Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 20/08/2018

APPLEYARD LEES IP LLP

15 Clare Road

Halifax, West Yorkshire HX1 2HY

REINO UNIDO

Application No:	017805409
Your reference:	T36455EM35/RWC
Trade mark:	LIVEANSWER
Mark type:	Word mark
Applicant:	SRCL Limited Indigo House Sussex Avenue Leeds LS10 2LF REINO UNIDO

The Office raised an objection on 27/04/2018 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 attached letter.

The applicant submitted its observations on 27/06/2018, which may be summarised as follows.

1. The mark applied for, ‘LIVEANSWER’, has an unusual syntax and literary structure that goes against grammar rules, thus providing the mark with ambiguity. Given the myriad of meanings of the term ‘LIVE’ and the unusual spelling of the word ‘ANSWER’, the relevant public will need to take several mental leaps to understand the terms.

The mark applied for does not clearly describe the characteristics of the specified services for which protection is sought. It is original, memorable and fanciful.

2. The relevant public are professional consumers with a high degree of attention.

3. In the past, the EUIPO accepted several trade marks containing the word ‘LIVE’ or ‘ANSWER’ for registration for services in Classes 35 and 38.

4. The mark applied for has not been found objectionable in the United States (Annex 1).

5. The internet references supporting the alleged non-distinctiveness provided by the Office are not relevant as they do not target the relevant public within the European Union.

6. The applicant requests an opportunity to discuss a possible further restriction of the specification to allow the application to proceed.

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).

Furthermore, ‘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).

As regards trade marks composed of more than one word, such as the sign applied for, descriptiveness must be determined not only in relation to each word taken separately but also in relation to the whole that they form (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

As a general rule, a mere combination of descriptive elements remains descriptive unless, because of the unusual nature of the combination, the word creates an overall impression which is sufficiently far removed from that produced by the combination of meanings of the elements of which it is composed, with the result that the word is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

It is not necessary that the signs and indications composing the mark that are referred to in Article 7(1)(c) EUTMR actually be in use at the time of the application for registration in a way that is descriptive of the 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 those signs and indications could be used for such purposes (e.g. 19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark that is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of guaranteeing the identity of the origin of the marked product to the consumer or end user (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532). The finding that a sign is devoid of distinctiveness within the meaning of Article 7(1)(b) EUTMR is not conditional on a finding that the wording concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that Article 7(1) EUTMR applies notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

The Office responds to the applicant’s observations as follows.

In its submissions, the applicant argues that the mark applied for, ‘LIVEANSWER’, has an unusual syntax and literary structure that goes against grammar rules, thus providing the mark with ambiguity. Moreover, given the myriad of meanings of the term ‘LIVE’ and the unusual spelling of the word ‘ANSWER’, the relevant public will need to take several mental leaps to understand the terms. Further, the mark applied for does not clearly describe the characteristics of the specified services for which protection is sought. It is original, memorable and fanciful.

When assessing a mark, the Office must consider it not in a strict grammatical sense, but rather as it would be perceived by the public at large, who will interpret it in relation to the goods and services for which registration is sought and will form an opinion on what it means.

The applicant argues that the mark’s constituent parts, as well as the mark as a whole, have other meanings. However, 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).

In the present case, since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character, it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs (3D), EU:T:2001:226, § 59).

The applicant disputes the unique meaning of the mark’s individual words and argues that their combination in one expression is unusual and therefore distinctive and would not be understood by the relevant public without further interpretation.

However, the applicant’s arguments must be set aside. As can be easily seen from an ordinary search on the internet, the combination of the mark’s individual words is commonly used in the sense of (providing) immediate response.

The sign at issue consists of the combination of two readily identifiable and ordinary English words: ‘LIVE’, which means ‘transmitted or present at the time of performance, rather than being a recording’ (information extracted from Collins English Dictionary on 17/08/2018 at https://www.collinsdictionary.com/dictionary/english/live), that is, being provided or delivered at the actual time a process or event occurs; and ‘ANSWER’, which means either ‘a reply, either spoken or written, as to a question, request, letter, or article’ (idem at https://www.collinsdictionary.com/dictionary/english/answer) or a solution to a problem. There is nothing unusual about the structure of the expression ‘LIVEANSWER’. The words are in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumers, who are English-speaking professionals, will not perceive the mark as unusual but rather as a meaningful expression.

Moreover, according to the case-law of the Court of Justice, the fact that a sign is composed of generic words that inform the public of a characteristic of the goods or services leads to the conclusion that the sign is devoid of distinctive character (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 21). This, as stated in the Office’s arguments above, is clearly applicable to the present case.

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

An objection under Article 7(1)(b) and (c) EUTMR is also applicable where the lexical structure of the sign in question is not entirely correct from a grammatical point of view. The absence of a space or hyphen between the elements that make up a sign can be considered a common marketing practice in a commercial context.

Consequently, the precise grammatical use of the elements of a trade mark is not decisive in determining whether or not it is descriptive. Writing two words together, without spaces, or adding or removing a hyphen, does not make a substantive difference. The mark remains non-distinctive.

In addition,

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Therefore, as stated in its initial notification of 10/04/2018, the Office confirms that the sign ‘LIVEANSWER’, taken as a whole, immediately informs consumers, without the need for further consideration, that the services for which registration is sought directly relate to or concern the immediate and/or online provision of responses or solutions, as soon as they are requested. Therefore, the expression ‘LIVEANSWER’ conveys obvious and direct information regarding the kind and intended purpose of the services in question.

Moreover, the sign applied for is so simple, basic and lacking in additional distinguishing features or graphic elements that it cannot carry out the essential function of the trade mark, even where the awareness of the relevant public is higher than average. Therefore, it will not be seen as a badge of origin and cannot be perceived as fulfilling the role of a trade mark.

The applicant further argues that the relevant public are professional consumers with a high degree of attention. The Office reiterates that, because the services in question are specialised, at least part of the relevant public is made up of professionals, such as the applicant, in large-scale businesses with telecommunication needs, who will understand the expression ‘LIVEANSWER’ without difficulty and will perceive the mark as a whole as descriptive, rather than as an indication of trade origin in relation to the services for which registration is sought.

In addition, the Office considers that the high degree of attention alone cannot establish that the consumer will recognise an indication of origin when encountering such a clearly descriptive sign, unless it is depicted in a very striking manner, which is not the case here. Consumers do not tend to carry out complex analyses of indications on goods, or in relation to services they encounter, and will perceive the sign ‘LIVEANSWER’ only as a meaningful term referring to the nature and intended purpose of the services for which registration is sought.

In this context,

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, Smart Technologies, EU:C:2012:460, § 48).

Therefore, the expression ‘LIVEANSWER’ is readily intelligible in relation to the services for which registration is sought when viewed by the relevant consumer. Given that the mark has a clear descriptive meaning in relation to the services, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

The applicant further argues that in the past the EUIPO accepted several trade marks for registration containing the words ‘LIVE’ or ‘ANSWER’ for services in Classes 35 and 38.

However, the above findings do not contradict the relevant case-law on which the applicant relies. Neither can the applicant successfully rely on other registered EU trade marks for the same or similar goods and services. The circumstances which led to the acceptance of those marks cannot be subject to the objections in the present proceedings nor do they represent a valid argument to overcome the objection of lack of distinctiveness of the sign at issue. Every trade mark undergoes its own examination procedure, the outcome of which is based on specific grounds.

The marks cited by the applicant apply to different concepts. They have little or nothing in common with the mark applied for and have been found distinctive in their own right. EUTM No 4 177 622 ‘LIVEPHONE’, No 9 077 521 ‘LIVECOM’, No 11 871 902 ‘LiveCenter’, No 5 606 348 ‘LIVE ASSISTANT’, No 6 378 087 ‘Answers for life’ and No 9 084 013 ‘JUST ANSWER’ all contain additional and/or different verbal elements that affect the overall impression created by the sign; therefore, they are not comparable, for the purposes of examination, to the mark at issue.

Finally, as regards EUTM No 12 326 443 ‘LiveResponse’, the Office does not consider that it should follow this example, for the reasons stated above. Furthermore, more favourable Office decisions in allegedly similar cases cannot entitle the applicant to equal treatment leading to a registration of the trade mark in question. 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 (27/02/2002, T‑106/00, Streamserve , EU:T:2002:43; 02/05/2012, T‑435/11, UniversalPHOLED, EU:T:2012:210). Accordingly, if in previous cases the Office has maybe incorrectly taken an overly generous approach, that error should not be compounded by following such an approach in a subsequent case.

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).

As regards the applicant’s argument that the mark at issue has not been found objectionable in the United States (No 4592088 provided in Annex 1), 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).

This is clearly applicable to the present case.

The applicant further argues that the internet references supporting the alleged non-distinctiveness provided by the Office are not relevant as they do not target the relevant public within the European Union. However, the applicant cannot rely on this argument. It does not matter that the evidence originates from a website outside the Member States, as long as it comes from an English-speaking jurisdiction, because despite possible spelling variations there is only one English language (05/07/1998, R 179/1998‑1, ASCOT, § 17).

As regards the applicant’s criticism of the internet citation provided by the Office, it is true that the companies whose websites have been referenced may offer their services outside the European Union. However, considering the market reality of a global market in which telecommunication services are provided and are often outsourced on an international or global scale, the examples clearly indicated that the combination of the words ‘LIVE’ and ‘ANSWER’, whether conjoined or not, is used in a relevant way.

The Court has confirmed that:

where the Board of Appeal finds that the trade mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods… In such a case, the Board of Appeal is not obliged to give examples of such practical experience.

(15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that 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).

Finally, as regards the applicant’s request for an opportunity to discuss a possible further restriction of the specification to allow the application to proceed, the actual wording of the list of goods and services is already very restricted in scope and cannot be limited in a way that would allow the mark to be registered.

It follows from all the foregoing that the applicant has not succeeded in convincing the Office that the sign applied for, ‘LIVEANSWER’, will be perceived by consumers as indicating the commercial origin of the contested services for which registration is sought. For the reasons given above, the sign ‘LIVEANSWER’ is not distinctive for the services in question, pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace, that is, it fails to distinguish the services of the applicant from those of other undertakings. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its descriptive sense. The applicant has not claimed that the mark has acquired distinctiveness through the use that has been made of it (Article 7(3) 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 17 805 409 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.

Robert KLECUN