Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/01/2018

ZEUS ENTERPRISE LTD Private Limited Company

1ST FLOOR 16-18 MONUMENT STREET

LONDON EC3R 8AJ

REINO UNIDO

Application No:	017160318
Your reference:
Trade mark:	CUSTOMER JOURNEY OPTIMISATION
Mark type:	Word mark
Applicant:	ZEUS ENTERPRISE LTD 1ST FLOOR 16-18 MONUMENT STREET LONDON EC3R 8AJ REINO UNIDO

The Office raised an objection on 12/09/2017 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 13/11/2017, which may be summarised as follows:

• There were no definitions of the expressions ‘CUSTOMER JOURNEY’, ‘JOURNEY OPTIMISATION’ or ‘CUSTOMER JOURNEY OPTIMISATION’ in the Oxford English Dictionary on 26/10/2017, which is deemed to be the most comprehensive and descriptive English dictionary. In addition, there is no legal definition of ‘CUSTOMER JOURNEY OPTIMISATION’ in any legally binding act. The meaning of the sign as an ‘optimal relationship between a consumer and a product’ is rather inapplicable to the broad categories of the services in Class 42 for which registration is sought.

• The expression ‘CUSTOMER JOURNEY OPTIMISATION’ is not one that is usually used. On the website serpstat.com, on 26/10/2017, no data on the expression ‘customer journey optimisation’ could be found.

• Similar word marks have been registered, such as ‘BASIS RESOURCE OPTIMIZATION’ for services in Class 35 (No UK 2 526 796) and ‘OPTMIZATION MATTERS’ for services in Classes 35 and 39 (TMA 701 172).

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).

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).

It is not necessary to prove that a sign is the subject of a dictionary entry for it to be refused protection. With regard to composite expressions, dictionaries do not include all possible combinations of words. What matters is the ordinary and plain meaning for the relevant consumer. It suffices that the expression is meant to be used, or could be understood by the average English-speaking consumer and specialised English-speaking consumer, as a description of the characteristics of the services for which registration is sought. In the present case and as stated in the notification of 12/09/2017, the sign ‘CUSTOMER JOURNEY OPTIMISATION’ will be understood by relevant consumers without any analytical process as an optimal relationship between a consumer and a product, brand or company, because the meaning of the aforementioned sign is clear to any English-speaking consumer (both average and specialised), who will immediately and without any difficulty establish a direct and specific link between this mark and the characteristics of the services to which an objection has been raised.

Moreover, the applicant has applied for specific services that are related to, inter alia, sales opportunities, price suggestions, and hosting and maintaining online websites for others to help marketers predict and adapt to visitors’ behaviour. Therefore, access to the software and the advice provided by the applicant would allow certain marketers to find the best/optimal relationship between customers and a product or company. In the expression ‘CUSTOMER JOURNEY OPTIMISATION’, there is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as a grammatical analysis, before they would understand the meaning of the mark in relation to the services in question.

The applicant points out that the use of the expression ‘CUSTOMER JOURNEY OPTIMISATION’ is rather limited and refer to the fact that, on serpstat.com (a search engine optimisation website) on 26/10/2017, no data on the expression ‘customer journey optimisation’ could be found; this is not sufficient to conclude that the sign is distinctive for the applicant’s services and cannot alter the Office’s argument that the sign applied for describes the type and intended purpose of the services and is devoid of any distinctive character. As explained above, there is no need for the signs and indications composing the mark to 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.

Moreover, in relation to the internet searches referred to by the applicant, the Office considers that, while internet examples might be a useful aid when evaluating the descriptiveness of a word or a mark, the descriptiveness of the mark does not depend on whether or not the expression is commonly used on the internet. Even if it were uncommon to use the expression ‘CUSTOMER JOURNEY OPTIMISATION’ in relation to the services concerned, 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).

As regards the national decisions referred to 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 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 mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the services of one undertaking from those of its competitors.

Consequently, taken as a whole, the sign for which protection is sought is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods and services to which an objection has been raised within the meaning of Article 7(1)(b) and (c) and Article 7(2) EUTMR.

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 17 160 318 is hereby rejected for all the 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.

Moises Paulo ROMERO CABRERA