Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 11/03/2019

MERH-IP Matias Erny Reichl Hoffmann Patentanwälte PartG mbB

Paul-Heyse-Str. 29

D-80336 München

ALEMANIA

Application No:	17 926 802
Your reference:	211451EU
Trade mark:	IoTconnector
Mark type:	Word mark
Applicant:	DMG MORI CO., LTD. 106, Kitakoriyama-cho, Yamatokoriyama-shi, Nara, 639-1160 JAPÓN

The Office raised a partial objection on 26/07/2018 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.

Upon request of 26/09/2018 from the applicant, the Office extended on 02/10/2018 the time limit for submitting observations in reply with two months till 26/11/2018.

The applicant submitted its observations on 26/11/2018, which may be summarised as follows:

1. Descriptiveness/meanings of the sign/the sign in relation to the goods/distinctive character

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. Descriptiveness/ meanings of the sign/the sign in relation to the goods/distinctive character

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).

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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).

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).

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).

Applicant’s remarks

The abbreviation “loT” is not commonly used or understood by the relevant public. It is not a well-known abbreviation and moreover it is combined with the word “connector". There is no sufficiently direct and concrete relationship between the term “loT” or “loTconnector” and the goods in class 9 applied for.

The Office has not provided any proof that the abbreviation is commonly used for the goods applied for in class 9 by the addressed public. In order to be able to refuse abbreviations, the examiner has to prove that the abbreviation per se is purely descriptive and to show that this abbreviation is commonly used or at least understood by the relevant specialists in the field as an abbreviation identifying the characteristics of the goods.

The term “connector” does not describe the objected goods in class 9. According to the online Oxford Dictionary, the noun “connector” has the following meanings:

1. A thing which links two or more things together.

1. A device for keeping two parts of an electric circuit in contact.

The term “connector” is used to describe something which links two or more things together, in specific a device for keeping two parts of an electric circuit in contact. But "loT” is not the abbreviation of a device.

Even if consumers may understand “loT” as “Internet of Things”, the “Internet of Things” is not a device. Therefore, the term “loT connector” makes no inherent sense. The addressed market sector will see in the term “loTconnector” a fanciful term which does not have any meaning. The addressed public will not perceive the sign “loTconnector” as suggestive or even descriptive, but as an imaginatory combination of letters.

Even, if the elements of the sign “loT” and/or “connector” were descriptive per se, the examiner disregarded permanent case-law according to which a consumer perceives a mark as a whole and does not proceed to analyse its various components. The mark applied for in its entirety does not have a clear meaning which would prompt the relevant public to immediately and without further reflection make a definite and direct association with the applied goods in class 9. According to established case-law a trade mark cannot be regarded as descriptive on the basis of the descriptive character of its elements.

Abbreviations only represent language resources which cannot be equated with the correct complete reproduction of the respective technical term. Only such abbreviations are eligible for protection, which are self-explanatory for the addressed public and can be used in this respect as well as the relevant complete term in a descriptive way. This is not the case with the designation "loT".

The examiner overlooks that the goods in class 9 for which protection is sought already have a specific purpose, for example measuring, but not ensuring a smart connection from the machine tools in class 9 to the industrial Internet of Things. None of these goods are related to smart connection, and moreover, the “industrial Internet of Things” cited by the examiner would be abbreviated as lloT and not as loT.

For this reason the ground for refusal under Article 7(1)(c) EUTMR does not apply.

The applied trade mark does not describe the protected goods in class 9 at all. Therefore, the term “loTconnector” has no clear or immediate descriptive meaning for the rejected goods. The expression “loTconnector” is innovative and unexpected with regard to the goods in class 9. The term “loTconnector” is lexically not defined. It is not a term of art in the industry with regard to the goods applied for.

The sign “loTconnector” is individual without a certain immediate relation to the goods and it will not be understood by the consumer without any further analytic mental steps. The sign does not immediately inform the relevant public about the characteristics of the goods applied for and, thus, it possesses a certain resonance. The sign contains no clear and direct information in relation to the goods concerned and is sufficiently vague to conclude that it has not been established that the trade mark lacks distinctive character. The content of the expression is that of an abstract message, requiring a degree of interpretation of the relevant public that is being exposed to it.

As such, the expression is likely to be easily remembered by the members of the relevant public, and, hence is able to indicate the commercial origin of the goods concerned.

Office´s comments

In its submissions, the applicant argues that the abbreviation ‘IoT’ is not commonly used or understood by the relevant public [as ‘Internet of Things’]. The applicant also argues that the meaning of ‘connector’ is a device for keeping two parts of an electric circuity in contact. For the reason that ‘IoT’ is not an abbreviation of a device, the sign as such has no clear and immediate descriptive meaning and is innovative and unexpected.

The Office has noted the applicant’s comments. Nevertheless, the Office asserts that the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, 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 goods, 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).

Moreover, the applicant alleged that the mark applied for in its entirety does not have a clear meaning and that the examiner disregarded permanent case-law according to which a consumer perceives a mark as a whole and does not proceed to analyse its various components.

The Office does agree with the applicant that a trade mark has to be assessed as a whole. 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).

Thus, the sign at issue, ‘IoTconnector’ has to be assessed, firstly, in relation to the goods at issue – all kind of measuring and testing devices for numerically controlled machine tools - which for the sake of good order are the following:

Class 9 Measuring and testing devices and monitoring devices for numerically controlled machine tools; measuring instruments for numerically controlled machine tools; sensors for machine tools; numerical control apparatus and automatic control apparatus for numerically controlled machine tools; electric controls for numerically controlled machine tools; connection modules for electrical controls; programmable controllers; electronic control systems; control apparatuses [electric] for numerically controlled machine tools; interface software and computer interfaces for controlling numerically controlled machine tools; interface cards for data processing equipment for the control of numerically controlled machine tools; software for controlling industrial processes; software for use in connection with industrial manufacturing and / or manufacturing planning, in particular numerical control programs and machine tool operating programs; data processing equipment; computers; storage devices for data processing installations; interfaces [interface apparatus or programs for computers]; communications interface units; data bus interface devices; communications equipment; numerical, electromechanical, electric and electronic controls and / or data processing equipment for machine tools and / or assemblies of machine tools.

Secondly, the sign at issue, ‘IoTconnector’ has to be assessed in relation

to the perception of the relevant consumer which the Office reasonably identified as a professional in the field of machine tool building, incorporating digital control and monitor systems.

Therefore, the Office is of the position that when taken as a whole, the meaning of the term ‘IoTConnector’ will be clear to the relevant professional public who without any difficulty will establish a direct and specific link between the mark and the goods for which registration is being sought, namely that these are various kind of IOT-connected devices (testing and monitoring via Internet/via mobile devices) for digitally controlled machine tools which connect to the Internet of Things, also called Industrial Internet of Things/IIoT as a sub-class when the internet devices or internet applications in question are ‘industrial’ or commercial in nature. Therefore, it is the Office’s view that the term ‘‘IoTConnector’ is readily intelligible when taken in conjunction with the goods applied for, and viewed by the relevant consumer, who will see the expression at hand merely as a descriptor of the quality and intended purpose of the goods being provided rather than an indication of trade origin.

As to the applicant´s assertions that the sign at issue is fancy, innovative and not lexically defined, 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).

As to the applicant´s argument that the goods claimed in class 9 already have a specific purpose (measuring, testing, etc.) but not ensuring a connection to the [Industrial] Internet of Things, 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).

Moreover, as to the applicant´s allegation that the Office has not provided any proof that the abbreviation [IoT] is commonly used for the goods applied for in class 9 by the addressed public or at least understood by the relevant specialists in the field as an abbreviation identifying the characteristics of the goods, 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).

Therefore, the Office maintains its position that the mark applied for, ‘IoTconnector’, will not be perceived by the consumers as pointing to the commercial origin of the goods applied for. For the reasons mentioned above, the sign ‘IoTconnector’ does not possess any distinctive character in relation to the goods applied for pursuant to Article 7(1)(b) and 7(1)(c) and in combination with Article 7(2), and is therefore unable function as a trade mark in the market place, i.e. it fails to distinguish the goods 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.

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  17 926 802 is hereby rejected in part for the following goods:

Class 9 Measuring and testing devices and monitoring devices for numerically controlled machine tools; measuring instruments for numerically controlled machine tools; sensors for machine tools; numerical control apparatus and automatic control apparatus for numerically controlled machine tools; electric controls for numerically controlled machine tools; connection modules for electrical controls; programmable controllers; electronic control systems; control apparatuses [electric] for numerically controlled machine tools; interface software and computer interfaces for controlling numerically controlled machine tools; interface cards for data processing equipment for the control of numerically controlled machine tools; software for controlling industrial processes; software for use in connection with industrial manufacturing and / or manufacturing planning, in particular numerical control programs and machine tool operating programs; data processing equipment; computers; storage devices for data processing installations; interfaces [interface apparatus or programs for computers]; communications interface units; data bus interface devices; communications equipment; numerical, electromechanical, electric and electronic controls and / or data processing equipment for machine tools and / or assemblies of machine tools.

The application may proceed for the remaining services, namely:

Class 42 Conducting technological studies on machine tools; engineering services relating to the design of machine tools; development of computer programs stored on data carriers [software] for use in construction and automated production CAD / CAM / CNC; development and creation of computer programs for data processing; consultancy relating to man-machine interfaces for computer software; services for the design of software for electronic data processing; design of data processing systems; design of computer programs; programming of electronic control systems; creating programs for industrial production and / or for final planning, in particular creating programs for the numerical control of machine tools.

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.

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