Decision on the inherent distinctiveness of an application for a European

Union trade mark

(Article 7 EUTMR)

Alicante, 23/09/2019

Kilburn & Strode LLP

Laapersveld 75

1213 VB Hilversum

PAÍSES BAJOS

Application No:	018027713
Your reference:	T122957EM/IAS/CW
Trade mark:
Mark type:	Figurative mark
Applicant:	TeamViewer GmbH Jahnstraße 30 73037 Göppingen ALEMANIA

The Office raised an objection on 05/04/2019 pursuant to Article 7(1)(b) 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 its observations on 23/07/2019, which may be summarised as follows:

1. The mark has at least a minimum distinctiveness in relation to the goods and services for which protection is sought and therefore will be perceived by the relevant public as an indication of origin.

2. Although the mark may allude to the nature of a proportion of the goods and services for which protection is sought, it remains distinctive due to its unusual composition and unique design elements.

3. The Office has not provided any evidence to support its finding that the mark will be perceived as a ‘diagnostic icon’. Moreover, the finding does not apply for all the goods and services concerned.

4. The Office has already accepted similar marks for registration.

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.

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).

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 (3D), EU:C:2004:258, § 38).

The mark applied for is composed of two simple geometrical shapes, namely a white circle inside a shaded square, and a simplistic depiction of a monitor containing an image of a diagnostic icon. The Office refers to the said simplistic representation as a diagnostic icon for the simple reason that it has to identify the part of the mark which it is referring to. It could also be referred to as an “electronic activity line tracing image” as the applicant describes it. In any case it is a simple and commonly used image and it can be referred to as a diagnostic icon as a basic Google image search of ‘computer diagnostic Icon’ immediately reveals:

Contrary to what is claimed by the applicant, the composition of those elements is not unusual.

The circle inside the square will simply be perceived as a background and the monitor as a pictogram referring to the nature of the goods and services concerned, which are various types of software and services related to the use of computers.

Therefore, the Office considers that the relevant public, which is composed of customers using that software and computers, will not perceive the mark in question as an indication of commercial origin for the goods and services concerned.

Moreover, in contrast to the applicant’s argument, the fact that some of the software covered by the mark does not relate to diagnostics is insufficient to render it registrable for those goods. The icon depicted in a monitor is too commonplace and would not be registrable in itself, and therefore it cannot endow the mark in question with at least a minimum degree of distinctiveness.

As to the applicant’s argument that the Office failed to show that the icon depicted in the mark does not differ from the other icons used on the market, it should be observed that where the Office finds that the mark sought is devoid of intrinsic distinctive character, it may base its analysis on facts arising from practical experience generally acquired from the marketing of general consumer goods which are likely to be known by anyone and are in particular known by the consumers of those goods … In such a case, the Office is not obliged to give examples of such practical experience (15/03/2006, T‑129/04, Plastikflaschenform, EU:T:2006:84, § 19).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Finally, as regards the argument that a number of similar marks have been accepted for registration, the applicant did not indicate which goods and services are covered by those marks, in any case it is considered that none of the marks referred to are particularly similar to the mark currently applied for. As mentioned by the applicant itself, a mark’s distinctiveness within the meaning of Article 7(1)(b) EUTMR must be assessed by reference to the goods and services listed in its specification. It 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). Therefore, without assessing the goods and services of those marks it cannot be established if they are comparable to the mark in question.

In any case, 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). ‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR, the application for EUTM No 18 027 713 is declared to be non-distinctive pursuant to Article 7(1)(b) for all the goods and services claimed.

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.

Laima IVANAUSKIENE