Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 08/04/2020

BIRD & BIRD (INTERNATIONAL) LLP

Paseo de la Castellana 7, 7º Planta

28046 Madrid

ESPAÑA

Application No:	018038214
Your reference:	MUE20190182
Trade mark:	InstaShare
Mark type:	Figurative mark
Applicant:	BENQ CORPORATION 16 JIHU ROAD, NEIHU., TAIPEI 114 TAIWÁN

The Office raised an objection on 03/05/2019 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 22/07/2019, which may be summarised as follows.

1. The term ‘InstaShare’ cannot be considered as descriptive. The relevant public will not directly relate the term ‘InstaShare’ to a software since there is no relationship beyond a mere indirect suggestion of the goods and services. As it is a single term with two upper-case letters, the public would not recognise the intended purpose of the sign applied for directly. In everyday language ‘InstaShare’ is not used by the relevant public to refer to the action of transferring the content displayed on a screen. Therefore, even if suggestive, the inclusion of the term ‘Insta’, widely used in the world of applications, is nowadays perceived by the public as a fanciful term.

The sign applied for, taken as a whole is a neologism that the public will not perceive as only the sum of their parts. The sign is at most allusive. The term ‘InstaShare’ is a fanciful invention of the applicant. The relevant public will not identify the term ‘Insta’ when referring to the contested goods and services as a description of their purpose.

The relevant public will not identify the combination of terms ‘Insta + additional term’ as the intended purpose of the sign applied for. In the scope of technology and daily applications, the term ‘Insta’ has been used to refer to multiple different types of software. Therefore, this term, combined with another term, will distract the attention of the consumer, who will not retain either of the terms individually.

Although the verbal element ‘InstaShare’ may indirectly evoke a feature that the applicant seeks to confer on its goods and services, namely, to promote a tool that connects a wide range of products and devices. The relevant public will not refer to the natural action of sharing information, data or content among their screens as ‘InstaShare’. The applicant has created a new single term from the combination of two elements that perhaps separately could infer distinctiveness, but together and in a stylised form would have an inherent distinctiveness for the contested goods and services.

The stylisation of the combination ‘Insta’ and ‘Share’ in a special font has a relevant impact in the sign and this stylisation is uncommon. The purpose of the use of upper-case letters ‘I’ and ‘S’ is to create a visual impact on the relevant public by the creation of an autonomous suggestive term. In this way, the relevant public retains in its memory a modern sign for a technological tool. The stylisation contributes to reinforce the inherent distinctiveness of the sign. The mere fact that the sign is used in a promotional laudatory manner does not detract from its ability to function as a trade mark. The stylisation of the term ‘InstaShare’ as well as the use of the upper-case letters ‘I’ and ‘S’ have a significant impact in the sign, distracting the relevant public from the meaning of the sign and making it retain the sign as a whole.

2. Similar ‘INSTA’ marks have already been registered by the Office and national offices

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)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which 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 rendering of the service, or other characteristics of the goods or service’ 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).

By prohibiting the registration as European Union trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

As to the applicant’s arguments

1. The mark applied for is the compound mark, ‘InstaShare’, which is composed of two components, namely ‘Insta’ and ‘Share’. Merely bringing ‘Insta’ and ‘Share’ together, without introducing unusual variations, cannot result in anything other than a descriptive sign.

Bearing in mind the definitions and analysis already provided on 03/05/2019, the sign as a whole is immediately intelligible to English speakers as descriptive. The relevant consumers would perceive the sign as providing information that the goods for which protection is sought are able to instantly share content, data, files for example, and for the services for which protection is sought in Class 38 the mark provides information of the intended purpose — instant share, transmission, streaming, broadcasting of data, messages, images etc. Moreover, the mark describes the intended purpose of the software created and developed by the services for which protection is sought in Class 42. Therefore, the relevant consumer, notwithstanding certain stylised elements, consisting of stylised font and two upper-case letters ‘I’ and ‘S’, would perceive the sign as providing information about the kind and intended purpose of the goods and services in question.

There is nothing unusual about the sign’s structure from a grammatical point of view, except that the components ‘Insta’ and ‘Share’ are written together. Given that the first letter of ‘Insta’ and ‘Share’ are written in upper case when combined in the sign, the relevant public will separate them in order to understand them in an ordinary manner. There is nothing fanciful in the sign applied for that would help to overcome the descriptive character of the mark.

The combination follows ordinary English grammar composition and spelling rules. There is no unusual variation in syntax or meaning and nothing that would require an interpretative effort by the relevant public to understand it, therefore, there is nothing that would initiate a cognitive process in the minds of consumers. Furthermore, taking into account that the meanings of the components ‘Insta’ and ‘Share’ and the sign applied for are clear, they are neither suggestive, fanciful nor allusive.

The Office disagrees that the relevant public will not identify the component ‘Insta’ when referring to the contested goods and services as a description of its purpose because its meaning refers to: immediate action, process, happening.

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Regarding the applicants argument that the sign applied for, ‘InstaShare’, is not used by the relevant public to refer to the action of transferring the content displayed on a screen in everyday language, it suffices to state that for a trade mark to be refused registration under Article 7(1)(c) EUTMR,

it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32.)

It is also important to keep in mind 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 Office agrees that for a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (12/01/2005, T‑367/02 — T‑369/02, SnTEM, SnPUR & SnMIX, § 31).

However,

[a] trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts …

(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (30/11/2004, T‑173/03, NURSERYROOM, EU:T:2004:347, § 21).

In light of this, the Office refers the applicant to the dictionary definition for the components making up the expression ‘InstaShare’ applied for where it appears clearly that these are descriptive in the sense of their primary and obvious definitions, particularly when used for the goods and services covered by the application.

The Office disagrees that the relevant public will not identify the combination of terms ‘Insta + additional term’ as the intended purpose of the sign applied for, especially if the second verbal element is ‘Share’. Even if the term ‘Insta’ is commonly used to refer to multiple different types of software it does not lead to the conclusion that it is neither descriptive nor distinctive. Moreover, the relevant public would be able to understand the descriptive meaning of the term ‘Insta’. It is irrelevant that multiple different types of software are using the term, what matters is that the term ‘Insta’ is descriptive.

Furthermore, the applicant failed to submit any substantiated information or evidence that as the term ‘Insta’ is combined with another term, the consumer who would not retain either of the terms individually.

The way the sign applied for is constructed allows the relevant public clearly to understand without any distraction that it is formed by using two terms. There is nothing that would distract an English native speaker.

As regards the applicant’s argument that the verbal element ‘InstaShare’ may indirectly evoke a feature that the applicant seeks to confer on its goods and services, namely to promote a tool which connects a wide range of products and devices, it suffices to state that the sign would simply be perceived by the relevant public as a promotional and laudatory of two terms, the function of which is to communicate a value statement. Moreover, in the present case, the relevant public will not tend to perceive any particular indication of commercial origin in the sign beyond the promotional information conveyed, which merely serves to highlight positive aspects of the goods and services in question, namely that they facilitate immediate transferee of files, software etc or share information.

It is irrelevant that the sign applied for has created a new single term from the combination of two term because the sign applied for does not show any degree of originality and expressiveness. It does not contain any play of words. Although the sign for which protection is sought contains certain stylised elements consisting of stylised font and two upper-case letters ‘I’ and ‘S’, these elements are so negligible in nature that they do not endow the trade mark as a whole with any distinctive character. Those elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function in relation to the goods and services for which protection is sought.

The Office disagrees that the relevant public will retain in its memory the sign applied for as a modern sign for a technological tool because the mark cannot be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question due to the reasons explained above. Furthermore, there is nothing uncommon about two terms being combined together, especially when both begin with upper-case letters.

Moreover, the applicant failed to submit any evidence to prove that the stylisation, including the use of the upper-case letters ‘I’ and ‘S’, of the sign applied for has such a significant impact on the mark that it will distract the relevant public from the meaning of the sign.

Taking into account the abovementioned, the Office respectfully sets aside the applicant’s arguments.

2. As regards the applicant’s argument that a number of similar registrations have been accepted by the Office, 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).

As regards the national decisions referred to by the applicant, according to case-law:

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.

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

Taking into account the abovementioned, the Office respectfully sets aside the applicant’s arguments.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 038 214 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b), (c) in Ireland, Malta and the United Kingdom 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.

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