Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 05/06/2019

WITHERS & ROGERS LLP

4 More London Riverside

London SE1 2AU

UNITED KINGDOM

Application No:	018015117
Your reference:	T125225CTM/FM
Trade mark:	1RPA
Mark type:	Word mark
Applicant:	IPsoft Incorporated 17 State Street New York NY 10004 USA

The Office raised an objection on 06/02/2019 pursuant to Article 7(1)(b) 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.

The applicant submitted observations on 28/03/2019, which may be summarised as follows:

• The applicant argues that the relevant consumer is the public at large, and should not be considered as a professional in the field of robotic software engineering. The applicant has supported the argument by providing an extract from the goods and services specification and from their website, which refers to users, employees and businesses.

• The applicant further argues, as the relevant consumer is not a professional in the field of robotics but a member from the general public, and the letters “RPA” will have no meaning, even though it has been conceded the acronym RPA does exist in the field of software engineering, or more specifically in the field of robotics.

• The applicant has indicated that they provide a family of products all of which are based on its “1Desk” suite products. All of the related products are prefixed by the digit “1”, and the “1” is not used to delivered a positive promotional message.

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.

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 applicant has argued that the related software tools and/or services are provided to the public at large, and as such the relevant consumer does not require a specialist knowledge, for example in robotic engineering. The Office accepts that such products and services are available to the public at large, however it is clear from the nature and characteristics of such tools and/or services, that the final user, employees and/or businesses will only be using, purchasing and/or deploying such products and/or services once one has a good understanding on how to leverage such technology. The relevant consumer would only be researching such tools and services, if indeed such a consumer is aware and understands the benefits of process automation and it’s potential. Furthermore, the Office can accept that such tools may well be more intelligent and/or easier to use that a traditional RPA, but a general understanding of what ‘bots’, ‘clones’, ‘intelligent automation’ and/or ‘concurrent processing’ means is required in order to access the potential of the products and services in question. The Office remains of the opinion that such knowledge is not commonly held by the public at large, but on the contrary, it is knowledge held by specialists in the field of robotics, process management, innovation and software engineering in general.

It has been accepted that the acronym RPA can refer to Robotic Process Automation, but the applicant has further argued that the term would be seen by the relevant consumer as three letters ‘R’, ‘P’ and ‘A’ and not referring to the aforementioned acronym. The Office does not accept this argument, as previously argued, the given consumer is likely to be working, or at a minimum researching or exploiting, the field of robotics or software innovation, therefore the term RPA will be known and easily identified in the minds of the relevant public. The relevant consumer will immediately and without any difficulty establish a direct and specific link between the mark and the goods and services in respect of which registration is sought.

The sign 1RPA is so clear that no analytical effort on the part of the relevant consumer is required in order to recognise the meaning of the sign, i.e. the number one product and/or service in Robotic Process Automation. No ambiguity can be deduced, contrary to the applicant’s arguments. In this context, there is no doubt that the digit ‘1’ prefixing a well-known acronym RPA, is so ordinary that it is devoid of distinctive character

The sign 1RPA will be perceived by the relevant public immediately as a laudatory statement that merely indicates the possible use and characteristics of the given products and services in question. The mark lacks any secondary or covert meaning, and its message to the consumer is plain, direct and unambiguous. The relevant English-speaking public will see this as an invitation or encouragement to use the products and services in question. Apart from its promotional meaning, it does not contain any element enabling the relevant public to perceive it as an indication of the commercial origin of the goods at issue (06/06/2013, T-515/11, Innovation for the real world, EU:T:2013:300, § 53, confirmed by order of 12/06/2014, C 448/13 P, Innovation for the real world, EU:C:2014:1746 §36-37).

Thus, although slogans are not examined more strictly than other marks and even though a minimum degree of distinctiveness is sufficient for registration, in this case, the Office sees nothing unusual or striking about the combination of the digit and acronym RPA applied for, to support the finding that it could function as an indicator of origin.

The Office considers further argumentation superfluous. It derives from all of the foregoing that the applicant has not succeeded in convincing the Office that the sign 1RPA will be perceived by consumers as pointing to the commercial origin of the contested goods and services.

The applicant has not claimed that its mark has acquired distinctiveness through the use that has been made of it (Article 7(3) EUTMR).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and Article 7(2) EUTMR, the application for European Union trade mark No 018015117 is hereby rejected.

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.

Eamonn KELLY