Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 09/04/2018

KILBURN & STRODE LLP

Lacon London

84 Theobalds Road

London WC1X 8NL

REINO UNIDO

Application No:	016891905
Your reference:	BTS/CM/T111700EM
Trade mark:	SPEECH-TO-MEANING
Mark type:	Word mark
Applicant:	SoundHound, Inc. 5400 Betsy Ross Drive Santa Clara CA 95054 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 14/12/2017 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 14/02/2018, which may be summarised as follows:

• The mark has some originality and is distinctive and unique; it introduces an unexpected conceptual intrigue or surprise to the average consumer. It is an unusual juxtaposition of two words and the average consumer would need to make a cognitive interpretive effort in relation to the sign and the goods.

• The applicant claims the mark to be at most merely suggestive, or evocative, and does not enable the relevant public as to immediately perceive, the relevant services from one of their characteristics.

• The attention of the average consumer in respect of the software such as for driving, advertising and natural language domains would be higher than for every day consumer goods and services.

• The applicant claims that no other competitors make use of the same combination. The internet search shows the applicant’s existing use of the mark. There are no results showing the descriptive or generic examples.

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.

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 Office will now address the applicant’s arguments:

The Office has noted the applicant’s submission. However, the Office cannot find anything unusual or distinctive about the mark applied for. Without any proof that the mark has become distinctive through long and extensive use, it is believed that the mark, prima facie, will not function as a badge of trade origin.

The Office is of the opinion that when taken as a whole, the meaning of the term ‘SPEECH-TO-MEANING’ will be clear to any English-speaking consumer who will immediately and without any difficulty establish a direct and specific link between the mark and the specified goods and services for which registration is being sought, namely that, as explained in the initial notification, they are goods and services incorporate complementary, or closely connected, voice recognition functionality and/or services. It is, therefore, the Office’s view that the term ‘SPEECH-TO-MEANING’ is readily intelligible when taken in conjunction with the specified goods and services applied for, and viewed by the relevant consumer, who will see the phrase ‘SPEECH-TO-MEANING’ merely as a characteristic of the goods being provided rather than an indication of trade origin.

It remains the Office’s viewpoint that the expression applied for is made up of ordinary words, immediately understandable to any person. The mark SPEECH-TO-MEANING has a clear meaning, resulting from the combining of words that can be found in dictionaries and thus is composed of a sequence of ordinary English words that could easily be said as part of everyday spoken language, and is constructed according to basic rules of English grammar.

The Office is of the position that the mark ‘SPEECH-TO-MEANING’ is more than allusive in relation to the goods and services objected for. The mark will simply be perceived by the relevant public as describing kind, quality and intended purpose of these goods and services. Considering its clear descriptive meaning, the mark is therefore not capable of distinguishing the goods and services applied for under art. 7(1)(b) EUTMR.

As regards the applicant’s third argument, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the goods and services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T 130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

It must be held that the fact that the relevant public is a 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 specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C 311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

As regards the applicant’s last argument that no other competitors make use of the same combination, ‘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).

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.

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 16 891 905 is hereby rejected for the following goods and services:

Class 9 Computer software; mobile application software; databases; software applications; software for use in advertising; computer programmes (downloadable software); computer e-commerce software; computer software for use in connection with affinity programmes and loyalty programmes; computer software for use in connection with sales and promotional incentive schemes; computer games software; audio/visual and photographic devices; computer search engine software; computer software for use in searching via text, sound, speech, and musical queries; computer software for use in recognizing and identifying sound, speech, and music by comparing input samples with known samples; computer software for display of text, graphics, and lyrics; communications equipment; data processing equipment and accessories; speech recognizers; speech processors; speech synthesizers; speech recognition apparatus; speech processing equipment; speech analytics software; speech recognition software; voice recognisers; voice recognition software; biometric voice recognition systems; personal digital assistants; computer software for audibly controlling a computer and the operation thereof; natural language processors; software for natural language understanding; virtual assistants, namely, personal digital assistants and software; digital assistants, namely, personal digital assistants; software for providing application programming interfaces for natural language processing; speech-enabled robots, namely, robots with artificial intelligence which can receive spoken commands; voice-controlled embedded systems, namely, software systems which can receive spoken commands; handsfree vehicles interface systems; mobile virtual assistant devices; speechenabled point-of-sale purchase control systems; voice-controlled audio or audio-visual entertainment or infotainment devices; speech-enabled navigation systems; speech-enabled information kiosks and software for such; voice-controlled food preparation or delivery systems and software; computer software, communications equipment, data processing equipment and accessories, and scientific apparatus and instruments for use in vehicles; computer software, communications equipment, data processing equipment and accessories, and scientific apparatus and instruments to optimise user experience whilst driving.

Class 35 Online retail store services in the field of entertainment featuring links for purchasing musical works, downloadable ringtones, pre-recorded audio and audio-visual works; advertising services; promotional services; advertising services, namely, providing advertising space on web sites and mobile applications accessible via the global computer network and via telecommunication networks; promoting the goods and services of others by disseminating advertisements via a global computer network and via telecommunication networks to web browsers and mobile applications; data processing services; collection and systemisation of business data; advertising services via software and mobile applications; advertising, marketing and promotional consultancy, advisory and assistance services; administrative data processing; business data analysis; analysis of audible queries; processing of spoken queries; selection of responses for virtual assistants; promoting natural language domain; promoting goods and services described by natural language domain grammars.

Class 38 Electronic transmission of streamed and downloadable audio and video files, and text files, via computers and other communications networks; delivery of messages by electronic transmission; providing on-line bulletin boards and community forums for the transmission of messages among computer users concerning entertainment, music, concerts, videos, and lyrics; webcasting services; transmission of data and telecommunications; communication services; telecommunication services; air to ground telecommunication services; satellite broadcasting and communication services; electronic transmission of data; message transmission and handling; telecommunications; provision of access to electronic messaging systems; provision of access to databases via the Internet; text messaging services; transmission of sound, images, text messages, information and other data via mobile networks, including SMS; transmission of sound, images, text messages, information and other data via email and computer networks; electronic transmission of virtual assistant queries and responses; data communications through application programming interfaces; provision of access to data through telecommunications networks using application programming interfaces; transmission of query requests or responses of virtual assistants via mobile networks; electronic transmission of streamed and downloadable audio and video files, and text files, via computers and other communications networks for use in vehicles; electronic transmission of streamed and downloadable audio and video files, and text files, via computers and other communications networks to optimise user experience whilst driving; communication services for use in vehicles; electronic transmission of data to vehicles; transmission of sound, images, text messages, information and other data via email and computer networks to vehicles.

Class 42 Computer services, namely, providing search engines for obtaining data on a global computer network; computer services, namely, providing site search engines for locating information within a web site; providing temporary use of online, non-downloadable site search engine software for locating information within a web site; providing temporary use of online, non-downloadable software for use in searching via text, sound, speech, and musical queries; computer services in the nature of providing customized web pages featuring user-defined information, personal profiles and other information; providing search engines, namely, searching, browsing and retrieving information and other resources available on global computer networks for others; scientific research services; natural language domain grammar development; customization of virtual assistants; development of speech enabled embedded systems; research and development of robot assistants; scientific research and development of hands-free mobile human machine interfaces; scientific research and development of voice controlled autonomous vehicles; scientific research and development of speech-based control of embedded systems; computer services, namely, providing search engines for obtaining data on a global computer network, in vehicles; computer services, namely, providing search engines for obtaining data on a global computer network to optimise user experience whilst driving; scientific, industrial and technological design services relating to vehicles and to optimise user experience whilst driving; data analytics and reconciliation services; data processing services, data analytics and reconciliation services for use in vehicles; data processing services, data analytics and reconciliation services to optimise user experience whilst driving; technical consultancy services relating to communications; provision of speech recognition services; provision of natural language processing services.

Class 45 Online social networking services; licensing natural language domain grammars; natural language domain usage rights management; online social networking services in vehicles and to optimise user experience whilst driving; intellectual property licensing services and computer software licensing relating to software used in vehicles and to optimise user experience whilst driving.

The application may proceed for the remaining goods and services, namely for:

Class 9 Media content; pre-recorded media content; recorded data files; electronic publications (downloadable); DVDs, CDs, records, discs, tapes, cassettes, cartridges, cards and other carriers, all bearing or for use in bearing sound recordings, video recordings, data, images, games, graphics, text, programs or information; magnetic data carriers; downloadable electronic publications provided on-line from databases or the Internet; scientific apparatus and instruments.

Class 35 Market research; business consultancy and advisory services; commercial administration in the licensing of intellectual property.

Class 42 Advisory services relating to energy efficiency; advisory services relating to scientific research; advisory services relating to scientific instruments; consultancy relating to technological services in the field of search engines and data gathering; technological consultancy; research and development of new products; scientific research and analysis; scientific research for medical purposes; scientific and technological design; scientific and industrial research; scientific and industrial research in particular in the field of electrical devices.

Class 45 Intellectual property licensing services; computer software licensing; licensing of technology; licensing of patents; licensing of franchise concepts; licensing access to application programming interfaces.

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.

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