San Francisco, California 94105 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 17/05/2017 pursuant to Article 7(1)(b) and (c) 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 08/09/2017, which may be summarised as follows.

1. The mark is not descriptive because the public will not understand the word ADVISOR LINK in the way as described by the Office.

2. The word ‘link’ has more than one meaning.

3. The mark applied for has no direct connection with the services applied for

4. The Office has registered similar marks in the past

Pursuant to Article 94 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 mark is not descriptive because the public will not understand the word ADVISOR LINK in the way as described by the Office

The applicant argues that the mark is not descriptive because the public will not understand the word ‘ADVISOR LINK’ as a link from a hypertext document to a person who gives advice in a particular field, activated by clicking on a highlighted word or image. The Office believes that the mark applied for cannot function as a trade mark because the relevant public will not perceive the mark as a trade mark, as a business identifier, but rather as a word combination that describes the function of the goods and services – linking the users of the goods and services to an advisor.

The Office believes that there is nothing in the mark that can be considered distinctive, because the mark would simply be perceived as an indication of the functions of the goods and services.

The word ‘link’ has more than one meaning

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.)

Therefore the fact that one of the words, or the mark as a whole has a different meaning than the one described by the Office does not automatically mean that the mark is distinctive. It is the opinion of the Office that the mark is descriptive and non-distinctive for the goods and services applied for.

The fact that the word ‘LINK’ can have several meanings is irrelevant. The mark as a whole in relation to the goods and services applied for is considered to be descriptive and non-distinctive.

The mark applied for has no direct connection with the services applied for

The applicant argues that hyperlinks have no direct connection with the services applied for. The applicant holds that the mark will be understood by the relevant consumer in the sense that the goods and services could be useful for creating a connection to, or between advisors.

The Office notes that the word ‘link’ in the context of IT is usually understood as a hyperlink, however one cannot fail to notice the similarity between the function of a hyperlink and the literal meaning of the same word – that of creating a connection, because really and truly what a hyperlink does is to link and create a connection between something and another.

Therefore, even if one had to take into account the meaning being suggested by the applicant, this will still not be far removed from the meaning the Office has suggested, namely that there will be a ‘link’ with an advisor. The mark as a whole is still considered to be descriptive and non-distinctive, and thus cannot function as a trade mark.

The Office has registered similar marks in the past

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).

In this regard the Office notes that the marks being cited by the applicant are all marks which contain the word ‘Advisors’. The mere fact that the word ‘Advisor’ is included in the mark applied for does not make the mark similar to the ones cited by the applicant. The word ‘advisor’ does not render the mark descriptive and non-distinctive. It is the combination of the words ‘advisor’ and ‘link’ which makes the mark descriptive and non-distinctive for the goods and services applied for.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 16 523 201 is hereby rejected for all the goods and services claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Alistair BUGEJA