Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 07/08/2019

BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE

Postfach 10 71 27

D-28071 Bremen

ALEMANIA

Application No:	017953523
Your reference:	U30883EM
Trade mark:	HUMANIZING THE BLOCKCHAIN
Mark type:	Word mark
Applicant:	Unify Holdings Ltd. Olde Town Bldg. P.O. Box N-3319, Sandyport Nassau LAS BAHAMAS

1. The Office raised an objection on 09/10/2018 pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

2. The applicant was granted an extension of two months and submitted its observations on 11/02/2019; these may be summarised as follows:

• The mark HUMANIZING THE BLOCKCHAIN is distinctive and capable of serving as a trade mark. It may contain an objective message, but like “Vorsprung durch Technik” it only sets a causal link and accordingly requires a measure of interpretation on the part of the relevant public.

• The consumer and the relevant public have to engage in multistage reasoning to determine what HUMANIZING THE BLOCKCHAIN means in respect of the goods and services covered. A command to “HUMANIZE THE BLOCKCHAIN” would leave the consumer wondering what to do.

• As regards the goods “digital assets, namely, crypto currency wallet and crypto currency tokens, computer software for blockchain technology”, the findings of the office are not convincing. Neither digital assets nor computer software can be improved/changed in a way to make the blockchain and blockchain technology more suitable and accessible for the general public. The same applies for the related services.

• The trade mark applied for is not e.g. “HUMANIZING DIGITAL ASSETS” or “HUMANIZING BUSINESS CONSULTING SERVICES”. If this was the case, the office`s argument could apply, but it would definitely not apply to blockchain and blockchain technology. When talking about blockchain technology, it has to be distinguished between the blockchain technology as such and applications based on that blockchain technology. The goods and services applied for in classes 9, 35, 36 and 42 are goods and services in the field of the blockchain technology, but they are not the blockchain technology.

• The blockchain technology is not something which could be improved/changed to make it more suitable and pleasant for people as one cannot improve/change a collection of algorithms and protocols – which are applied by computers – to make them more suitable and pleasant for people.

• The mark is a juxtaposition of words which are conceptually and literally inaccurate and thus fanciful and distinctive.

• If a trade mark is of laudatory nature and even if it is preliminarily understood by the public as a promotional formula, it cannot be excluded that the trade mark can be perceived by the public as an indication of commercial origin.

• Basic IT standard technologies cannot be humanized as they are not subject of humanization, but are applied by computers. Computers do not care about HUMANIZATION.

• The mark shows some degree of originality and expressiveness, which makes is easy to remember.

• The term “HUMANIZING THE BLOCKCHAIN” is literally as inaccurate as e.g. “HUMANIZING ALGORITHMS” or “HUMANIZING THE ALPHABET”.

• The applicant refers to case law in support of its arguments.

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.

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).

The Office cannot find anything distinctive about the slogan HUMANIZING THE BLOCKCHAIN in relation to the goods and services applied for (which all are related to blockchain technology).

To “humanize” something means, among others:

to adapt to human nature or use

https://www.merriam-webster.com/dictionary/humanize

to make a process or system less severe or easier for people to understand and deal with

https://www.macmillandictionary.com/dictionary/american/humanize#humanize_4

to make humane; civilize; refine

https://www.yourdictionary.com/humanize

The words “THE BLOCKCHAIN” in the mark would immediately be understood as referring to blockchain technology. Even though the goods and services are not blockchain technology as such they are all for blockchain technology or in the field of blockchain technology.

Blockchain technology is a relatively new concept that is booming worldwide, although most people do not yet understand what it is, let alone how it works. The expression HUMANIZING THE BLOCKCHAIN may therefore be understood as techniques and methods which makes it easier for people to understand and make use of this technology; to bring it closer to humankind.

One can humanize various technological systems to make them more adaptable to human use, see e.g.:

One of the main trends in the field of design and technology is to humanize technological systems, that is, to generate more human relationships between people and devices. But why should relations between people and technology be humanized? And what does it really mean for technology to be humanized?

Humanizing technology means that, as living beings, we can relate to it in a way more similar to what we do with each other. This has the objective of generating security, naturalness and transparency, to generate engagement with users, and for everything, so that the services we use are easier and more efficient. https://slashmobility.com/blog/2018/06/the-humanization-of-technology-and-how-it-affects-the-design-of-interfaces/?lang=en

See also generic/non-distinctive use of the word “humanize/humanizing” in relation to “blockchain”.

Humanizing Blockchain: How To Bring Trust To A Trustless System

https://artplusmarketing.com/humanizing-blockchain-how-to-bring-trust-to-a-trustless-system-e93c60349b0

Coinme is on a mission to humanize the power of blockchain technology by providing the most accessible, secure and user friendly solution for exchanging cryptocurrencies around the world.

https://www.builtinseattle.com/company/coinme

“Our goal is to humanize the blockchain, not just by making everybody buy into this one genesis idea of Bitcoin, but by really using that as a way to introduce a new set of possibilities to build the future network of tomorrow.”

http://nakamotonews.socialpetitions.org/our-goal-is-to-humanize-the-blockchain-not-just-by-making-everybody-buy-into-this-one-genesis-idea-of-bitcoin-but-by-really-using-that-as-a-way-to-introduce-a-new-set-of-possibilities-to-bu/

All references above, including dictionary references, were retrieved from Google on 05/08/2019.

The Office struggles to find anything distinctive with the mark applied for in relation to the goods and services in question. As a whole it would merely be perceived as a typical customer service statement that informs the relevant public that the blockchain technology-based goods and services provided by the applicant are adapted to be more accessible and suitable for ordinary people.

It will not be seen as command to the users of the goods and services but as a laudatory slogan indicating the applicant’s dedication to make blockchain related goods and services easier to understand and use for all.

No reasoning or interpretation is needed in order to grasp the message conveyed by the mark. Applied to the goods and services, that are all related to cryptocurrency and blockchain technology, the mark lacks any distinctive character.

It may be that literally it is impossible to make a series of algorithms and protocols “human” as such, but it is definitely possible to simplify systems and technologies in order to make them more adaptable to human use. The average consumer would not analyse into depth whether something is technically possible or not, but would perceive the mark first and foremost as a slogan indicating that the applicant’s motto is to humanize blockchain technology (and that it provides goods, services and means to make that happen).

As for the applicant’s reference to the judgment in “Vorsprung durch Technik”, while it is true that the Vorsprung durch Technik judgment did not exclude promotional formulas from registration, it did not indicate that all slogans are distinctive and may be registered just because of the fact that they are promotional formulas. In paragraph 45 of that judgment the ECJ stated that “in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a promotional formula has no bearing on its distinctive character”. This means that the relevant public has to perceive a promotional formula as a source originator in order for it to be considered as distinctive.

The applicant has not been able to show that is the case or that the mark will be easy to remember. On the contrary, it is highly unlikely that the consumer will find the mark original or unusual. In the absence of an additional distinctive element, such as a company name or a fanciful logo, there is nothing in the mark that might enable the relevant public to perceive the mark as an indication of the commercial origin of the goods and services.

4. For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 017953523 is hereby rejected for all the goods and services claimed, namely for:

Class 09 Digital assets, namely, cryptocurrency wallet and cryptocurrency tokens; computer software for blockchain technology.

Class 35 Business consulting in the field of blockchain, digital assets, and cryptocurrency technology.

Class 36 Financial consulting in the field of blockchain, digital assets, and cryptocurrency technology; cryptocurrency exchange services designed for global trading; cryptocurrency payment services.

Class 42 Technological consulting in the field of blockchain, digital assets, and cryptocurrency technology; providing a blockchain platform; issuing certificates of authority for a blockchain network; providing digital validation for blockchain transactions; providing online non-downloadable software for use in blockchain, digital assets, and cryptocurrency technology; design, research, development, and implementation of blockchain, digital assets, and cryptocurrency technology.

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.

Cecilia ALIN