Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 14/09/2018

Bomhard IP, S.L.

C/Bilbao, 1, 5º

E-03001 Alicante

ESPAÑA

Application No:	017484924
Your reference:	10717GC/sh
Trade mark:	Micro Fulfillment
Mark type:	Word mark
Applicant:	CommonSense Robotics Ltd. Hanegev 5 Tel-Aviv 66186 ISRAEL

The Office raised an objection on 23/11/2018 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 23/03/2018. The Office, after further examination and research sent a second objection letter on 15/05/2018 which included examples of current use of the term ‘Micro Fulfillment’ in trade and which is an integral part of this decision No observations were received from the applicant in the two month time limit given.

It is noted that the different spelling between American English (Fulfillment) and European English (Fulfilment) does not affect the clear understanding of the mark give and will go unnoticed by the relevant consumer.

The observations from the applicant received on 23/03/2018 may be summarised as follows.

1. ‘Micro Fulfillment’ is a unique fanciful combination which is grammatically unusual and differs significantly from what is customary in the industry. It does not refer to the intended purpose of the goods and services. ‘Micro Fulfillment’ is an original and clever play on words.

2. The applicant provides definitions of ‘distribution centre’ also known as ‘fulfilment centre’ which are ‘from less than 5000 m² to 300,000 m²’. The applicant defines ‘micro’ as ‘a degree of size (denoting a factor of 10−6 (one millionth)’ and goes on to argue that that a ‘Fulfillment Center’ can never be of a one millionth size – as this would translate to a size between 0.005 m² and 3 m². Therefore, according to the applicant, it is impossible to describe the complete process from point of sales inquiry to delivery of a product to the customer as microscopic.

3. The relevant English speaking consumer will not understand this word combination as goods and services for the packing and dispatch of micro purchases to consumers as suggested by the Examiner.

4. The sign is not directly descriptive as it does not convey a direct meaning that is immediately understandable without further thought. The meaning is vague and unclear and bears no relationship to the goods and services. For non-native English speakers “Micro Fulfillment” will have no meaning and will be seen as an invented term.

5. The Office does not provide a coherent line of argument and two examples of goods and services are given to illustrate this in relation to which the sign is non-sensical and fanciful.

6. The trademark requires an additional cognitive step and clearly meets the minimum degree of distinctive character necessary to be eligible for registration. ‘Micro Fulfillment’ is instantly recognizable.

7. Previous marks that contain the verbal element ‘fulfillment’ were accepted by the Office and the applicant requests that its mark be accepted for consistency sake.

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. ‘Micro Fulfillment’ is a unique fanciful combination which is grammatically unusual and differs significantly from what is customary in the industry. It does not refer to the intended purpose of the goods and services. ‘Micro Fulfillment’ is an original and clever play on words.

The Office maintains that there is nothing fanciful or grammatically unusual about the term ‘Micro fulfillment’. It is not a play on words. ‘Fulfillment’ refers to ‘the packing and dispatch of a customer's order by a retailer.’ ‘Micro’ means ‘small scale’. Together the combination may be understood without difficulty by the relevant professional consumer in the field of logistics as ‘small scale fulfillment’.

Contrary to the arguments of the applicant and as demonstrated with the links, screen shots and quotes in the attached letter dated 15/05/2018, ‘Micro Fulfillment’ is currently being used in trade in a descriptive way.

For example, the following quotes, including one from the applicant, from online articles describe what micro fulfilment is in the context of logistics and warehousing:

www.globaltrademag.com/global-logistics/micro-fulfillment

‘Think of it like Airbnb—but for logistics. In the same way Airbnb enables someone to rent out extra accommodation to guests, micro-fulfillment helps people turn their personal garages into company storage space.’

http://www.wired.co.uk/article/elram-goren-commonsense-robotics-one-hour-delivery

‘Elram Goren, co-founder and CEO of CommonSense Robotics, is responsible. His company, which builds robots and artificial intelligence systems for urban microfulfilment centres, is dedicated to cracking the one hour delivery problem. How do you get products - and particularly groceries - to consumers more quickly and for less money than a trip to the local grocers?

“What we’re doing is quite simple,” Goren says. “To bring these very large fulfilment centres, that you probably know from companies like Amazon and usually take [up] thousands or millions of square feet, and to compress those into very small facilities that can support high-capacity on-demand operations.”’

Given the above, ‘Micro fulfilment’ will not be given any trade mark significance by the relevant consumer who is a specialist in logistics and will be aware of the expression and its meaning as described above which reflects the way that fulfilment logistics are developing. It will be seen as descriptive of the intended purpose of the goods and services that relate to warehouse management and logistics.

2. The applicant provides definitions of ‘distribution centre’ also known as ‘fulfilment centre’ which are ‘from less than 5000 m² to 300,000 m²’. The applicant defines ‘micro’ as ‘a degree of size (denoting a factor of 10−6 (one millionth)’ and goes on to argue that that a ‘Fulfillment Center’ can never be of a one millionth size – as this would translate to a size between 0.005 m² and 3 m². Therefore, according to the applicant, it is impossible to describe the complete process from point of sales inquiry to delivery of a product to the customer as microscopic.

The applicant has chosen one technical definition of ‘micro’ and used it in combination with a Wikipedia definition for ‘distribution centre’ which can also be called a ‘fulfillment centre’ and comes to the conclusion that it would be impossible for a ‘fulfillment centre’ to be microscopic.

However, ‘Micro’ does not only mean ‘mircroscopic’ or ‘too small to be seen by the unaided eye’. The applicant ignores the many other more simple definitions of ‘micro’, meaning simply ‘small’ or ‘small scale’ and fails to recognise that ‘micro fulfillment’ is being used in the market place to describe the logistics phenomenon explained above. Neither does the applicant recall that it is using the term in a descriptive way in online articles as demonstrated in point 1 above and in the attached letter of 15/05/2018.

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.)

There can be no doubt that at least one of the meanings that will be understood is ‘small scale fulfillment’ as described in point 1 and it the attached letter dated 15/05/2018. It is the most likely interpretation considering that the target consumer is a professional who will be aware of the term that is being currently used in the trade.

3. The relevant English speaking consumer will not understand this word combination as goods and services for the packing and dispatch of micro purchases to consumers as suggested by the Examiner.

As mentioned in the attached letter dated 23/11/2018, one understanding of the term ‘micro fulfillment’ is ‘packing and dispatch of micro purchases to consumers’. However, after further research the Office detected the use in trade of the term ‘micro fulfillment’ when describing ‘small scale fulfillment’ as explained in point 1. This was communicated to the applicant on 15/05/2018 and no response was submitted regarding this matter. As mentioned above, the professional consumer will most likely understand the term ‘Micro Fulfillment’ to mean fulfillment that includes using the small scale space of individuals. As such it will be perceived as descriptive of the goods and services in question that relate to logistics and warehousing and that facilitate this kind of fulfillment.

4. The sign is not directly descriptive as it does not convey a direct meaning that is immediately understandable without further thought. The meaning is vague and unclear and bears no relationship to the goods and services. For non-native English speakers “Micro Fulfillment” will have no meaning and will be seen as an invented term.

The Office does not agree that for non-native English speakers “Micro Fulfillment” will have no meaning. In fact, professionals normally understand the technical language in English that is used in their field. As has been demonstrated above and in the attached letter dated 15/05/2018, ‘Micro fulfillment’ is in current use in trade. Professionals in the field of logistics will be aware of this, including those non-native English speakers. Even if the non-native English professional did not understand the meaning, which is unlikely for the reason given above, it would be sufficient that the English speaking professional understand the meaning in a descriptive way, which is also the case, in order for it to be objectionable.

There is nothing vague about the term ‘Micro fulfillment’, contrary to the arguments of the applicant. It conveys a direct message which is clearly understandable in relation to the goods and services in question.

5. The Office does not provide a coherent line of argument and two examples of goods and services are given to illustrate this in relation to which the sign is non-sensical and fanciful.

The applicant refers to the meaning of ‘Micro fulfillment’ referred to in the first objection letter, that is ‘packing and dispatch of micro purchases to consumers’. The Applicant is of the opinion that this does not make sense in relation to its goods and services in question such as software in Class 9 and application services provider in Class 42. The Office does not concur with this understanding given that an ‘App’ may be considered a micro purchase (often having a very low cost if any) and this is a type of software in itself.

In any case, the Office issued a second letter on further examination and research when it found use of ‘Micro Fulfillment’ in the trade. The applicant has not made any observations with regard to the meaning and consumer understanding of ‘Micro Fulfillment’ as described in the attached letter of 15/05/2018. Therefore it must be presumed that the applicant has no issue with the line of argument presented in this second letter.

The Office points out that ‘Mircro fulfillment’ is a kind of fulfillment for which software and indeed apps in particular are currently in use and are being developed (Annex 1: http://www.globaltrademag.com/global-logistics/micro fulfillment?gtd=3850&scn=micro-fulfillment ). This shows that the sign is far from being non-sensical or fanciful and that there is a clear relationship between the goods and services and the sign applied for.

6. The trademark requires an additional cognitive step and clearly meets the minimum degree of distinctive character necessary to be eligible for registration. ‘Micro Fulfillment’ is instantly recognizable.

The Office refutes that any additional cognitive step is necessary but rather ‘Micro Fulfillment’ will be understood by the relevant consumer immediately and without further thought as ‘small-scale fulfillment’ as described in point 1 above. The applicant has not provided any observations on the fact that ‘Micro Fulfillment’ is a term that is currently being used in trade in a descriptive way (referred to in the attached letter dated 15/05/2018). Given this use, there is no doubt that the professional consumer in the field of logistics will immediately understand its meaning in relation to the goods and services in question. ‘Micro Fulfillment’ is indeed instantly recognisable, not as an indicator of commercial origin, but rather as a descriptive combination referring to the intended purpose of the goods and services in question.

The Office agrees that only a minimum level of distinctive character is sufficient in order to register a mark. However in this case not even that minimum degree has been reached.

7. Previous marks that contain the verbal element ‘fulfillment’ were accepted by the Office and the applicant requests that its mark be accepted for consistency sake.

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 any case it is pointed out that the fact that these other marks also contain the word ‘fulfillment’ does not automatically mean that all marks with this verbal component are registerable.

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 17 484 924 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

Annex 1

http://www.globaltrademag.com/global-logistics/micro-fulfillment?gtd=3850&scn=micro-fulfillment