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

(Article 7 EUTMR)

Alicante, 15/04/2020

Barker Brettell Sweden AB

Östermalmsgatan 87B

SE-114 59 Stockholm

SUECIA

Application No:	018040903
Your reference:	TAA100133T.EM
Trade mark:	OBJECTIVITY
Mark type:	Word mark
Applicant:	Objectivity Limited 9 Westwood House Westwood Business Park Coventry CV4 8HS REINO UNIDO

The Office raised objections on 16.04.2019 and 15.10.2019 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 letters.

Following a time extension of two months, the applicant submitted further observations on 20.02.2020. The observations submitted on 21.08.2019 and 20.02.2020 may be summarised as follows.

• The applicant states that the examiner has not provided clarity as to what market sector the relevant services are in, nor has the examiner disclosed to whom she believes the services are directed. The mark should be analysed taking into account the manner in which the mark is or will be perceived by the public to whom it is specifically addressed. The applicant contends that the objectionable services belong to a specialised industry and that the attention of the relevant public is high. Furthermore, the applicant states that the concept of “objectivity” is not commonly used in relation to the services applied for and therefore demonstrates a certain degree of originality.

• The distinctive character and descriptiveness of a trade mark must be assessed in relation to the goods and services applied for and in relation to the perception of the section of the public targeted. The word “objectivity” cannot be used to describe the services in classes 35 and 42. It is nonsensical to say that these services were provided “objectivity”. It would make sense to describe the individual providing the services as being “objective”. There is therefore no direct link. The mark is allusive.

• Moreover, the applicant states that the interpretation by the Office is at least two steps away from being descriptive. First because the term “objectivity” does not refer to the applied services, but to the service provider and second because “objectivity” will not be perceived by the relevant public as any essential characteristic of the service provider or its objected to services. Therefore, the mark is not descriptive.

• According to the dictionary definitions provided, “objectivity” is a noun and “objective” is an adjective. As such, in the absence of further words and grammatical structure, the noun bears no relation to the services in question. The mark “objectivity” is grammatically incorrect and therefore can be considered fanciful. The relevant consumer would not know, from seeing the mark, which services are to be provided. Following the examiner’s logic, it would be possible for services to be provided objectively in relation to any field/area.

• The mark requires a certain degree of interpretation. The intention of the services is not to be “objective”, but to provide IT solutions. The mark is not a description of a quality of the objected to services. At most it is suggestive in relation to one of the qualities of the service provider. A possible quality of the service provider is not something that renders the mark descriptive. An undertaking can give its goods or services a positive image indirectly and in an abstract manner. In this respect the applicant quotes the Office’s guidelines and case-law, for example, the judgment of the General Court of 2 December 2008 in case T-67/07 FUN, in connection with land motor vehicles, and the mark COMPLETE in relation to incontinence care products, judgment of the General Court of 30 November 2011 in case T-123/10 . In relation to the objected to services, the applied mark can at most be considered a vague positive suggestion.

• The applicant has provided examples of definitions of “objectivity” in the main languages of the EU, for example, French, German, Italian. “Objectivity” is not a word in any of these main languages. Therefore the trade mark will be seen as an inherently distinctive mark to non-English speakers.

• The applicant states that as the mark in not descriptive, the objection under Article 7(1)(b) is not valid.

• The applicant has provided information from an online search using Google Books Ngram viewer which shows that the word “objectivity” has hardly been used in sources printed between the years 1500 and 2008. Therefore the sign is not a word in common use and is more likely to be seen as an inherently distinctive word capable of functioning as a trade mark.

• The applicant cites three previous EUTMRs (005692892, 010088599, 017999605) composed of the word “objectivity”.

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 for all the services applied for in classes 35 and 42.

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).

In relation to the applicant’s assertion that the Office has not provided clarity to what market sector the services are in, nor has it disclosed to whom it believes the services are directed, it should be noted that the objection letter dated 16.04.2019 starts by stating the services to which the objection applies, namely, business advisory services, consultancy and information, analysis of business management systems, business project management, computerised business management for others, information, advisory and consultancy services relating to all of the aforesaid services. Furthermore, on 15.10.2019 the objection was extended to the services applied for in class 42. The notification also identifies the relevant pubic as the relevant English-speaking consumer.

The assessment of descriptiveness is based on how the relevant consumer would perceive the sign in relation to the goods and services for which protection is sought. In the present case the scope has been extended to include all the services applied for (as mentioned above).

In the notification dated 16.04.2019 the word “OBJECTIVITY” was defined as “objectivity - the quality of being objective - objective (of a person or their judgement) not influenced by personal feelings or opinions in considering and representing facts”. The definitions were taken from the well-known Oxford English dictionary and show that the word “objectivity” has a clear and understandable meaning. When the relevant consumer is confronted with the sign “OBJECTIVITY” in relation to the services applied for, they will not see the sign as an indication of origin, but rather as a description of the quality of the services in question. The relevant English-speaking consumer would understand the sign as having the following meaning: the services in question are carried out based on facts and evidence rather than personal feelings or beliefs.

In relation to the applicant’s assertion that the objectionable services belong to a specialized industry and that the attention of the relevant public is high, it should be noted that the high level of attention and awareness does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass-consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public is active (see in this respect also, for example, judgment of 11/10/2011, T-87/10, ‘Pipeline’, EU:T:2011:582 § 27 to 28).

In the case at hand, the term “OBJECTIVITY” is perfectly comprehensible for the relevant public, be it a specialized public or not. The word has a clear dictionary definition. There is no element of fancifulness or any unusual combination of words that might require something of the relevant consumers, such as a grammatical analysis, before they would understand the meaning of the mark in relation to the services in question. It clearly informs the consumer that the services applied for will be provided in an impartial manner. The service provider is not influenced by personal feelings or beliefs. Therefore, the sign describes a desirable quality of the services in question. There is a direct and specific relationship between the expression and the services applied for. Therefore, the trade mark is not allusive.

Given that the word “OBJECTIVITY” has a clear dictionary definition it cannot be said that the mark requires a certain degree of interpretation. As the applicant points out in their observations on 21.08.2019, the sign “OBJECTIVITY” would be understood by the relevant English-speaking consumer in the same manner for any service. The fact that a service is provided in an objective manner is a desirable quality of any service. In the present case, the relevant consumer would understand that the business services and IT solutions will be provided in an impartial manner. This is therefore not a vague positive suggestion and is not comparable with the case law cited by the applicant.

Regarding the applicant’s argument that “objectivity” is not commonly use in relation to the services applied for, it should be noted 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, emphasis added.)

In relation to the applicant’s assertion that the sign “OBJECTIVITY” is not a word in the other main languages of the EU, the Office would like to highlight the fact that a sign must be refused if it is descriptive in any of the official languages of the European Union, regardless of the size or population of the respective country.

Regarding the online search provided by the applicant indicating that the word

“objectivity” has scarcely been used in printed material between the years 1500 and 2008, it should be noted that, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question. The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 88).

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character and therefore objectionable under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO (EUTMRs 005692892, 010088599, 017999605) , the Office states that two of the quoted marks are figurative marks; furthermore, EUTMR 005692892 was examined more than ten years ago and the practice of the Office has evolved since then. Moreover, 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 caselaw 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) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 018040903 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in the UK, Ireland and Malta for all the 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.

Helen BIRCH