Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 15/05/2018

Grünecker Patent- und Rechtsanwälte PartG mbB

Leopoldstr. 4

D-80802 München

ALEMANIA

Application No:	017597014
Your reference:	EW36345MKOS
Trade mark:	UPTIME
Mark type:	Word mark
Applicant:	Google LLC 1600 Amphitheatre Parkway Mountain View California 94043 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/01/2018 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations with attachments on 06/02/2018, which may be summarised as follows:

1. The trade mark consists of a fanciful play on words or unusual, invented term which gives the mark at best a very vague, positive meaning and association with good time; the examiner has not accurately assessed all the aspects; a number of meanings (Merriam Webster’s Learner’s Dictionary on www.learnersdictionary.com .

2. The examiner has missed taking the exact goods into account; the field of application of the goods is social media with the exclusive function of sharing and commenting on videos. No relation at all with the definition found in a dictionary and mentioned by the examiner.

3. The mark is not able to describe the software, so consumers will be puzzled and curious to understand the meaning in relation to the goods since it is not descriptive. The mark is short, concise and easy to remember, it does not describe the characteristics of the goods as applied for.

4. Prior registrations at the German Patent and trademark Office.

5. Prior registrations by EUIPO, in particular the word mark ‘UPTIME’ for Classes 6, 9, 38 and 39.

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 arguments, the Office has decided to maintain the objection.

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

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).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20 ; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

1. The trade mark consists of a fanciful play on words or unusual, invented term which gives the mark at best a very vague, positive meaning and association with good time; the examiner has not accurately assessed all the aspects; a number of meanings (Merriam Webster’s Learner’s Dictionary on www.learnersdictionary.com .

The fact that the sign at issue can have several meanings, that it can be a fanciful play on words and that it can be perceived as unusual or invented term, at best very vague, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin. (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

In the present case, contrary to the applicant’s suggestion, the meaning of the expression ‘UPTIME’ does not provide, in the eye of the relevant English speaking consumer, any particular indication of commercial origin of the mark beyond the promotional information conveyed. The mark indicates that the goods provided are in operation or service (regardless the field of application, i.e., sharing and commenting on videos in a virtual group environment), therefore, the relevant consumer would only understand the sign as an invitation or promotional message highlighting positive aspects of the goods in question.

2. The examiner has missed taking the exact goods into account; the field of application of the goods is social media with the exclusive function of sharing and commenting on videos. No relation at all with the definition found in a dictionary and mentioned by the examiner.

It is on the basis of the acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

The meaning of the sign at issue, in relation to the goods applied for in Class 9, would be clear for the relevant public, namely that the goods are in operation/service; consequently, there is nothing imaginative or original in the combination applied for ‘UPTIME’. The mark lacks of enough power that may lead consumers to consider it as an indication of commercial origin rather than as a laudatory slogan. The mark would only be understood as a customer service statement, promotional or laudatory slogan devoid of any distinctive character.

3. The mark is not able to describe the software, only for a small part of consumers with IT background, so the relevant consumers will be puzzled and curious to understand the meaning in relation to the goods since it is not descriptive. The mark is short, concise and easy to remember, it does not describe the characteristics of the goods as applied for.

The absolute grounds objection raised on the mark on 03/01/2018 is pursuant to Article 7(1)(b) and 7(2) EUTMR, the mark is devoid of any distinctive character. The mark has not been objected in relation to Article 7(1)(c) EUTMR as being descriptive of the goods and services claimed.

Furthermore, 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).

4. Prior registrations at the German Patent and trademark Office.

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).

5. Prior registrations by EUIPO, in particular the word mark ‘UPTIME’ for Classes 6, 9, 38 and 39.

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).

As regards, EU Registration No 16 428 203 ‘UPTIME’ in Classes 6, 9 and 39, it seems that the idea of the mark in relation to the goods and services registered allows for sufficient distinctive character. Moreover, it should also be noted that EU Registration No 1 907 088 ‘UPTIME’ was previously refused for IT services in Class 42.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 17 597 014 is hereby rejected for all the goods 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.

Jesús ROMERO FERNÁNDEZ