Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 27/03/2019

DLA PIPER FRANCE LLP

IP & T department 27 rue Laffitte

F-75009 Paris

FRANCIA

Application No:	017951609
Your reference:	IPT/TM/SBM/cross
Trade mark:	CROSS VERIFY
Mark type:	Word mark
Applicant:	Black Gold Coin, Inc. 7495 Azure Drive, Suite 100 Las Vegas Nevada 89408 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 08/10/2018 pursuant to Article 7(1)(b) 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 08/02/2019, which may be summarised as follows:

1- The fact that a mark is perceived as a promotional message is not sufficient, in itself, to support the conclusion that the mark is devoid of distinctive character.

2- `cross-check´ is the common expression used to refer to cross verification.

3- CROSS VERIFY is allusive and requires some interpretation by the relevant public.

4- Similar marks have been accepted 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 its objection.

General remarks

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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).

Specific remarks on the applicant’s observations

1- The fact that a mark is perceived as a promotional message is not sufficient, in itself, to support the conclusion that the mark is devoid of distinctive character.

Promotional messages are not devoid of distinctive character per se. However, they must be endowed with the minimum distinctive character required under Article 7.1.b EUTMR.

2- `cross-check´ is the common expression used to refer to cross verification.

And

3- CROSS VERIFY is allusive and requires some interpretation by the relevant public.

`Cross check´ being more commonly used than the expression `cross verification´ or `cross verify´ does not suffice to render the latter distinctive because the word `verify´ is a synonym of the word `check´ and its meaning will immediately be understood by the English speaking consumer, in an unequivocal way.

Furthermore, an internet search running the Google search engine on the words `cross verification´ reveals widespread use of this word combination.

4- Similar marks have been accepted by the Office.

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).

Conclusion

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 017951609 is hereby rejected for the following services:

EN-42

Providing a website featuring information about issuance of identity credentials, storage of identity information, identity protection, verification and transmission; Providing a blog site featuring information about issuance of identity credentials, storage of identity information, identity protection, verification and transmission; Managing and administering a decentralized computer system for issuing identity credentials and documentation, verifying identity credentials and documentation, storing identity credentials and documentation, encrypting identity credentials and documentation, transmitting identity credentials and documentation, and tracking and monitoring transmission of identity credentials and documentation; Platform as a service (PAAS) featuring computer software platforms for enabling user provisioning and deprovisioning and managing access to identity credentials, identity information, identity documentation and verification of same and sensitive and/or confidential information, and transmission of identity information and sensitive and/or confidential information; Providing a website and/or software that gives users the ability to have an authenticated identity and identity credentials and documentation, and sensitive and/or confidential information and providing access thereto and/or transmission thereof; All of the above based on biometric authentication and/or multi-factor authentication; All of the above using blockchain technology.

EN-45

Licensing technology for a platform as a service (PAAS) featuring computer software platforms for enabling user provisioning and deprovisioning and managing access to identity credentials, identity information, identity documentation and verification of same and sensitive and/or confidential information, and transmission of identity information and sensitive and/or confidential information; Licensing a system for for issuing identity credentials and documentation, verifying identity credentials and documentation, storing identity credentials and documentation, encrypting identity credentials and documentation, transmitting identity credentials and documentation, and tracking and monitoring transmission of identity credentials and documentation.

The application may proceed for the remaining services, i.e. Financial services.

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.

Jean Marc SCHULLER