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

(Article 7 EUTMR)]

Alicante, 24/01/2019

VALEA AB

Lilla Bommen 3a

SE-405 23 Göteborg

SUECIA

Application No:	017949510
Your reference:	DTET0009EM
Trade mark:
Mark type:	Figurative mark
Applicant:	DISRUPTIVE TECHNOLOGIES AS Ytrebygdsvegen 215 N-5258 Blomsterdalen NORUEGA

1. The Office raised an objection on 01/10/2018 pursuant to Article 7(1)(b) and (c) EUTMR 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.

2. The applicant submitted its observations on 14/11/2018 which may be summarised as follows:

• The list of goods and services is amended to read:

Class 9: Data processing apparatus; intercommunication apparatus; Computer memory devices; Integrated circuits; Chips [integrated circuits]; Computer peripheral devices; Interfaces for computers; Electronic tags for goods; Computer programs [downloadable software]; Computer software applications, downloadable; Computer software platform and sensor systems for receiving and analyzing sensor data from smart connected devices; Sensors [measurement apparatus], other than for medical use; all aforesaid in relation to sensing technology.

Class 42: Providing downloadable computer software via internet; application service provider [ASP]; updating of computer software; installation of computer software; monitoring of computer systems by remote access; software as a service [SaaS]; providing information on computer technology and programming via a web site; cloud computing; Computer services for design, integration and technical support of a wireless sensor network and communications infrastructure related thereto; all aforesaid in relation to sensing technology.

• The applicant is the developer of the world’s smallest commercial-grade wireless sensors e.g. for temperature, touch or sensing proximity.

• According to Oxford Dictionary the word “disruptive” also means “causing trouble and therefore stopping something from continuing as usual”. Therefore, it is clear that the sensor technology developed by the applicant detects something that causes trouble and therefore stops something from continuing as usual. For example, in the food sector the applicant‘s smart sensors monitor temperature and trigger alerts when there are unexpected changes. The mark is therefore fanciful as it refers to a technology which is actually detecting any disruptive features.

• The meaning provided by the examiner, e.g. that the goods and services are and relate to technology and that they are innovative and ground-breaking, is secondary.

• The Office has accepted several marks containing the word DISRUPTIVE and a descriptive term, for instance:

EUTM No. 11 926 698 - Disruptive Capital

EUTM No. 13 662 622 - Disruptive Management

EUTM No. 15 109 291 - Disruptive Investment

EUTM No. 17 920 771 - Disruptive Materials

EUTM No. 1 346 014 - Disruptive cosmetics

• The relevant public is a specialised or professional public interested in cloud based sensors/sensing solutions which will pay a high level of attention when purchasing wireless sensors. These consumers are capable of establish immediately and without further reflection a concrete and direct relationship with the majority of the goods and services in question and the applicant.

• The figurative elements, namely the stylized word elements and a line of colours of the spectrum render the mark distinctive. The colours of the line are a specific combination of colours and are a reference to a thermometer colour display, or any sensory display where red signals disruption, and green shows the normal state.

• The applicant claims that the mark has acquired distinctiveness and provides some examples of use. The claim is subsidiary.

3. Pursuant to Article 75 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)(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).

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.

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 Office notes the limitation, however, the addition of “all aforesaid in relation to sensing technology” does not render the mark distinctive, as the goods and services are all technological in nature

As shown in the Notice of grounds for refusal the word “disruptive” means among others “innovative and groundbreaking”. https://en.oxforddictionaries.com/definition/us/disruptive

It was also shown that “disruptive technology” means e.g. a technology that displaces an established technology and shakes up the industry or a ground-breaking product that creates a completely new industry. Ref. https://whatis.techtarget.com/definition/disruptive-technology

The term has also made its way into the established English dictionaries. Cambridge English Dictionary defines the term as “a new technology that completely changes the way things are done”. Ref. https://dictionary.cambridge.org/dictionary/english/disruptive-technology

See also Collins English Dictionary which defines the term as “a disruptive technology is a new technology, such as computers and the internet , which has a rapid and major effect on technologies that existed before”. Ref. https://www.collinsdictionary.com/dictionary/english/disruptive-technology

The relevant consumers are mainly professionals in the computer and IT field. The concept of disruptive technology is well-known among these consumers. To produce and use disruptive technology and innovative and ground-breaking products is an aim for many companies because usually such technologies and products are far more advanced than the previous versions of the same kind of technologies and products, and to be in the forefront of innovation gives one an advantage over the competitors.

The mark ‘DISRUPTIVE TECHNOLOGIES’ is therefore considered to be a promotional laudatory slogan which simply indicates that the applicant provides technological goods and services (in the computer and IT fields) which are innovative and ground breaking and which support innovation in a number of different markets.

The mark ‘DISRUPTIVE TECHNOLOGIES’ is also directly descriptive of the goods and services applied for because it indicates in a direct and specific way that the goods and services are (computer) technological in nature and that they are innovative and ground-breaking, and that they may change the way we work, live, think and behave. It also indicates that the services technological services that are innovative and ground-breaking, and that the disruptive technologies have been used to create the products. This is also true for the sensors and sensor technology which the applicant provides.

When viewing the mark in connection with the goods and services in question the relevant public will simply see it as an informative and promotional message. There is no element whatsoever in the mark that would lead them to believe that the mark is an indication of commercial origin.

As for the figurative elements of the mark they consist of the two words in a standard typeface one placed above the other, and a coloured line between the mark in the colours red, orange, yellow, green and blue. None of these elements render the mark distinctive.

The words are in a standard typeface and placed one above the other. This kind of placement is common in advertising. Using lines and other geometrical shapes and colours are also common in advertising. Therefore none of the figurative elements render the mark distinctive. See the Office’s Guidelines, Part B, Examination, Section 4, Absolute Grounds For Refusal, Chapter 4, point 4.2 Assessment of the figurative threshold.

The applicant argues that the colours are a reference to a thermometer display or any sensor display where red signals disruption and green shows the normal state. In such a case the line is a clear reference to the goods and services and would not be seen as distinctive.

As for the fact that the word disruptive has several meanings, 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 addition, as has been shown above, the term “disruptive technology”, the singular form of “disruptive technologies” has found its way into English dictionaries, which means that the term is established in the English language generally, and not exclusively in the computer and IT fields.

As regards the applicant’s argument that a number of 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 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).

‘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).

Furthermore, those marks do not feature the term ‘DISRUPTIVE TECHNOLOGIES’ which, as shown above, has become established in the computer and IT fields.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) and/or (c) and Article 7(2) EUTMR the application for EUTM No  17 949 510 is declared to be descriptive and non-distinctive pursuant to Article 7(1(b) and (c) for all the goods and services claimed in the native English-speaking Member States, namely the United Kingdom, Ireland and Malta, and the Member States where English is well-understood, namely, Cyprus, Denmark, Finland, the Netherlands and Sweden.

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.

Anne-Lee KRISTENSEN