Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 27/04/2018

TomTom Telematics B.V.

De Ruyterkade 154

NL-1011AC Amsterdam

PAÍSES BAJOS

Application No:	17 103 003
Your reference:	T1111/EM
Trade mark:	Seguimiento
Mark type:	Word mark
Applicant:	TomTom Telematics B.V. De Ruyterkade 154 NL-1011AC Amsterdam PAÍSES BAJOS

The Office raised an objection on 18/08/2017 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 18/10/2017, which may be summarised as follows.

1. The mark ‘SEGUIMIENTO’ has been used in Spain since 2013, in relation to the goods and services described in the trademark application

2. The domain name www.Seguimientogps.com was registered in 2010 by the company Coordina (Gestion Electronica Logistica, S.L.) (Annex B)

3. The company was later acquired by the applicant/TomTom group on 01 August 2013 (Annex B)

4. The domains www.Seguimientogps.com and www.Seguimientogps.es are redirected to the applicant´s/TomTom Telematics B.V webpage https://seguimientogps.telematics.tomtom.com (Annex C)

5. Movistar, a corporate brand of Telefónica S.A., is currently selling the TomTom solution under the mark SEGUIMIENTO on their website http://www.movistar.es/empresas/aplicaciones-digitales/seguimiento-gps (Annex D-1 & D-2)

6. In view of the above, the applicant concluded that the mark has acquired distinctiveness through use according to Article 7(3) EUTMR and respectfully requested the registration of the mark.

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.

General remarks

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).

//************\\

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

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).

In addition, 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 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).

Applicant´s remarks

In short, the applicant contended that the trade mark ‘SEGUIMIENTO’ has been used in Spain since 2013 in relation to the goods and services applied for. Moreover, the domain name www.seguimientogps.com was registered in 2010. Currently, Movistar, a corporate brand of Telefónica S.A., is selling the applicant´s solution under the mark ‘SEGUIMIENTO’ on their website http://www.movistar.es/empresas/aplicaciones-digitales/seguimiento-gps . Conclusively, the applicant contended that the mark has acquired distinctiveness through use according to Article 7(3) EUTMR.

Office´s comments

The Office has taken note of the applicant´s submitted remarks with the appertaining annexes as documentation (use of the name/mark ‘SEGUIMIENTO‘ since 2013 and the current sale of the applicant´s solution under the name/mark ‘SEGUIMIENTO’ by the company MOVISTAR.

However, the Office still maintains its position that the mark ‘SEGUIMIENTO’ - in accordance with the definition of/translation into English of the Spanish noun ‘seguimiento’ taken from Collins Dictionary, given in the Office´s notice of grounds for refusal, see following link:

Reverso Dictionary

has a clear descriptive meaning in relation to the goods and services applied for, thus indicating the quality and intended purpose of these goods and services at issue, namely that these are related to the tracking and/ or monitoring objects and vehicles.

Taking point of departure in the applicant´s reference to Annex D-1 informing about the applicant´s solution ‘SEGUIMIENTO’ being sold by the company ‘Movistar’, the Office also takes note of the descriptive use of the mark ‘SEGUIMIENTO’ in relation to the services offered, thus adjoining to the sign at issue the objects and vehicles to be tracked or monitored (unofficial translation into English of the excerpt made by the Office):

• SEGUIMIENTO GPS (series of products for tracking and following vehicles and persons via GPS tracking devices for vehicles and mobile phones

• SEGUIMIENTO CARCLICK (the first tracking device which you can attach in few seconds to the car)

• SEGUIMIENTO FLOTAS¹ (tracking on fleet of cars)(provided installation of the tracking device GPS Matrix MTX65 in the individual vehicle)

• SEGUIMIENTO MOVILES² (monitor and track information on the mobile phone activities made by your employees)

See the corresponding excerpt or presentation page from Annex D1 as submitted by the applicant:

Therefore, the Office is of the position that given the clear descriptive meaning of the sign which also renders it devoid of any distinctive character, the mark ‘SEGUIMIENTO’ is not capable of distinguishing the goods and services to which an objection has been raised within the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

//*********************\\

In addition to the abovementioned arguments, and in reply to the Office’s letter of 03/11/2017 with request for the clarification of the nature of your claim under Article 7(3) EUTMR, raised in your observations of 18/10/2017, you indicated on 03/01/2018 that this claim under Article 7(3) EUTMR is a principal claim.

In your claim, you indicate that the trade mark applied for has acquired distinctiveness through use in relation to all the goods in Class 9 and all the services in Class 35 and 38 applied for.

In support of your claim, you submitted evidence of use on 03/01/2018.

The evidence to be taken into account is the following:

• Annex A

Screen shot of a YouTube Video published 25/11/2010

• Annex B

Registration of domain name www.seguimientogps.com

• Annex C

Press release, 01/08/2013

• Annex D

Screenshot of the domain https://seguimientogps.telematics.tomtom.com

• Annex E

Movistar webpage

• Annex F.1, F.2 and F.3

Sales Brochures (2011, 2012)

• Annex G

User Manual, 2014

• Annex H

Current guidelines, February 2017

• Annex I

Price List, 2017

• Annex J

Advertisement

• Annex K

Screenshot of a promotional video of the product “Seguimiento”,

published 04/06/2012

General considerations

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).

Preliminary remarks and assessment of the submitted material

In the present case, since the mark is composed of a Spanish word, the

applicant has to prove that the sign has acquired distinctiveness

through use in Member States of the European Union where Spanish is an

official language, namely in Spain.

The burden of proof lies with the applicant, which claims that the sign

applied for has acquired distinctiveness and has been used in Spain at least since 2010. Furthermore, the relevant time period is prior to the EUTM application´s filing date, namely before 15/08/2017.

The Office has scrutinised the evidence and material submitted by the

applicant. However, based on the evidence and information filed by

the applicant, it is impossible to establish that the mark has acquired

distinctiveness in the relevant EU member state, namely Spain.

The Office highlights that, according to the General Court, a distinction

must be made between ‘direct proof’ of acquisition of distinctive

character (surveys, evidence on the market shares held by the mark, statements from other professional associations) and ‘secondary evidence’

(advertising material, duration of use) that are merely indicative of the

mark’s recognition on the market. Though secondary evidence may

serve to corroborate direct proof, it cannot substitute it.

The Office has taken note of the fact that no such direct proof of acquisition (surveys, evidence on the market shares held by the mark, statements

from other professional associations) of distinctive character has been submitted.

To sum up in brief, the material submitted consists of:

• Three sales brochures (one in general/without date and one for 2011, 2012 respectively) in Spanish,

• Two screenshots from YouTube from 2010, 2012 respectively, regarding the product ‘Seguimiento GPS’ and an advertisement without date regarding the said product,

• Excerpt from WHOis.net regarding the registration of the domain seguimientogps.com, a screenshot herefrom, and excerpts from the web site of ‘MOVISTAR’ with presentation of the applicant´s solutions/services

• A User Manual of 2014 apart from a Quick Guide and a Price List, both from 2017, in Spanish language for the product/the services ‘Seguimiento GPS’.

The Office has also taken note of the fact that all the evidence/material submitted refers practically always to the term ‘SEGUIMIENTO’ together with the adjoining descriptive term ‘GPS’ and not ‘SEGUIMIENTO’ on its own. As stated above in the section regarding the inherent distinctiveness, the term ‘‘SEGUIMIENTO’ is alternatively found on the applicant´s web site together in unison with other descriptive terms for the objects/vehicles to be tracked/monitored such as ‘CARCLICK’, ‘FLOTAS’ and ‘MOVILES’, as follows:

• SEGUIMIENTO GPS (series of products for tracking and following vehicles and persons via GPS tracking devices for vehicles and mobile phones

• SEGUIMIENTO CARCLICK (the first tracking device which you can attach in few seconds to the car)

• SEGUIMIENTO FLOTAS³ (tracking on fleet of cars)(provided installation of the tracking device GPS Matrix MTX65 in the individual vehicle)

• SEGUIMIENTO MOVILES⁴ (monitor and track information on the mobile phone activities made by your employees)

The probative value of the submitted screenshots from YouTube and excerpts from the webpage of the applicant and of the third party ‘MOVISTAR’ are very limited, as such printouts are merely a still picture of how the web site or the YouTube video looks at that exact moment and can without difficulties be changed from one moment to the other.

The applicant had to show that, in the perception of the relevant

public, the sign applied for, ‘SEGUIMIENTO’, has been used so intensively and in such a way as to allow the consumer, through the sign on its own, to associate the goods and services at issue with the applicant, rather as a reference to, or a description of a quality of these goods and services, namely that these serve for the purpose of tracking and monitoring objects, vehicles, including staff people.

Therefore, as stated above, the Office concludes that the evidence which is presented is much too insufficient and insignificant to demonstrate that, in the eyes of the relevant public, the sign applied for has become distinctive in relation to the goods and services objected to, as a result of the use made of it in the relevant territory of the European Union, namely Spain. Consequently, acquired distinctiveness under Article 7(3) has not been proven.

Based on the above, it must be held that the evidence submitted by

the applicant, especially considering the descriptiveness of the mark and

the nature of the use of the sign ‘SEGUIMIENTO’ only used in unison with other descriptive terms, primarily with GPS, does not make it possible to establish that the mark applied for alone had acquired distinctive character in the relevant part of the European Union through use, within the meaning of Article 7(3) EUTMR, at the time when the application for the registration was filed.

Conclusion

For the abovementioned reasons, your claim that the trade mark applied for has acquired distinctive character through use pursuant to Article 7(3) EUTMR is rejected.

For the reasons mentioned above in this decision, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 103 003 is hereby rejected for all the goods and services claimed, namely:

Class 9 Telematics apparatus, namely, wireless Internet devices which provide telematics services and have a cellular phone function; Navigation apparatus for vehicles in the nature of on-board computers; Vehicle locating, tracking, monitoring and security system comprised of an antenna and radio transmitter to be placed in a vehicle; Global positioning system consisting of computers, computer software, transmitters, receivers, and network devices; Satellite navigational system, namely, a global positioning system; Vehicle locator and recovery device programmed to use global positioning systems and cellular telecommunications; Mobile computing and operating platforms consisting of data transceivers, wireless networks and gateways for collection and management of data; computer software for operating satellite navigational systems and global positioning systems, and for use of global positioning systems for tracking, locating, monitoring and security of vehicles and objects; computer software in the field of fleet management services.

Class 35 Logistics management in the field of tracking, locating and monitoring vehicles; computerized database management; business management services, namely managing fleet of commercial motor vehicles, vehicle performance, and workforce; business consulting services relating to operations management services, logistics, distribution solutions, vehicle maintenance, and optimised driving costs.

Class 38 Telecommunications services, namely transmission and delivery of digital data all in particular for navigation systems, devices enabling wireless access to vehicle data, computerized databases; wireless transfer of data; electronic transmission of data and documents via computer terminals and mobile applications; technical consultancy in connection with the above 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.

Finn PEDERSEN