Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/10/2018

PROMARK

62 avenue des Champs Elysées

F-75008 Paris

FRANCIA

Application No:	017801101
Your reference:	AB/YH/HM/AD/M12277UE
Trade mark:	ADBANK
Mark type:	Word mark
Applicant:	Adstream Holdings Pty Limited Level 5 Tower B, 207 Pacific Highway, St Leonards NSW 2065 AUSTRALIA

The Office raised an objection on 10/04/2018 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 L110 attached letter.

The application consists of the word mark “ADBANK”.

The goods and services to which this refusal applies are:

Class 9 Computer software for recording, transmission or reproduction of sound or images namely computer operating programs, computer programs, apparatus and instruments for use in connection with the uploading, storing, distribution, review, duplication, delivery and management of sound or images, digital management of broadcast material, digital delivery of sound or images; apparatus and instruments for use in connection with digital management of sound or images; computer software and programs for use in connection with preparing files for publication or print; data processing apparatus; user manuals sold with the above goods as a unit therewith.

Class 35 Business management services namely compilation of information into computer databases, systemisation of information into computer databases, dissemination of advertising matter, document reproduction, computerised file management; advertising; provision of advertising material; provision of advertising matter; provision of advertising space; management of computer databases; data search on computer files; online advertising on a computer network; rental of advertising space; rental of advertising time on communication media; sales promotion; updating of advertising material; business information; rental of advertising on a computer network.

Class 38 Telecommunications services, namely electronic transmission, reception, transfer and delivery of data, documents, digital files, images, photos, videos, digital media contents and audio-visual material; providing access to databases; providing user access to a global computer network; electronic advertising (telecommunications); leasing access time to a computer database; leasing access time to web sites; provision and use of telecommunications services in particular for distance selling and purchase of goods and services; providing access to hosted operating systems and computer applications through the Internet and organizational networks; transfer of data by telecommunications.

Class 42 Computerised data storage; electronic data storage; cloud computing; computerised file management; design and development of computer software; providing online use of non-downloadable software; providing online non-downloadable software for providing web-based access to applications and services through a web operating system or portal interface; providing online non-downloadable software for identifying and optionally blocking Internet content, namely, Internet traffic provided via an online technology platform for buyers and sellers of online advertising to build, manage, and optimise their online advertising businesses; hosting a website that enables users to upload and download electronic files; platform as a service (PAAS) featuring computer software platforms for buyers and sellers of online advertising to build, manage, and optimise their online advertising businesses; development, and implementation of software for data analytics; software as a service (SAAS) services featuring software for placing and managing customizable video advertisements on publishers' websites; software as a service (SAAS) services featuring software for use to analyse and measure advertising effectiveness.

The applicant submitted its observations on 16/08/2018, which may be summarised as follows.

1. The examiner has neither explained the lack of distinctive character nor the descriptiveness of the sign in relation with each category or group of goods and services, the Office, therefore, incurred in a breach of duty of motivation.

2. The Office has registered a similar mark in the past, the mark nber. 2026276 – “ADBANK” in classes 35 and 42, so in order to respect equity, the sign applied for should not be rejected. By rejecting the present Application, the Office would incur in breaching the principle of legal certainty.

3. The sign has acquired distinctive character by use, as can be seen in the enclosures provided.

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).

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).

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 applicant states that the examiner has neither explained the lack of distinctive character nor the descriptiveness of the sign in relation with each category or group of goods and services, the Office, therefore, incurred in a breach of duty of motivation. However, and as stated in our L110 objection letter dated 10/04/2018, the relevant consumer would perceive the sign as a descriptor indicating that the goods and services at issue are provided by a sort of advertisement bank that gathers ads in one place for convenient viewing. Therefore, the sign conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question. The relevant consumer will immediately understand that the computer material and communication equipment will be used to gather and show ads in one place. The relevant consumer will immediately know that advertisements for computer softwares, digital management apparatus, business and telecommunication services for example will all be available in one place to be consulted when the need for commercial information arises. The relevant public will directly grasp that the business, advertising, commercial, telecommunication and computer services are related with the gathering and showing of ads in a specific place. For a trade mark to be refused registration under Article 7(1)(c) EUTMR, 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.) The relevant public who is the average English-speaking consumer in the EU would understand the sign as having the following meaning: advertisement bank, the storage of advertisements, and would immediately make the link between the sign “ADBANK” and the goods and services applied for. Due to its descriptive meaning, the relevant consumer would not see the sign applied for as an indicator of the commercial origin of the goods and services applied for but as an informative message incapable of distinguishing the goods and services applied for from those of another undertaking.

2. As regards the applicant’s argument that the Office has registered a similar mark in the past, the mark nber. 2026276 – “ADBANK” in classes 35 and 42, 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). The mark mentioned was registered in 2002, since then the regulation applied has changed along with the practice of the Office. Moreover, each application must be considered on its own merits taking account of its own particular circumstances and having particular regard to the trade mark and the goods or services the subject of the application. The services registered in Class 42 for the mark nber. 2026276 – “ADBANK” differ from the services claimed in the application of reference.

The trade mark applied for is descriptive of the goods and services claimed, it cannot be registered. Moreover, trade marks which meaning is mainly perceived by the target consumer as an informative message more than the indication of the commercial origin of the services are devoid of distinctive character (03/07/2003, T-122/01, Best Buy, § 30). A trade mark's distinctiveness within the meaning of Article 7(1)(b) of the Directive must be assessed, first, by reference to those goods or services and, second, by reference to the perception of the relevant public, which consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect (12/02/2004, C-363/99, Postkantoor, § 34). The sign applied for will be perceived as providing information on the kind and intended purpose of the goods and services, as an informative message and thus, it will not fulfil its function as a trade mark, which is to indicate the commercial origin of the goods and services applied for. As it will not be perceived as a trade mark, the relevant consumer will not be able to remember it on the occasion of a future purchase. As a consequence, the sign applied for cannot be registered.

In addition to the abovementioned arguments, in the reply to the Office’s objection letter of 10/04/2018, you included a claim that the sign applied for had acquired distinctive character through use within the meaning of Article 7(3) EUTMR. You also indicated that this claim was meant as a primary claim in your letter dated 09/10/2018.

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

In support of your claim, you submitted evidence of use on 16/08/2018.

The evidence to be taken into account is the following:

• Some market share information, turnover, sales figures and investment in advertising.

• Internet searches dated May and August 2012 and November 2008.

• Press clippings: Articles from El Publicista dated June 2014, Article from adcgroup.it dated 23/05/2007.

• Two presentations of Adbank, one dated October 2015 and the other one dated March 2017.

Assessment of the evidence

3. The applicant claims that the sign has acquired distinctive character through use, as can be seen in the enclosures provided. The extracts provided come from France, Germany, Spain and Italy. However, and as mentioned in our L110 letter dated 10/04/2018, the relevant public to be taken into account in order to assess the registrability of the mark is the average English-speaking consumer in the EU. The extracts sent do not relate to the two main English-speaking countries in the EU, the UK and Ireland, so they do not represent sufficient proof of the acquired distinctiveness of the mark through use inside the relevant territory. The two presentations are dated 2015 and 2017 so the facts included refer to a too short period of time to claim acquired distinctiveness. Moreover, some of the information refers to the company Adstream and not to the mark “ADBANK” such as the number of clients or of branches. As a whole, the documentation provided by the applicant does not give sufficient information on the market share, the most relevant territories and intensity of use of the sign “ADBANK”. As a consequence, the acquired distinctiveness of the sign “ADBANK” through use has not been ascertained.

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.

Moreover, for the reasons mentioned above in this decision, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 801 101 is hereby rejected in its entirety, for all the goods and 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.

Brigitte BERNHEIM

Annex: L110 letter dated 10/04/2018