Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 10/10/2019

CARPMAELS & RANSFORD LLP

One Southampton Row

London, City of London WC1B 5HA

REINO UNIDO

Application No:	018035722
Your reference:	T042321EM
Trade mark:	ACTIVEBATCH
Mark type:	Word mark
Applicant:	Advanced Systems Concepts, Inc. 1180 Headquarters Plaza Morristown New Jersey 07960 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 12/04/2019 pursuant to Article 7(1)(b) and (c) 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 09/08/2019 within the time limit of the first extension, which may be summarised as follows.

1. The examiner concludes that the mark is descriptive by dissecting the sign into its component parts ‘ACTIVE’ and ‘BATCH’. However, the sign should only be read as a single word.

2. The examiner has found no evidence that there is such a thing as an activebatch.

3. The explanation provided by the examiner creates an illogical and tautologous meaning.

4. The applicant filed for a United Kingdom (UK) trade mark ‘ACTIVEBATCH’ for Class 9 and no objection regarding descriptiveness was raised.

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.

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

The essential function of a trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user, by enabling them, without any possibility of confusion, to distinguish the product or service from others that have another origin (23/05/1978, C‑102/77, Hoffmann-La Roche v Centrafarm, EU:C:1978:108; 18/06/2002, C‑299/99, Remington, EU:C:2002:377).

The marks referred to in Article 7(1)(c) EUTMR are trade marks that consist exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of the rendering of the services, or other characteristics of the goods or services.

The refusal of a trade mark on the ground of being descriptive is already justified if, for the relevant public, there is a sufficiently direct and specific relationship between the word mark applied for and the goods or services for which protection is sought (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43). Furthermore, in accordance with Article 7(1)(c) EUTMR, in order to reject a trade mark, it is not necessary for the words to be used in their descriptive sense in trade. It is sufficient that they are capable of being used as such.

For the purpose of Article 7(1)(c) EUTMR, it is necessary to consider, on the basis of a given meaning of the sign at issue, whether, from the point of view of the intended public, there is a sufficiently direct and specific association between the sign and the categories of goods for which registration is sought. A sign’s descriptiveness can only be assessed by reference to the goods or services in question, and by the way in which it is understood by a specific, intended public (20/03/2002, T‑356/00, Carcard, EU:T:2002:80).

Article 7(1)(b) EUTMR is intended to preclude registration of trade marks that are devoid of distinctive character, which alone renders them capable of fulfilling their 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 question that must be asked when applying Article 7(1)(b) EUTMR, is how the sign applied for will be perceived by typical consumers in relation to the goods and services in question. It must also be stressed that the distinctive character of the trade mark is determined on the basis of the fact that the mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301; 09/07/2008, T‑58/07, Substance for success, EU:T:2008:269).

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).

A word mark that is descriptive of characteristics of the goods or services for the purposes of Article 7(1)(c) EUTMR is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) EUTMR. A mark may be devoid of (any) distinctive character in relation to goods or services for reasons other than the fact that it may be descriptive (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86).

Article 7(2) EUTMR states that paragraph 7(1) must apply notwithstanding that the grounds preventing registration obtain in only part of the European Union.

The mark applied for, ‘ACTIVEBATCH’, is composed of English words. Therefore, the examination of the absolute grounds for refusal will be based on the English-speaking public in the European Union. The public for whom the absolute ground of refusal must be assessed is the public in the Member States in which English is the official language, that is, Ireland, Malta and the United Kingdom.

As to the applicant’s arguments

The Office agrees with the applicant that since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character, it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T‑118/00, Tabs(3D), EU:T:2001:226, § 59).

The sign at issue is made up of two words. Definitions of the words ‘ACTIVE’ and ‘BATCH’ were extracted from the Collins Dictionary and constitute clear evidence of their meanings. Even though the words in the mark ‘ACTIVEBATCH’ are conjoined, they are clearly recognisable and the mark would immediately be seen as the two words by the relevant public. The lack of a space does not have any influence on the perception of the meaning of the word combination. Simply writing two words together without a space does not constitute a characteristic that is contrary to linguistic rules or is otherwise striking or at all distinctive (12/01/2000, T‑19/99, Companyline, EU:T:2000:4, § 26; 13/01/2014, T‑475/12, WorkflowPilot, EU:T:2014:2, § 29).

In this respect, as already stated by the Board of Appeal, promotional messages printed on products or their packaging are often not written in ordinary, grammatically correct prose. Space is limited, so messages are necessarily elliptical. Short, punchy messages are in any case more likely to attract the attention of the consumer, who may not have the time or the inclination to read long texts. Hyperbole is prevalent; the consumer expects nothing less. Loose syntax is everywhere. (22/06/2004, R 118/2003-2, WHITENING MULTI-ACTION, § 14.)

As regards the first verbal element, the Office maintains that the word ‘ACTIVE’ designates that the software is in a state of action as stated in the notice of grounds for refusal. In other words, it means that the software will process data (i.e. it will be in a state of action) only within the pre-set active period (every hour, only outside of office hours, etc.). Therefore, the Office cannot agree with the applicant that the explanation provided by the examiner creates an illogical and tautologous meaning.

Moreover, it is recalled that, for a mark to fall under the prohibition of Article 7(1)(c) EUTMR, it is not necessary that the characteristics of the goods or services are described in full detail and in a comprehensive way. Therefore, a sign does not become ‘vague’ or ‘merely allusive’, because it does not provide a full and comprehensive description of the characteristics of the goods or services or their way of functioning. Rather, for a sign to be refused registration under Article 7(1)(c) EUTMR, what is essential is that it contains an unequivocal message serving to identify a characteristic of the goods or services in question and that the sign can be used for descriptive purposes (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 97).

Even if assuming that the word ‘ACTIVE’ is not descriptive, it will still be perceived by the relevant public as ‘promotional information’, namely as a term that has a positive connotation and therefore may make the goods more attractive. Additionally, the term ‘ACTIVE’ falls within those signs that the case-law identifies as being ‘commonly used in connection with the marketing of the goods or services concerned’ and lacks, for this reason, any distinctive character per se (03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 20; 30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198, § 24).

The second verbal element ‘BATCH’ makes perfect sense from the perspective of the relevant consumer, in relation to the goods to which an objection has been raised. It informs consumers that the software will process a high volume of data all at one time (instead of small individual volumes continuously). This was confirmed by the internet search included in the notice of grounds for refusal. A sufficiently clear and specific relationship therefore exists with respect to the goods for which protection is sought.

As a conclusion, the Office is of the opinion that the fact that the two verbal elements, which per se lack distinctive character because they have descriptive content, have been conjoined does not render the combination distinctive. Semantically, each verbal element retains its non-distinctive connotation; both are descriptive and ‘Active’ is also promotional. Merely bringing two descriptive verbal elements together does not prevent them remaining essentially descriptive unless, as a result of the unusual way in which the verbal elements concerned are combined, an overall impression is created that is sufficiently far removed from that produced by the mere combination of meanings lent by the verbal elements of which it is composed, with the result that the overall term is more than the sum of its parts (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 39-43). Merely bringing a number of descriptive elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a trade mark that is descriptive as a whole (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 39).

The sign in the present proceedings clearly does not meet the abovementioned requirements. Without going through any complex mental processes, the relevant consumer will clearly, directly and unambiguously perceive the sign as referring to a desirable feature and intended purpose of the goods, namely that computer software for job management and scheduling of interactive and non-interactive computer-related tasks for unattended mode operation on standalone or networked computers will process a high volume of data in one large group all at one time (instead of individual small volumes continuously), within the pre-set active period (every hour, from 8-9 a.m., etc.).

As regards the national trade mark referred to by the applicant (UK trade mark registration No 3 383 085 ‘ACTIVEBATCH’),

the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it. It is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

Therefore, the applicant has not succeeded in convincing the Office that the sign ‘ACTIVEBATCH’ will be perceived by consumers as indicating the commercial origin of the goods in question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for EUTM No 18 035 722 is hereby rejected for all the goods claimed.

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.

Michaela POLJOVKOVA