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

(Article 7 EUTMR)

Alicante, 05/10/2018

NOERR ALICANTE IP, S.L.

Avenida México 20

E-03008 Alicante

ESPAÑA

Application No:	017875320
Your reference:	ALC-0151-2018HAW/OSS
Trade mark:	COMPROTECT
Mark type:	Word mark
Applicant:	CommScope Technologies LLC 1100 CommScope Place, S.E. Hickory, North Carolina 28602 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 19/04/2018 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.

Following an extension of two months, the applicant submitted its observations on 24/08/2018, which may be summarised as follows.

1. It is clear from the case-law of the General Court of the EU that the absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination.

2. The sign applied for, ‘COMPROTECT’, is not composed of two descriptive terms. Neither ‘COM’ nor ‘PROTECT’ describe essential characteristics of the goods in question nor does the combination of such words. ‘COM’ is not descriptive and does not correspond to any of the meanings this term can have in British English and its definition provided by the Office was obtained from a US-based website. The expression ‘COMPROTECT’ is not descriptive for the goods at issue. The Office’s interpretation does not comply with English grammatical rules; the correct formulation would be ‘(to) protect communications’. However, this is not how the mark applied for will be seen, considering that the structure of the words is reversed. Rather, the mark constitutes a neologism by means of which two components are combined in such manner that the overall impression is more than the sum of its parts. The mark is at most evocative. According to European Union jurisprudence, the level of distinctive character required to satisfy Article 7(1)(b) EUTMR is minimal.

3. The goods at issue are electric components in Class 9 that have a very technical nature and require certain knowledge and expertise. Therefore, the goods applied for are specialised and aimed at a professional public, so the awareness of the relevant public will be high.

4. The first three pages of the list of Google search results for the term ‘COMPROTECT’ show its use as a trade mark of the applicant or emanating from the applicant.

5. The Office has registered marks that include the term ‘COM’ such as EUTMs No 17 884 922 ‘comfact’ for goods and services in Classes 9 and 45, No 16 164 477 ‘COMCAB’ for goods in Class 9, No 13 199 501 ‘ComBox’ for goods and services in Classes 9, 38 and 42 or No 12 858 122 ‘COMSIGN’ for goods and services in Classes 9, 42 and 45, and also with the term ‘PROTECT’ such as No 12 803 094 ‘3DPROTECT’ for goods and services in Classes 9, 11 and 42, No 10 783 141 ‘FLUID PROTECT’ for goods in Classes 9 and 10, No 10 631 604 ‘BabyProtect’ for goods in Classes 7, 9 and 11 or No 9 614 116 ‘ABSOLUTE DATA PROTECT’ for goods and services in Classes 9 and 42.

6. The mark has been accepted in Australia, Canada and the United States.

7. The Office is under a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration.

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).

1. The objection sent on 19/04/2018 was based not on the level of imagination, but on the fact that the mark describes certain characteristics of the goods for which protection is sought and is therefore devoid of any distinctive character.

2. 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 contested sign is the word mark ‘COMPROTECT’, which the relevant consumers will perceive as consisting of two elements, namely ‘COM’ (an abbreviation of communication. Communication is the act of communicating with people. The process of sharing information, especially when this increases understanding between people or groups; information extracted from Your Dictionary and Cambridge Dictionary on 19/04/2018 at http://www.yourdictionary.com/com, https://dictionary.cambridge.org/dictionary/english/communication?a=british) and ‘PROTECT’ (To keep someone or something safe from injury, damage, or loss; https://dictionary.cambridge.org/dictionary/english/protect?a=british). Therefore, the relevant consumer will understand the sign as a meaningful and self-explanatory expression: To keep communications safe from loss or damage. The meaning of the sign ‘COMPROTECT’ will be clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the intended purpose of the goods for which registration is sought and to which an objection has been raised.

In the sign applied for there is nothing subtle, indirect, concealed or vague about the message conveyed by the mark. Therefore, the relevant public would not be required to undertake any mental steps to ascertain the meaning of the mark applied for and is not capable of distinguishing the goods for which registration is sought. It will be seen as a description of the fact that the contested goods in Class 9 keep communications safe from loss or damage. Moreover, the applicant has applied for specific products that are related to, inter alia, overvoltage and current protectors for electrical and electronic telecommunications plants and data systems or fittings, namely surge arrestors, varistors, protection plugs and thermoprotective circuit breakers.

Contrary to the applicant’s assertion that the interpretation of sign ‘COMPROTECT’ does not comply with English grammatical rules, in the Office’s view the mere fact that such interpretation does not follow such rules is insufficient to allow the conclusion that it is not devoid of distinctive character. Furthermore, in commerce, consumers of all levels of sophistication are quite accustomed to signs and brand names which, from a formal point of view, lack grammatical precision and merely bringing two word elements together without introducing any unusual variations, in particular related to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications that may serve, in trade, to designate characteristics of the goods or services concerned, regardless of whether the word combination as such is also referenced in dictionaries (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 39 and 43).

The sign ‘COMPROTECT’ has no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as grammatical analysis, before they would understand the meaning of the mark ‘COMPROTECT’ in relation to the goods in question. Consequently, the meaning conveyed is explicit, and the mark will not be perceived as evocative by the relevant consumers.

The Office considers that a trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

Regarding the term ‘COM’ and its definition provided by the Office, which according to the applicant does not correspond to any of the meanings this term can have in British English, in the Office’s view, the element ‘COM’ will be immediately and intuitively understood by the relevant public as ‘communication’. A mark’s conceptual content is not necessarily identical to the dictionary definitions since, during the short space of time in which consumers are faced with a mark, they perceive the meaning of the terms intuitively rather than in a linguistically scientific way, mainly if the consumer is specialised, as the applicant stated in its reply.

In relation to the definition provided by the Office from a US-based website, the Office considers the fact that Americanisms are constantly being absorbed into the English language within the European Union and a significant part of the specialised English‑speaking consumer within European Union will be aware that the word ‘COM’ refers to ‘communication’.

In the light of the above, the sign contains no characteristic element capable of being easily distinguished and of conferring on it a minimum degree of distinctive character, enabling the consumer to perceive it as an indication of commercial origin. As a result, in the Office’s view, the sign ‘COMPROTECT’ does not have any characteristic or additional element that would trigger an intellectual process to confer a minimum degree of distinctive character to the sign that could enable the consumer to perceive it as an indication of commercial origin.

3. Even though, in its previous communication, the Office considered the relevant English-speaking consumer, the Office agrees with the applicant that the goods for which registration is sought may also target a professional public. However, it should be borne in mind that ‘relevant public’ can be composed of the public at large, the professional (specialised) public or both, depending on the goods and services.

In this regard, the fact of an English-speaking consumer that is the public at large or the ‘professional public, which particularly consists of electricians’, as the applicant stated, cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the level of attention of the relevant specialist public is, by definition, higher than that of the general public, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (20/07/2017, T‑612/15, RAPPRESENTAZIONE DI TRE STRISCE VERTICALI (fig.), EU:T:2017:537, § 26). The Office considers that the high level of attention of part or all of the relevant public does not mean that a sign is less subject to any absolute grounds for refusal. Furthermore, terms that are not understood or fully understood by consumers can be grasped immediately by the specialised public, in particular if the sign is composed of words which relate to the field in which the latter public is active (11/10/2011, T‑87/10, Pipeline, EU:T:2011:582, § 27-28).

EU trade mark law does not require that a word be part of normal usage by the applicant’s competitors or included in a dictionary to warrant its refusal as an EU trade mark. Rather, what is essential is whether it contains an unequivocal message serving to identify a characteristic of the goods and services in question and whether the sign can be used for descriptive purposes (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 97).

4. In relation to the internet searches referred to by the applicant, the Office considers that, while internet examples might be a useful aid when evaluating the descriptiveness of a word or a mark, the descriptiveness of the mark does not depend on the answer to whether the term is commonly used on the internet. Even if it were uncommon to use the term ‘COMPROTECT’ in relation to the goods concerned and that all the results provided by the Google search engine on the keywords ‘COMPROTECT’ were in connection with the applicant’s products, 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 such as those in relation to which the application is filed, or of characteristics of those goods. 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).

5. As regards the applicant’s argument that several 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 European Union judicature, and not on the basis of previous Office practice (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; 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).

The Office has taken note of the previously accepted marks containing the words ‘COM’ or ‘PROTECT’. However, EUTM applications that had a similar structure to the sign applied for have also been refused, such as EUTMs No 17 668 591 ‘ProtectorApp’ for goods in Class 9, No 16 214 207 ‘ConnectProtect’ for goods in Class 9 or No 14 897 664 ‘CashProtect’ for goods and services in Classes 9 and 42. Moreover, the cases referred by the applicant are not the same and contain different verbal elements, such that, as a whole, they are distinctive and cannot under any circumstances be considered identical to the sign for which registration is sought.

6. As regards trade marks registered in other countries 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/international system. Consequently, the registrability of a sign as a European Union trade mark can therefore be assessed only on the basis of the relevant EU legislation. 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; therefore, the abovementioned application cannot lead to a different result.

The Office is under no obligation to follow the assessment of the authority with jurisdiction over trade marks in the country of origin or to lay down the same requirements, or to register the mark applied for on the basis of the considerations of that national authority (25/10/2007, C‑238/06 P, Plastikflaschenform, EU:C:2007:635, § 71-73).

7. Regarding the principles of equal treatment and of sound administration, the Office must consider the decisions already taken in respect of similar applications and consider with special care whether it should decide in the same way or not. The application of those principles must, however, be consistent with the principle of legality. Moreover, for reasons of legal certainty and, precisely, of sound administration, the examination of any trade mark application must be stringent and full, to prevent trade marks from being improperly registered. Such examination must therefore be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (27/06/2013, T‑248/11, Pure Power, EU:T:2013:333, § 50).

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods and services of one undertaking from those of its competitors.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 17 875 320 ‘COMPROTECT’ is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) EUTMR in the relevant territory for all the goods claimed.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Moises Paulo ROMERO CABRERA