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

(Article 7 EUTMR)

Alicante, 29/04/2019

ELKINGTON AND FIFE LLP

Prospect House, 8 Pembroke Road,

Sevenoaks, Kent TN13 1XR

REINO UNIDO

Application No:	017950614
Your reference:	CJM/T53229EM
Trade mark:	PUREVPN
Mark type:	Word mark
Applicant:	GZ Systems Limited 31/F, Times Square Tower Two, 1 Matheson Street, Causeway Bay Hong Kong REGIÓN ADMINISTRATIVA ESPECIAL DE HONG KONG DE LA REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 03/10/2018 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 the time limit until 03/02/2019, the applicant submitted its observations on 04/02/2019, which may be summarised as follows.

1. The mark applied for, ‘PUREVPN’, is a single invented word which will require some degree of further thought before the consumer separates the elements and associates them with the goods and services for which the registration is sought. The sign makes no reference whatsoever to ‘a quality VPN system’.

The mark is essentially ambiguous because it has no single immediate and obvious meaning. It is not a phrase which the relevant English-speaking consumer would use to describe the respective goods and services.

The mark does not directly describe any of the goods and services listed in the application, in particular, computer software; computer application software; computer software relating to the operation of web proxies … in Class 9 and telecommunications services; web proxy services allowing users to connect to websites through a proxy server and providing a database of open proxy servers in Class 38.

2. The applicant reserved the right to file evidence of acquired distinctiveness. On 01/02/2019, the applicant clarified that the claim is intended as a subsidiary one.

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 limitation and the applicant’s other arguments, the Office has decided to maintain the objection.

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the product or service from others which have another origin (18/06/2002, C‑299/99, Remington, EU:C:2002:377).

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign in question, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods and/or services in respect of which registration is sought (20/03/2002, T‑356/00, Carcard, EU:T:2002:80). For assessing descriptiveness under Article 7(1)(c) EUTMR, it is sufficient to establish that the mark consists exclusively of a sign or an indication that may serve, in trade, to designate the nature, intended purpose and/or other characteristics of the goods (30/11/2004, T‑173/03, Nurseryroom, EU:T:2004:347).

For the absolute ground for refusal laid down by Article 7(1)(c) EUTMR to apply, it is sufficient that there exists, from the perspective of the intended public, a direct and specific association between the sign and the categories of goods and services in respect of which registration is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43; 05/02/2004, C‑150/02, Streamserve, EU:C:2004:75).

The refusal of a trade mark as being descriptive is justified if, for the public addressed, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services claimed (‘Streamserve’). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary for the word to be used in its descriptive sense in trade. It is sufficient if it is capable of being used as such.

Although the evaluation of the descriptiveness and/or distinctiveness of a trade mark may comprise an assessment of the individual elements separately, it must, in any event, depend on an appraisal of the mark as a whole. In order to establish the distinctive character of a sign, it is not necessary to find that the sign is original or fanciful (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532).

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

As a general rule, the mere combination of descriptive terms 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 the meaning of the elements of which it is composed, with the result that the complete word is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87). Further, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark application, it is not necessary that the words are used in their descriptive sense in commerce. It is sufficient that it is capable of being used as such.

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 (19/05/2010, T‑108/09, Memory, EU:T:2010:213, § 35).

A word mark which 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 that are devoid of distinctive character which alone renders them capable of fulfilling that essential function (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 conditioned by a finding that the term concerned is commonly used (12/02/2004, C‑265/00, Biomild, EU:C:2004:87).

Article 7(2) EUTMR states that paragraph 7(1) shall apply notwithstanding that the grounds of preventing registration obtain in only part of the European Union.

As regards the applicant’s observations, the Office replies as follows.

In its submissions, the applicant argues that the mark applied for, ‘PUREVPN’, is a single invented word which will require some degree of further thought before the consumer separates the elements and associates them with the goods and services for which the registration is sought and that the sign makes no reference whatsoever to ‘a quality VPN system’. The applicant further argues that the mark is essentially ambiguous because it has no single immediate and obvious meaning.

The Office has noted the applicant’s comments. However, when assessing a mark, the Office must consider it, not in its strictest grammatical sense, but how it would represent itself to the public at large who would look at it in relation to the goods and services for which registration is being sought, and form an opinion of what it connotes.

The applicant does not dispute the meaning of the sign’s individual words but argues that their combination in one expression is an invented and ambiguous phrase, and that its understanding by the relevant consumer would require several mental steps.

The sign applied for consists of a juxtaposition of two readily identifiable and ordinary English words, namely, ‘PURE’, with the meaning ‘not mixed or adulterated; authentic, genuine’ and ‘VPN’, an abbreviation of ‘virtual private network; a network that uses the internet to transfer information using secure methods’ definition’ (information extracted from Collins English Dictionary on 29/04/2019 at https://www.collinsdictionary.com/ ).The words are easily recognisable and presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant English-speaking public will perceive the mark not as unusual, but rather as a meaningful expression referring to a quality or, in other words, genuine, authentic, virtual private network.

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/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).

Moreover, 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).

As regards the applicant’s argument that the mark applied for, ‘PUREVPN’, is not a phrase which the relevant English-speaking consumer would use to describe the respective goods and services, the Office has noted the applicant’s comments.

However, the Office respectfully disagrees and asserts that 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.)

Furthermore, the conjoining of two descriptive words which are found in a dictionary, does not automatically confer upon the totality a degree of distinctive character by virtue of it not appearing in a dictionary. The English-speaking public will immediately perceive two words in the expression ‘PUREVPN’ and make an instinctive dissection of the 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).

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).

Further, in its submissions the applicant argues that the mark ‘PUREVPN’ does not directly describe any of the goods and services listed in the application, in particular computer software; computer application software; computer software relating to the operation of web proxies … in Class 9 and telecommunications services; web proxy services allowing users to connect to websites through a proxy server and providing a database of open proxy servers in Class 38.

The Office has noted the applicant’s comments. However, with regard to the applicant’s general argument that there is no direct link between the contested goods and services and the mark applied for, it must also be advised that

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).

The Office believes the relevant consumer will understand VPN (Virtual Private Network) technology as performing two main functions: on the one hand, encrypting network traffic and so protecting the data from spies and censors; and on the other, providing the computer of the respective user with a new network address (IP address), often in a different country than the user’s physical location, thereby allowing the user to browse freely and anonymously. In other words, the VPN basically acts as a proxy server channelling the user’s encrypted network traffic between the user’s computer and its ultimate destinations through the VPN (proxy) servers.

Therefore, the Office considers that for a relevant consumer (in this case within a professional public), there is no need for an additional mental step to understand the connection between the mark and the contested goods and services, including those questioned by the applicant in its abovementioned argument.

Furthermore, the Office considers that the high level of attention of the relevant public alone does not establish that the consumer will recognise an indication of origin when confronted with such a clearly descriptive term, unless it is represented in a really striking manner, which is not the case here. Consumers do not tend to carry out analytical or complex analyses of indications on goods or in relation to services they are confronted with, and will perceive the expression ‘PUREVPN’ only as a meaningful term conveying obvious and direct information regarding the quality, kind or subject matter of the goods and services in question; namely that they concern or directly relate to a quality (genuine or authentic) virtual private network system or technology.

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).

Moreover, the sign applied for is simple, basic and so lacking in additional distinguishing features or graphic elements that it cannot carry out the ultimate function of a trade mark, even if 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 having the role of a trade mark.

Therefore, the applicant has not succeeded in convincing the Office that the sign applied for, ‘PUREVPN’, will be perceived by consumers as indicating the commercial origin of the contested goods and services. For the abovementioned reasons, the expression ‘PUREVPN’, is not distinctive in relation to the contested goods and services for which registration is sought, pursuant to Article 7(1)(b) and 7(1)(c) EUTMR and in combination with Article 7(2) EUTMR, and is therefore unable to function as a trade mark in the marketplace. That is, it fails to distinguish the contested goods and 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.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(1)(c) and Article 7(2) EUTMR, the application for EUTM No 17 950 614 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and 7(1)(c) for all the goods and services claimed, not only in the Member States in which English is an official language, that is, Ireland, Malta and the United Kingdom, but also for the public in EU territories where English is largely understood, such as the Netherlands, Sweden, Denmark and Finland (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23).

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.

Robert KLECUN