Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 10/10/2018

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

REINO UNIDO

Application No:	17 891 301
Your reference:	T124112CTM/FM
Trade mark:	SENSATION SUITE
Mark type:	Word mark
Applicant:	Ultrahaptics IP Ltd The West Wing, Glass Wharf Bristol Bristol, City of BS2 0EL REINO UNIDO

The Office raised an objection on 23/05/2018 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 23/07/2018, which may be summarised as follows.

1. Relevant public/perception of the relevant consumer

2. Descriptiveness/the notion of descriptiveness/different meanings of the words

3. Distinctive character

4. Similar marks registered by the Office

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.

1. Relevant public/perception of the relevant consumer

Applicant´s remarks

The applicant disagrees with the examiner that the goods and services belong to a highly specialised market sector namely, the English speaking consumer who is a professional in the fields of tactile and/or gesture technologies. The applicant submits that tactile and gesture recognition software and the related goods in Class 9 are mass consumable goods directed at the public at large.

The applicant bases its assessment of the relevant public on the following:

1. Annex 1: The website of the applicant www.ultrahaptics.com/applications demonstrates the possible applications of its goods and services, f.ex. in-car driving controls, smart home controls for heating, lighting, TV and music.

2. Annex 2: An article from www.inc.com of July 2015 with the title ‘A Guide to Haptics. The Technology of Touch’ which states that tactile (haptics) technology has already been incorporated into shoes, watches and clothing.

1. Annex 3: An article from www.nelson-miller.com published on 27/09/2017 entitled ‘What is Gesture Recognition Technology and How Does It Work?’ which states that "in addition to smartphones and tablets, gesture recognition is also found in automotive infotainment centres, video game consoles, human machine interfaces and more. The bottom line is that gesture recognition technology is becoming more and more popular, and there's no sign of it slowing down any time soon".

Based on the afore-going, the applicant submits that tactile and gesture recognition technologies have become standard features for mass-consumable goods. The relevant consumer will therefore consist of the average consumer who is a non-specialist in the field of computer software but a regular user of products incorporating such technology. Overall, the awareness of the relevant public will be that of the average consumer who is reasonably well-informed and reasonably observant and circumspect.

Office´s comments

The Office has taken note of the applicant´s assessment of the relevant public and the reference to its web site and the two articles, cited above, ‘A Guide to Haptics. The technology of touch’ and ‘What is Gesture Recognition Technology and How Does it Work?’ However, the Office respectfully disagrees with the applicant that tactile and gesture technologies have yet reached the stage where they have become standard features. This may also be reflected in the afore-cited article ‘A Guide to Haptics’. The Technology of Touch’ where it is stated that…..’though it´s still early days for this technology, entrepreneurs are creating and bringing to market many revolutionary products based on it.’ However, the Office acknowledges that there is an ongoing evolution in this market for development of haptic/gesture and sensation technology. Accordingly, the Office finds that the relevant public is composed of both the average who is reasonably well-informed and reasonably observant and circumspect as well as a more professional public with a high attention to this new expanding technology and its possibilities for the future.

2. Descriptiveness/the notion of descriptiveness/different meanings of the words

General remarks

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).

Applicant´s remarks

The applicant refutes the Offices' assertion that the Mark is descriptive and therefore lacks the necessary distinctive character. Moreover, the applicant submits that the Office has erred in its assessment of the relevant consumer and thus the perception of the mark.

Whilst the mark may not be considered to be highly creative or imaginative, the applicant submits that the contested mark nonetheless possesses the requisite distinctiveness required for the purposes of registration.

The notion of ‘sensation’ is a broad concept which can encompass taste, touch, sight, sound, and smell. The applicant therefore submits that the term is vague and allusive and requires a level of interpretation and imagination by the relevant consumer to arrive at the conclusion of the Office.

The relevant public - a non-specialist in the field of computer software - is more likely to understand the term ‘suite’ as referring to "a set of rooms designated for one person or family use or for a particular purpose" rather than to a set of related computer software products.

The word 'sensation' in combination with 'suite' will therefore more likely be understood as a physical room that stimulates the senses in some manner. The mark therefore cannot be considered exclusively descriptive, as it is merely suggestive and/or elusive of the room’s capacity to illicit some form of feeling.

The meaning of the sign ascribed by the Office is not an accurate description of the goods and services. "Gesture recognition software" is a type of perceptual computing user interface that allows computers to capture and interpret human gestures as commands. Consequently, there is no physical interaction or response connected with these goods to render the mark descriptive. The same applies to the services "software as a service" and "software design", neither of these services specify their purpose or interaction. The applicant submits that the Office has overreached in its interpretation in the relevant consumer's understanding of the mark.

The average consumer will need to be educated in the field of computer software to arrive at the descriptive conclusion reached by the Office. Therefore, the mark lacks the direct and specific relationship between the sign and the goods or services in question to enable the public concerned to immediately perceive the mark as descriptive of the goods and services.

The combination of words creates an impression that is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which the mark is composed when viewed in the context of the goods and services. Whilst the mark may allude to the nature and intended purpose of the goods and services, it is not directly descriptive and is therefore capable of registration.

Office´s comments

As stated above, the Office is of the position that the relevant public is composed of both the public at large with an average attention and a more professional public with an average to high attention because of a special interest in this new, innovative technology of haptics and gesture technology.

As to the applicant´s allegation that ‘sensation’ is a broad concept, as to the applicant´s alternative definition of the verbal element ‘suite’ as ‘a set of rooms’ rather than ‘a set of computer software products’ and as to the applicant´s allegation that the sign will likely by perceived as ‘a physical room that stimulates the senses in some manner’, the Office acknowledges that the verbal elements of the sign as well as the sign, seen as a whole, may be subject to various interpretations or meanings.

However, the Office draws the attention to the fact that the assessment of descriptiveness of the sign, ‘SENSATION SUITE’, is based on how the relevant consumer would perceive the sign in relation to the goods and services applied for which for the sake of good order are the following:

Class 9 Computer software; electrical apparatus for providing a physical response to a virtual object, computer hardware and software systems for providing physical response to gestures in mid-air; gesture recognition software; software to enable development of products featuring mid-air tactile feedback; software and hardware and electrical apparatus to allow for control of virtual buttons, sliders and dials; software development tool to enable gesture and sensation recognition.

Class 42 Software as a service; software design; design and development of software to enable gesture and sensation recognition.

Therefore, the Office maintains its position that the relevant public, the public at large as well as a professional public, most likely would perceive the sign in relation to the goods and services at issue as providing information about the software and apparatus in Class 9, namely that these are a suite/set/group of software applications for enabling a physical, tactile sensation or a simulated physical interaction in gesture and sensation technology, and that the services in Class 42 is the design and development services of the same kind of software.

A good example that the relevant public – both the average consumer and the professional public – very likely will perceive the element ‘suite’ in relation to ‘software’ as a series of software applications is the universally well-known office productivity software suite, Microsoft Office, which bundles together multiple software programs such as Word, Excel, PowerPoint and Outlook.

Moreover, as to the more possible meanings of the sign and its individual, verbal element, 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.)

3. Distinctive character

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Applicant´s remarks

The mark is not descriptive in relation to the goods and services for the reasons argued above. Thus, the mark has the necessary distinctive character for the

purposes of Article 7(1)(b).

The assessment of a sign under Article 7(l)(b) must assess the mark as a whole and not artificially dissect the mark into its constituent parts. Based on the foregoing reasoning, it is submitted that the mark is neither descriptive nor devoid of any distinctive character and should be deemed capable of registration as a trade

.

mark.

Office´s comments

The Office agrees with the applicant that the sign must be assessed as a whole and not artificially be dissected into its constituent part. 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).

On the basis hereof and based on the reasoning above in the section regarding descriptiveness of the mark, the Office maintains its position that the sign at issue, ‘SENSATION SUITE’, is directly descriptive for a quality or the intended purpose of the goods and services applied for. Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character. Consequently, the sign – taken as a whole – is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods and services to thisch an objection has been raised within the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

4. Similar marks registered by the Office

Applicant´s remarks

A number of applications either consisting of the term ‘sensation’

have been accepted for registration as follows:

EUTM no. REPRESENTATION

• 11 680 576 SENSATION technology

• 8 210 767 SILKY SENSATIONS

• 665 901 SENSATION

• 2 403 954 SHOWER SENSATION

Office´s comments

As regards the applicant´s argument that number of similar registrations have been accepted by the Office, 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).

‘In addition it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during this period. The Court of Justice is also aware of this market and practice evolution and has states 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).

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  17 891 301 is hereby rejected for all the goods and services, namely:

Class 9 Computer software; electrical apparatus for providing a physical response to a virtual object, computer hardware and software systems for providing physical response to gestures in mid-air; gesture recognition software; software to enable development of products featuring mid-air tactile feedback; software and hardware and electrical apparatus to allow for control of virtual buttons, sliders and dials; software development tool to enable gesture and sensation recognition.

Class 42 Software as a service; software design; design and development of software to enable gesture and sensation recognition.

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.

Finn PEDERSEN