Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 16/12/2019

THORNTONS LAW LLP

Whitehall House

33 Yeaman Shore

Dundee DD1 4BJ

REINO UNIDO

Application No:	018050021
Your reference:
Trade mark:	DELIVERY POD
Mark type:	Word mark
Applicant:	ECS Europe Limited Parkview House, 6 Woodside Place Glasgow Glasgow City G3 7QF REINO UNIDO

The Office raised an objection on 10/05/2019 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 some of the goods and services applied for.

The Applicant submitted its observations on 01/07/2019, which may be summarised

as follows:

1. The term ‘POD’ is not a common abbreviation of P.O.D., an acronym of ‘proof of delivery’. Neither Collins English Dictionary nor the Cambridge English Dictionary has highlighted ‘POD’ as an abbreviation of proof of delivery. One of the references of the Office, namely abbreviations.com highlights 97 different acronyms for ‘P.O.D’. The website Freedictionary notes 144 acronyms, of which 37 relating specifically to IT. Thus, the relevant public in the IT sector would not associate the term with proof of delivery due to the common usage of the term.

2. There is no relationship between the descriptive meanings and the services provided as the mark is clearly scoped towards IT development and consultancy, not delivery services. The mark should be assessed by reference to the goods and services listed in the application and to how the relevant public would perceive the mark. The Applicant draws the Office’s attention to Case T-344/07 in which the mark ‘HomeZone’ was deemed to be sufficiently separate from the applicant’s services/products/line of business.

3. The Office has accepted marks that contain the word ‘POD’ for the same goods and services, in particular the marks ‘uPOD’ and ‘PROCESS POD’.

After reviewing the Applicant’s reply of 01/07/2019 to the notice, the Office sent another letter of objection dated 12/08/2019, in which the Office decided to maintain the objection for all the objected goods and services. In addition, the Office broadened the objection pursuant to Article 7(1)(b) and (c) an 7(2) to cover also the following goods and services:

Class 9 Computer hardware.

Class 35 Development of concepts for business economy; Consultancy relating

to business efficiency; Business consultancy; Business management; Business planning consultancy; Consultancy relating to business analysis; Business management advice and assistance; Business information; Assistance and advice regarding business organization and management; Business strategy development services; Strategic

business consultancy; Assistance and advice regarding business management; Cost analysis; Business management services relating to the development of businesses; Business organisation consultancy;

Business management consultancy.

The Office considered that in so far as the above-mentioned goods in Class 9 are concerned, the relevant consumers would perceive the mark as providing information that the goods at hand assist or are otherwise related to delivery of something in a manner that provides a proof of a completed delivery, or a delivery with a proof of delivery.

In so far as Class 35 is concerned, the Office considered that the services at hand are business development, management and consultancy services that are related to delivery of something in a manner that provides a proof of a completed delivery. By means of an example, the Office noted that commercial operators often need to be able to confirm proof of delivery of goods to their customers for the sake of soundness of the business.

Following the above, the sign describes the kind, quality, intended purpose, and/or other characteristics such as subject matter of the goods and services in question.

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 regards the arguments of the Applicant, the Applicant had stated in the letter of observations that the relevant public, in particular professionals in the field of IT, would not perceive the term ‘POD’ in the mark applied for as referring to proof of delivery.

The Office noted that in the letter of objection dated 10/05/2019 three different references were given to support that the term ‘POD’ indeed refers to a proof of delivery, namely the following references (please note that the extracted information is of 10/05/2019 and 12/08/2019) :

Secondly, the Office stated that a trade mark applied for must be assessed as a whole in relation to the goods and services applied for. The Office noted that in the present case, the mark at hand consists of the terms ‘DELIVERY’ and ‘POD’.

The Office found it clear that the acronym ‘POD’ stands for ‘proof of delivery’ for the relevant public also in this particular context, especially taken into account the mark as a whole and the goods and services applied for. The Office noted that the mark does not only consists of the term ‘POD’ but also contains the term ‘DELIVERY’ referring to ‘the act of delivering or distributing goods, mail, etc’ ‘something that is delivered’.

Following the above references of the term ‘POD’, the mark ‘DELIVERY POD’ 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 ‘POD’ in the mark as to referring to proof of delivery.

Furthermore, the Applicant had stated in the letter of observations that the term ‘P.O.D’ is indeed an acronym for proof of delivery. The Office found that even if the highly similar term ‘P.O.D’ would be perhaps used more frequently in the relevant market than the alternative writing form ‘POD’, it is sufficient that the term at hand is also indeed recognised in the relevant market as demonstrated in the letter 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 Cambridge dictionary.

As regards the Applicant’s argument that there are many possible meanings for the term ‘POD’, the Office noted that it is sufficient that at least one of the possible meanings of the sign designates a characteristic of the goods and services concerned.

Furthermore, the Office noted that it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade 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).

As regards the Applicant’s argument that there is no relationship between the mark ‘DELIVERY POD’ and the goods and services at hand, the Office held that a coherent reasoning with respect to descriptiveness was given for all the objected goods and services.

Contrary to the Applicant’s claim, the Office stated that it is not relevant that the services applied for are not delivery services in a traditional sense. As the mark ‘DELIVERY POD’ refers to a delivery with a proof of delivery, it is well founded that the goods in Class 9 and services in Class 42 that are related to goods/services that could offer or be otherwise related to a delivery with a proof of a completed delivery are indeed objected to pursuant to Article 7(1)(c) and 7(2) EUTMR.

In practice, the Office had stated in the letter of objection that the relevant consumers would perceive the sign as providing information that the goods and services applied for in Classes 9 and 42 concern, include or are otherwise related to delivery of something in a manner that provides a proof of a completed delivery. Therefore, the sign describes the kind, quality, intended purpose, or other characteristics such as subject matter of the goods and services in question. For the sake of completeness, the Office pointed out that the same applies to the goods in Class 9 and the services in Class 35 which the Office had also considered to object in the letter of 12/08/2019, after reassessing the objection as further clarified above.

As regards Class 16, the Office held that the mark would simply provide information of the subject matter of such goods, for example that Brochures; Pamphlets; Manuals contain or consists of information or instructions regarding a delivery with a proof of completed delivery. It is also stated in the Guidelines of the Office (Guidelines for Examination in the Office, Part B, Examination, page 18) that e.g. printed matter and teaching material give rise to an objection when the sign may be used in trade to describe their subject matter in a descriptive way.

Furthermore, the Office drew its attention to the decision of the General Court referred to by the Applicant, namely in Case T-344/07, HomeZone, dated 10 February 2010. However, the Office found that the decision of the General Court, in which the General Court found that the Board of Appeal did not establish that the mark Homezone could designate a telecommunications service in Class 38 or associated goods and services in Classes 9, 38 and 42, is not applicable in the present case due to the differences of the cases.

First of all, in the case at hand,the Office noted that the mark applied for ‘DELIVERY POD’ is dissimilar to the mark of the General Court’s decision, ‘HomeZone’. Contrary to the case referred to by the Applicant, the Office stated that in the present case the mark applied for has indeed a sufficiently direct and specific link to the objected goods and services in Classes 9, 16, 35 and 42 as described above in more detailed manner. Indeed, it must also be kept in mind that the assessment of absolute grounds for refusal has to be made on a case by case basis. Each case must be considered on its own merits with its own peculiarities.

The Office stated that the trade mark registrations referred to by the Applicant, namely EUTM 003604436 ‘uPOD’ and EUTM 004835393 ‘Process Pod’ cannot result in a more favourable assessment.

The Office noted that neither of the referred trade marks is similar to the mark applied for ‘DELIVERY POD’ and the referred to trade marks are not at issue in the present proceedings. Although it is correct that, when making an assessment consistent appraisals should be sought as far as possible, this cannot lead to trade marks which are considered as not eligible for registration being registered solely because other marks which include one of their elements have been registered. The mere fact that the marks referred to by the Applicant contain the word ‘POD’ does not make them (evidently) similar with the sign at hand nor could it be concluded that the application mark would be registrable.

Contrary to what the Applicant states in the letter of the observations, it should also be noted that neither of the referred trade marks is recently assessed on absolute grounds. As regards to the referred to marks, the EUTM 003604436 ‘uPOD’ was filed in 2003 and the EUTM 004835393 ‘Process Pod’ in 2006. Indeed, it is well known among the relevant professional public that the field of IT has changed dramatically over the last 10 years and technology has progressed rapidly providing more technical options and new services. Therefore, no conclusions of the registrability of the mark at hand can be drawn by taking into consideration the earlier decisions referred to by the Applicant.

Furthermore, 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).

The Office stated that 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).

On 11/09/2019, the Applicant requested the Office to remove ‘Computer Hardware’ from the list of goods and services. On 30/09/2019, the Office confirmed that ‘Computer Hardware’ had been removed from the list of goods and services.

The Applicant did not submit any further observations with respect to the objection on absolute grounds. For the reasons set out in the letter of objections, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 050 021 is hereby rejected for the following goods and services:

Class 9 Computer software development tools; Computer software to enable retrieval of data; Software for the analysis of business data; Interactive computer software; Data processing software; Computer software; Computer interface software; Computer software applications; Downloadable computer software; Computer software for database management; Computer programmes for data processing; Computer

software packages; Databases; Computer software platforms; Data processing programs; Computer operating software; Computer software programs; Downloadable computer software applications.

Class 16 Printed matter; Catalogues; Computer user manuals; Instructional and

teaching material (except apparatus); Printed publications; Books; Computer programs in printed form; Brochures; Pamphlets; Manuals.

Class 35 Development of concepts for business economy; Consultancy relating

to business efficiency; Business consultancy; Business management;

Business planning consultancy; Consultancy relating to business analysis; Business management advice and assistance; Business information; Assistance and advice regarding business organization and management; Business strategy development services; Strategic business consultancy; Assistance and advice regarding business management; Cost analysis; Business management services relating to the development of businesses; Business organisation consultancy; Business management consultancy.

Class 42 Troubleshooting of computer software problems; Computer programming services for commercial analysis and reporting; Software engineering services for data processing programs; Computer program advisory services; Preparation of reports relating to computer programming; Computer hardware (Consultancy in the field of -); Computer programming for data processing; Development of hardware for data and multimedia content conversion from and to different protocols; Research relating to the development of computer programs and software; Design of software for processing and distribution of multimedia contents; Database design; Programming of computer software for evaluation and calculation of data; Computer programming for the internet; Engineering services relating to data processing technology; Computer programming services for data warehousing; Software as a service; Development of application software for delivery of multimedia content; Data migration services; Conversion of computer programs and data, other than physical conversion; Computer analysis; Consultancy in the field of computer hardware; IT consultancy, advisory and information services; IT security, protection and restoration; Conversion of data and computer programs (except physical conversion); Computer software engineering; Research services relating to computer programmes; Computer programming services; Computer programming consultancy; Development and creation of computer programmes for data processing; Design services relating to computer hardware and to computer programmes; Consultations in the field of computer hardware; Professional consultancy services relating to computer programming; Computer programming for telecommunications; Design of computer machine and computer software for commercial analysis and reporting; Design, development and programming of computer software; Installation, maintenance and repair of computer software; Computer aided scientific analysis services; Design of hardware for data and multimedia content conversion from and to different protocols; Computer hardware development; Hosting of databases; Computer software installation and maintenance; Computer consultancy services; Consultancy in the field of computer system analysis; Software design and development; Design and development of computer hardware; Testing of computer software; Online data storage; Development of software for processing and distribution of multimedia contents; Design of hardware for processing and distribution of multimedia contents; Comparative analysis studies of the performance of computer systems; Technical advisory services relating to data processing; Creating of computer programs; Updating of computer programs; Provision of information relating to computer programming; Rental of computer software, data processing equipment and computer peripheral devices; Design of software for data and multimedia content conversion from and to different protocols; Software development, programming and implementation; Technical consultancy services relating to computer programming; Computer software technical support services; Updating and adapting of computer programs according to user requirements; Design of computer programs; Modifying of computer programs; Programming of computer software for reading, transmitting and organising data; Computer programming; Configuration of computer software; Computer system analysis.

The application may proceed accordingly for the following goods:

Class 9 Data conversion apparatus.

Class 16 Stationery; White papers; Photographs.

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.

Päivi Emilia LEINO