Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)]

Alicante, 13/03/2018

GLAWE DELFS MOLL Partnerschaft mbB von Patent- und Rechtsanwälten

Postfach 13 03 91

D-20103 Hamburg

ALEMANIA

Application No:	017483108
Your reference:	ADLT029MEM
Trade mark:	Leading EDGE COMPUTING
Mark type:	Figurative mark
Applicant:	ADLINK TECHNOLOGY INC. 9F, No. 166, Jian Yi Road, Zhonghe District New Taipei City TAIWÁN

The Office raised an objection on 23/11/2017 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 17/01/2018 which may be summarised as follows.

1. The use of capital and lower case letters means that the ‘EDGE COMPUTING’ will be seen as one unit and the first word ‘Leading’ as a separate element. ‘EDGE COMPUTING’ has no descriptive meaning and is distinctive in relation to the goods.

2. The addition of ‘Leading’ does not make the ‘EDGE COMPUTING’ non distinctive. The addressed public is used to interpreting an adjective as a closer description of the expression that follows.

3. The Office has considered the first two words ‘Leading EDGE’ as one unit describing ‘COMPUTER’ which is based on an ‘analysing perception’ which the consumer will not apply. The addressed public will see the trademark as it is ‘EDGE COMPUTING’ as one optical unit and ‘Leading EDGE’ only being perceived on a second look, when the ambiguity will be understood as a clearly original double-meaning of the trade mark application.

4. Such ambiguity cannot be detrimental to the distinctive character of the trademark, but rather adds to the distinctive character.

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.

General remarks on Article 7(1)(c) EUTMR

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).

Observations of the applicant

1. The use of capital and lower case letters means that the ‘EDGE COMPUTING’ will be seen as one unit and the first word ‘Leading’ as a separate element. ‘EDGE COMPUTING’ has no descriptive meaning and is distinctive in relation to the goods.

The Office does not dispute the fact that ‘EDGE COMPUTING’ on its own would be considered distinctive. However when taking the mark as a whole, despite the fact that ‘Leading’ appears in lower case, it is noted that this element is very much present in the sign. In fact, it is the first verbal element in the sign and it is far from negligible given its considerable size and position.

The fact that ‘EDGE COMPUTING’ is in upper case and bold may shift the attention somewhat to these elements but the first word will not be overlooked, in particular taking into consideration that the level of attention for many of the goods in question will be higher than average given their price and technical nature. The Office holds that even for those goods where the attention will not be above average, the element ‘Leading’ which appears at the beginning of the sign, will be immediately perceived by the relevant consumer. The combination ‘Leading EDGE’ is very well known and its meaning is immediately perceived despite the use of upper and lower case characters.

2. The addition of ‘Leading’ does not make the ‘EDGE COMPUTING’ non distinctive. The addressed public is used to interpreting an adjective as a closer description of the expression that follows.

It is true that the consumer is used to interpreting adjectives as words that give more meaning to the expression that follows. However in this case, adding the word ‘Leading’ turns the meaningless and distinctive combination ‘EDGE COMPUTING’ into a meaningful and descriptive one in relation to the goods in question in Class 9, all of which are related to computing.

Class 9 Computer hardware; Recorded computer software; Data storage devices; Data processing apparatus; Handheld computers; Port ...Show moreable computers; Computers; Computer terminals; Bar code readers; Bar code scanners; Scanners; Personal digital assistants; Electronic book readers; Electronic data processing equipment; Calculating machines; Cash registers; Handheld computing devices; LCD [liquid crystal display]; Monitors (computer hardware); Computer screens; Computer touchscreens; Computer mainframes; Computer operating programs; Computer programmes (programs), recorded; Computer operating programs, recorded; Computer application software for mobile phones; Downloadable computer software applications; Computer firewall software; Work stations [computers]; Network communication equipment; Tablet computers; Network servers; Data carriers; Computer motherboards; Computer interface cards; Computer expansion cards; Network cards; Graphics cards; Programmable data access processor; Digital input and output recorder, Video capture cards.

It would seem more likely that the stylisation were added to the verbal elements ‘Leading Edge Computing’ rather than the word ‘Leading’ being added to the combination ‘EDGE COMPUTING’ as suggested by the applicant. In any case, it is immediately clear, without the need for further reflection, that the combination refers to highly advanced computing. As such it will be perceived as a laudatory slogan referring to the kind and/or quality of the goods in question, namely that they are advanced computing products.

3. The Office has considered the first two words ‘Leading EDGE’ as one unit describing ‘COMPUTER’ which is based on an ‘analysing perception’ which the consumer will not apply. The addressed public will see the trademark as it is ‘EDGE COMPUTING’ as one optical unit and ‘Leading EDGE’ only being perceived on a second look, when the ambiguity will be understood as a clearly original double-meaning of the trade mark application.

The Office does not agree with the above observation of the applicant but holds that the consumer will see the mark as a whole and will immediately capture the meaning of the words. No analysis is necessary to instantly understand the descriptive meaning of the words on the part of the relevant public.

In the present case, the use of upper case and bold to create a visual unit of ‘EDGE COMPUTING’ may well be perceived by the consumer, despite the fact that the typeface in question is basic . However, the word ‘Leading’ will also be immediately perceived without the need for the consumer to look twice as claimed by the applicant. Linked to the word ‘EDGE’, ‘Leading EDGE’ is instantly recognised as having the below meaning.

Leading edge: ‘The forefront or vanguard, especially of technological development’.

[as modifier] ‘leading-edge research’

Information extracted from the Oxford English Dictionary on 13/03/2018 at https://en.oxforddictionaries.com/definition/us/leading_edge

Given this dictionary definition, it cannot be denied that will be understood as referring to advanced computing goods or vanguard computing goods. There is no play with words or original double meaning that might render the mark distinctive. The stylisation is negligible and does not endow the trademark as a whole with any distinctive character.

4. Such ambiguity cannot be detrimental to the distinctive character of the trademark, but rather adds to the distinctive character.

The Office does not agree that the use of upper case/ lower case and bold on an otherwise standard typeface imbues any degree of ambiguity on the sign as a whole which is composed of a descriptive expression. On the contrary, the sign will be immediately and clearly understood as descriptive laudatory slogan the objective of which is to communicate a value statement related to the kind or quality of the goods in question. The relevant public will not tend to perceive any indication of commercial origin beyond the promotional information conveyed, which merely serves to highlight positive attributes of the goods in question, namely that they are the most advanced in the field of computing.

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 17 483 108 is hereby rejected.

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.

Lynn BURTCHAELL