Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 29/04/2020

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

REINO UNIDO

Application No:	018024917
Your reference:	SJJ/2677.192
Trade mark:	CXLOYALTY
Mark type:	Figurative mark
Applicant:	Affinion Publishing LLC 10750 West Charleston Blvd., Suite 130 Las Vegas Nevada 89135 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a further objection on 08/10/2019 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 requested an extension on 09/12/2019 for two months and submitted its observations on 12/02/2020 but has referred to and repeated many of the arguments it had already presented earlier on 09/08/2019. The arguments may be summarised as follows:

1. The Office has accepted similar marks consisting of and / or containing the letters CX.

2. The Office has not shown that this is a term which is widely used at all. Its inclusion in one listing of acronyms does not equate to universal knowledge of the term. Because it is possible to find something on the internet does not mean that it is true or that it is actually known at all. A search of the Onelook dictionary revealed that the full words CUSTOMER EXPERIENCE do not appear in any mainstream dictionary

3. The meaning of CUSTOMER EXPERIENCE is clear whereas the meaning of CX is not.

4. There is insufficient evidence to say that the ordinary would ignore the mark as being CXLOYALTY but would instead decode it by checking in a dictionary to see that CX was actually an acronym for CUSTOMER EXPERIENCE and then add this to the word LOYALTY.

5. If CX does mean Consumer Experience and if LOYALTY means Loyalty services, the applicant fails to see how it can be equally descriptive / non-distinctive for all of the services applied for and proposes a limitation.

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 waive the objection pursuant to Article 7(1)(c) and Article 7(2) EUTMR for the following services:

Class 35 Direct mail advertising services; marketing services, namely, business marketing consulting to businesses and other product and service providers; business strategic consulting services to businesses and other product and service providers; managing the serving, targeting, tracking and reporting of advertising and advertising content to media platforms, networks and channels; market and market research data analytics and segmentation using artificial intelligence and curation services involving consumer data and information.

Class 36 Insurance administration and brokerage services in the field of identity theft insurance; charitable fundraising services for non-profit organizations from sales generated by use of gift cards to purchase goods and services of others.

Class 39 Organization of business travel; travel information services; arranging and conducting travel tours and vacation packages, namely, arranging air, land and sea transportation for individuals and groups; coordinating travel arrangements for individuals and for group tours; car rental reservation services; making auto and airline reservations and bookings for travel by means of electronic communications networks.

Class 43 Providing travel lodging information services and travel lodging booking agency services for travellers; travel agency services, namely, making reservations and booking for temporary lodging; making reservations and bookings for restaurants and meals; providing travel agency services via an on-line interactive database for arranging reservations and bookings for temporary lodging.

The objection is maintained for the remaining services.

General remarks on Article 7(1)(b) and Article 7(2)

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks which 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).

The marks referred to in Article 7(1)(b) are, in particular, those which 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). 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).

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 absolute grounds for refusal of a lack of distinctive character and the characteristics of descriptive and usual indications each have their own scope of application and are neither mutually dependent nor mutually exclusive. Even though the existence of just one ground for refusal is enough, they can also be examined cumulatively. Interpreting the case-law by the Courts, it can be concluded that the sign must be refused registration under Article 7(1)(b) EUTMR if, on the basis of its most obvious meaning in relation to the goods or services in question, it is devoid of distinctive character.

A mark may be devoid of distinctive character in relation to goods or services for reasons other than the fact that it describes features of the goods/services (see, to that effect, judgment of 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.

The applicant’s arguments

1. The Office has accepted similar marks consisting of and / or containing the letters CX. The applicant refers to the following marks:

-CX-IMPACT: for Customer satisfaction consultancy and analysis; Consultancy relating to customer relationship optimisation, marketing. It must be because of how the letters CX are perceived in the mark.

-CX MANAGER: Customer Experience Manager;

-CX Analytics: Customer Experience Analytics;

-CX: CUSTOMER EXPERIENCE.

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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, §35)

Insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to other marks to the benefit of someone else (see judgement of 10/03/2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

As regards the acronym CX in combination with the word Impact, the applicant itself can conclude with a simple Google search that it’s not as commonly used as CX LOYALTY

-CX Manager, was partially refused and subsequently accepted after the necessary limitation. It refers to completely different goods and services (computer applications for automotive industry, retail and wholesale of smartphones, tablets and applications, installations of electronic devices in cars and computer hardware development).

-CX Analytics is registered in 2011 where the meaning of CX was not as widely used as it is today.

-the previously registered CX marks on its own are either figurative marks or refer to different goods and services

018189212 – CX (machines)

017359605 – CX (headphones)

010517563 – CX (machines, toys, and repair services)

Consequently, the earlier acceptance of the signs indicated by the applicant does not always indicate any flaws and has no impact on the decision at hand as it neither disqualifies the objection raised or indicates any fault in its reasoning.

2. The Office has not shown that this is a term which is widely used at all. Its inclusion in one listing of acronyms does not equate to universal knowledge of the term. Because it is possible to find something on the internet does not mean that it is true or that it is actually known at all. A search of the Onelook dictionary revealed that the full words CUSTOMER EXPERIENCE do not appear in any mainstream dictionary.

The Office has indicated in both provisional refusals that CX is widely used when performing a Google search. The Office is not bound to use the Google.co.uk site as requested by the applicant. The relevant public comprises the whole of the English-speaking community and this includes Belgium, The Netherlands, most of the Scandinavian countries, Ireland and Malta and those countries are free to use any search engine.

The Office has checked various pages mentioned by the applicant and agrees that the acronym CX cannot be found on all of these because some of the pages are outdated. Below are the results of those searches.

• https://theonlineadvertisingguide.com/glossary/

The Office found CX in the abovementioned site:

• https://www.tubemogul.com/glossary/

Even the very common acronyms such as B2B (business to business), CRM (customer relationship management), GTM (go-to-market) and ERP (Enterprise resource planning) are not included so the Office is not surprised that more recent acronyms such as CX are also missing from that list.

• https://www.digitalhyve.com/20-digital-marketing-abbreviations-acronyms-you-shoulddefinitely-know/

This article is also from 2017 and thus outdated but on number 20 the acronym UX can be found. This means User Experience so the Office believes it’s safe to say that CX stands for Customer Experience

• http://b2bdigital.net/2012/06/07/b2b-marketing-acronyms/

This website was last updated in 2016 and the page referred to by the applicant is from 2012.

• https://www.pmlive.com/intelligence/healthcare_glossary/Terms/m/marketing_acronyms

Various hits were found on this site as well.

From: http://www.pmlive.com/pmlive_search?query=CX&search-box-button=Search&fmo=on

Contrary to the applicant’s arguments, the Office found many returns on CX even in the free dictionary on the 3^rd place under acronyms.

• https://acronyms.thefreedictionary.com/Cx

• https://www.abbreviations.com/CX

• https://www.retailcustomerexperience.com/faq/what-does-cx-stand-for/

Following the applicant’s suggestion to use the google.co.uk website, a simple search gave the following hits:

From: https://www.google.co.uk/search?q=CX&tbm=nws&source=univ&tbo=u&sa=X&ved=2ahUKEwj6x5TVr_noAhXn4IUKHWgZD-kQt8YBKAF6BAgBEAY&biw=1749&bih=907

Contrary to the applicant’s arguments, the acronym was not found in just one but in several websites.

As for the argument that CUSTOMER EXPERIENCE is not found in Onelook, the Office responds that many terms existing of more than one word are not easily found as dictionaries usually search by single word and not by expression so you would need to break down the term in the exact words.

The Office has taken a few very well-known acronyms from the Digitalhyve website as provided by the applicant and one can see that even those acronyms are not found in traditional dictionaries.

3. We would say that the meaning of CUSTOMER EXPERIENCE is clear whereas the meaning of CX is not.

The Office has waived the objection based on Article 7(1)(c), but for the sake of completeness, the fact that a descriptive use of the term applied for cannot be ascertained is irrelevant. Examination of Article 7(1)(c) EUTMR has to be made by means of prognostics (assuming that the mark will be used with respect to the goods or services claimed). It follows clearly from the text of Article 7(1)(c) EUTMR that it suffices if the mark ‘may serve’ to designate characteristics of the goods and services (23/10/2003, C-191/01 P, ‘Doublemint’, EU:C:2003:579, § 33).

The Office does indeed agree with the applicant that the distinctive character of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T-348/02, ‘Quick’, § 29).

Consequently, the sign at issue ‘CXLOYALTY is to be assessed in relation to the services claimed.

The ‘relevant consumer’ is likely to be composed of the professional public and to a certain extent to the public at large with professional knowledge or expertise in the field of business, marketing, advertising and technology solutions. As demonstrated above through the various websites, the targeted public is familiar with the acronym CX and the expression Customer Experience, this term juxtaposed with loyalty is therefore non-distinctive and unable to make it more distinctive.

As mentioned in our second objection letter of 08/10/2019, the fact that the combination of words used is not usual does not mean that such juxtaposition is a violation of English grammar rules, or that an expression thus created will be not understandable for the relevant public. It must even be held that an objection under Article 7(1)(b) and (c) EUTMR also applies in those cases where the lexical structure employed, although not correct from a grammatical point of view, can be considered common in the commercial context at issue. This is the case for the combination ‘CXLOYALTY’.

3. There is insufficient evidence to say that the ordinary would ignore the mark as being CXLOYALTY but would instead decode it by checking in a dictionary to see that CX was actually an acronym for CUSTOMER EXPERIENCE and then add this to the word LOYALTY.

With all due respect, the Office cannot recognize any of the various characteristics which the applicant are raising that the ordinary would decode the sign by checking it in a dictionary and to see that CX was an acronym. There is nothing unusual or surprising which may require an interpretative effort to deduct the meaning of the mark. The relevant public will straightforwardly in relation to the services at issue associate the mark as indicating that the services are prospectively orientated, thus taking into account future law and regulations.

Following the above references of the term CX, the mark ‘CX LOYALTY’ taken as a whole and acquired experience of the Office, the Office did not find the Applicant’s arguments convincing that the relevant professional public would not perceive the term ‘CX’ in the mark as to referring to customer experience.

Furthermore, the Applicant had stated in the letter of observations that the term ‘CX is indeed an acronym for customer experience, it is sufficient that the term at hand is also recognised in the relevant market as demonstrated in the letters of objection. As the term is recognised among the relevant public, it is not relevant that the Applicant could not find the meaning of the term from Collins or other dictionaries.

3. If CX does mean Consumer Experience and if LOYALTY means Loyalty services, the applicant fails to see how it can be equally descriptive / non-distinctive for all of the services applied for and proposes a limitation.

As to the applicant’s argument that the acronym ‘CX’ does not convey the meaning “Customer Experience” indicated by the examiner, the Office recalls that in order to assess whether or not a trade mark has any distinctive character, the overall impression given by it must indeed be considered. That does not mean, however, that one may not first examine each of the individual features of the composition of that mark in turn. It may be useful, in the course of the overall assessment, to examine each of the components of which the trade mark concerned is composed (25/10/2007, C-238/06 P, ‘Plastikflaschenform’, EU:C:2007:635, § 82; 12/06/2007, T-190/05, ‘Twist & Pour’, EU:T:2007:171,§ 43). Indeed, the distinctiveness of each element taken separately may be assessed in part, but must in any event depend on an appraisal of the composite whole ( ‘Twist & Pour’).

The applicant argues that the mark in question is made of an acronym ‘CX‘ and ‘LOYALTY’ which would be used in different contexts. The English speaking public in the European Union, will certainly perceive the mark as having two components – ‘CX’ and ‘LOYALTY’. Conjoining two words together to form a new word is a common practice in the market. The fact that the mark is composed of two separate words conjoined together does not render the mark distinctive in anyway. It is very obvious, that the mark will be perceived as such, and the two words will be perceived separately, because they do not present any unusual variation.

In any case, when assessing the descriptive character of a sign, the grammatical correctness is less important than the question of whether its meaning is clearly understandable and does not have any content that goes beyond the mere sum of the parts (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 41). The same also applies to the message of a sign with regard to its distinctiveness.

The Office believes that by analogy, the same principle applies in this case. Hence the Office was correct in dissecting the mark and giving a reasoned explanation of how the mark will be perceived by the public.

Also, the fact that the word ‘CX’ as such does not appear in any dictionary does not render a sign eligible for registration (12/01/2000, T-19/99, ‘Companyline’, EU:T:2000:4, § 26; 19/09/2002, C-104/00 P, Companyline,EU:C:2002:506, § 22-24; 26/10/2000, T-345/99, ‘Trustedlink’, EU:T:2000:246,§ 37).

Since the mark lacks inherent distinctive character, it is prima facie barred from registration pursuant to Article 7(1)(b) and 7(2) EUTMR.

The absolute ground for refusal under Article 7(1)(b) EUTMR precludes the registration of the sign as a trade mark at least in the English-speaking territories of the European Union (Article 7(2) EUTMR), i.e. the public in the United Kingdom, Ireland and Malta.

For the abovementioned reasons, and the reasoning in the previous notifications of 04/04/2019 and 08/10/2019 and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018024917 is hereby rejected for the following services:

Class 35 Designing, developing, implementing, and administering customer loyalty and customer engagement programs, technology and services for businesses to offer to customers; incentive award programs to promote the sale of products and services of others; customer loyalty services, customer club services, closed user groups (GUG) or specified and identified consumers known to a brand, for commercial, promotional advertising and savings purposes on a wide range of consumer products and services, activities and events, and provide benefits and services in the field of automotive vehicles, other automotive products, services and maintenance, travel, shopping, health and wellness, entertainment, home improvement, legal, financial, and consumer protection; promoting the sale of credit card and debit card accounts through the administration of incentive award programs and loyalty programs; the collection, analysis and use of consumer and business data to target offers, advertising, travel, incentives, experiences and other content to consumers to drive activity or engagement with a brand; developing promotional campaigns for banks, credit unions and other financial institutions to offer to customers and proprietors of businesses; promoting the goods and services of others through the operation of consumer benefit membership clubs and programs that provide discounts and savings on a wide range of consumer products and services, activities and events and provide benefits and services in the field of automotive vehicles, other automotive products, services and maintenance, travel, shopping, health and wellness, entertainment, home improvement, legal, financial, and consumer protection; and promoting the sale of goods and services of others through promotional contests on behalf of credit and debit card issuers, banks and other financial institutions, retailers, and a wide range of other industries; promoting the goods and services of others, and promoting charitable contributions, by conducting a charitable donor gift program, incentive awards program, customer loyalty program and discount program whereby participants utilize gift cards to purchase goods and services of others, which purchases generate charitable donations for non-profit organizations; Developing, implementing and administering consumer benefit programs that provide members with credit card protection and verification, information regarding and access to credit reports and financial records of themselves and their families, and travel accident insurance and travel assistance benefits.

Class 36 Providing members with extended warranties and reimbursements on retail merchandise

Class 39 Travel agency services, namely, making reservations and bookings for transportation that features a frequent traveler bonus program;

The application can proceed to publication for the remaining services:

Class 35 Direct mail advertising services; marketing services, namely, business marketing consulting to businesses and other product and service providers; business strategic consulting services to businesses and other product and service providers; managing the serving, targeting, tracking and reporting of advertising and advertising content to media platforms, networks and channels; market and market research data analytics and segmentation using artificial intelligence and curation services involving consumer data and information.

Class 36 Insurance administration and brokerage services in the field of identity theft insurance; charitable fundraising services for non-profit organizations from sales generated by use of gift cards to purchase goods and services of others.

Class 39 Organization of business travel; travel information services; arranging and conducting travel tours and vacation packages, namely, arranging air, land and sea transportation for individuals and groups; coordinating travel arrangements for individuals and for group tours; car rental reservation services; making auto and airline reservations and bookings for travel by means of electronic communications networks.

Class 43 Providing travel lodging information services and travel lodging booking agency services for travellers; travel agency services, namely, making reservations and booking for temporary lodging; making reservations and bookings for restaurants and meals; providing travel agency services via an on-line interactive database for arranging reservations and bookings for temporary lodging.

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.

Maureen FELLEMANS