Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 08/05/2020

PHILLIPS & LEIGH

Temple Chambers, 3-7 Temple Avenue

London London, City of EC4Y 0DA

REINO UNIDO

Application No:	018059107
Your reference:	T100072
Trade mark:	INTERCONNECT
Mark type:	Word mark
Applicant:	Equifax Inc 1550 Peachtree Street N.W., Atlanta, Georgia 30309 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 03/10/2019 pursuant to Article 7(1)(b) and Article 7(2) 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 was given the opportunity to submit observations in reply. The applicant submitted its observations on 03/12/2019, which may be summarised as follows.

1. The Office has applied general reasoning for all the services for which protection is sought. The entirety of the services for which protection is sought does not constitute a single homogeneous category of services.

2. The relevant consumer will only encounter the mark in the context of a single service. The mark in the context of a single service will effectively be meaningless. At most, the average consumer when encountering the mark in the context of a single service will mentally question ‘with what?’ or ‘how?’.

3. The sign introduces elements of conceptual intrigue and triggers, in the minds of the relevant public, a cognitive process or requires an interpretative effort, because

• the consumer will not assume or be aware that there are differentiated data sets on encountering the mark;

• ‘INTERCONNECT’ is not a commonly used term by the average consumers of the categories of the services for which protection is sought;

• deducing that ‘INTERCONNECT’ means ‘the enabling of differentiated data(sets) to interconnect in a way that makes it addressable to their needs’ requires a considerable mental effort and requires the consumer to look beyond the essential function (the origin function) that the mark communicates;

• such a deduction could only be made if the consumer was exposed to the mark in the context of more than a single service on the same occasion.

4. The word ‘INTERCONNECT’ as a verb used without an object is sufficiently suggestive, and the positive yet abstract message conveyed will easily be memorised by the targeted public.

5. Reference is made to EUTM registration No 1 893 965 ‘INTERCONNECTION’, where the Office granted registration for advertising; business management services; business administration; office functions in Class 35.

6. Both the UK and US trade mark authorities have granted registered protection for ‘INTERCONNECT’ for the services being claimed in the EUTM.

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 waive the objection for the following services:

Class 35 Advertising; business management; business administration; marketing.

Class 42 Providing non-downloadable software, platform as a service, and software as a service in the fields of business, credit scores, marketing, portfolio review, account acquisition, decision management, data analytics, credit risk modeling and analytics, credit letter generation, account management, identity verification, risk management, debt management, and fraud detection, protection, and prevention.

The objection is maintained for the remaining services.

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

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

Registration ‘of a trade mark which consists of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by that mark is not excluded as such by virtue of such use’ (04/10/2001, C‑517/99, Bravo, EU:C:2001:510, § 40). ‘Furthermore, it is not appropriate to apply to slogans criteria which are stricter than those applicable to other types of sign’ (11/12/2001, T‑138/00, Das Prinzip der Bequemlichkeit, EU:T:2001:286, § 44).

A sign, such as a slogan, that fulfils functions other than that of a trade mark in the traditional sense of the term ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

Settled case-law establishes that difficulties in establishing distinctiveness for certain categories of trade marks, such as those consisting of advertising slogans, do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460). However, advertising slogans must always be examined to see whether there are elements that, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and/or services designated. A lack of necessary distinctiveness is a barrier to the registration of the trade mark.

A sign that, like an advertising slogan, fulfils functions other than that of a trade mark is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 19-20).

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.

Regarding the applicant’s arguments

Pursuant to Article 7(1)(b) EUTMR, trade marks that are devoid of any distinctive character must not be registered.

In assessing the mark in question, the Office has taken into account the mark as a whole, its distinctive character in relation to the services in question, and the overall impression produced by the mark.

The mark applied for, ‘INTERCONNECT’, is an English word. Therefore, the examination of the absolute grounds for refusal was based on the English-speaking public in the European Union. The Office provided a definition of the word ‘INTERCONNECT’ in the notice of grounds for refusal on 03/10/2019. Accordingly, it was established that the relevant consumer would perceive the sign as meaning: ‘(of two or more things) to connect with or be related to each other’ ⁽¹⁾.

Nevertheless, the applicant claimed that the word ‘INTERCONNECT’ as a verb used without an object is sufficiently suggestive and the positive yet abstract message conveyed will be easily memorised by the targeted public.

However, the Office takes the view that the sign does not go beyond its obvious promotional meaning and does not enable the relevant public to memorise it easily and instantly as a distinctive mark for the services in question. For a finding that there is no distinctive character, it is sufficient that the semantic content of the word mark in question indicates to the consumer a characteristic of the goods or services which, whilst not specific, represents promotional or advertising information, which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (05/10/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 29 and 30; 12/03/2008, T‑128/07, Delivering the essentials of life, EU:T:2008:72, § 20).

The sign ‘INTERCONNECT’ does not exhibit any linguistic, grammatical or syntactic specificity. Admittedly brief but succinct messages are indeed very frequent in commercial language because they are more likely to attract the attention of the consumer, who may not have the time or the inclination to read long texts. The public, who do not normally pay much attention to promotional messages as in the case in question (11/12/2012, T‑22/12, Qualität hat Zukunft, EU:T:2012:663, § 24), will consider the sign applied for as a mere promotional statement indicating that the services enable consumers to interconnect differentiated data in a way that make them addressable to the need of the relevant public (12/07/2012, T‑470/09, Medi, EU:T:2012:369, § 36; 08/05/2008, C‑304/06 P, Eurohypo, EU:C:2008:261, § 69).

The applicant further claimed that the sign only alludes to the service in question facilitating a connection, but the consumer is given no indication of the nature of that connection or what relationship will be formed. However, the relevant public does not expect promotional expressions to be precise or to fully describe the characteristics of the services at issue. Rather, it is a common characteristic of promotional messages to convey only abstract information that allows every consumer to assume that their individual needs are addressed.

Furthermore, the distinctive character of a trade mark must be assessed, first, in relation to the goods and services for which protection of the sign is sought, and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods and services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).

It follows that the consumer does not perceive the mark in a void, but rather in relation to the goods and services covered by it. Therefore, the context of the goods and services provides a significant interpretative aid as to how consumers will perceive the mark for which protection is sought.

When seeing the sign ‘INTERCONNECT’ used in the context, for instance, of processing, analysing, monitoring, and managing information and data in the field of consumer lifestyles for business purposes, the relevant public will directly and without further thought perceive the clear and unequivocal message that the service of processing, analysing, monitoring, and managing information and data in the field of consumer lifestyles would be interconnected with the particular consumer (their portfolio, behavioural or transactional information) in a way that the data provided will be addressable to the need of the consumers. Therefore, the Office cannot agree with the applicant that the mark will be meaningless in the context of a single service. All services operate with data and in order to provide addressable output, they will be interlinked/interconnected with a particular consumer’s data.

Similarly, the Office cannot agree with the assertion of the applicant that the sign introduces elements of conceptual intrigue and triggers, in the minds of the relevant public, a cognitive process or requires an interpretative effort. On the contrary, the sign is easily understandable. It is not an original play on words and contains no imaginative, surprising or unexpected element as to confer on it a distinctive character. This conclusion is not undermined by the fact that the sign does not provide details about what it is and how it will be interconnected. A promotional message is devoid of distinctive character not only when it praises specific characteristics that are to be directly assigned to the services covered, but also when it provides merely promotional information.

Moreover, the relevant public is not very attentive, if a sign does not immediately indicate the origin or intended use of the goods or services, but instead gives just purely promotional, abstract information, they will not take the time to enquire into the sign’s various possible functions or register it mentally as a trade mark (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 28-29). There is no particular originality in the trade mark applied for as the sign has an easily understandable meaning. Accordingly, the sign applied for is in the form of a classic promotional expression, devoid of elements that could, apart from its promotional function, enable the average consumer to easily and immediately memorise it as a trade mark for the goods or services for which protection is sought (21/01/2010, C‑398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44, 45 and 56-59). The applicant’s sign has no distinctiveness, even to a minimal degree, since it is endowed with no function to indicate commercial origin in relation to those services (19/09/2002, C‑104/00 P, Companyline, EU:C:2002:506, § 20).

Therefore, the Office considers that there is a sufficiently direct link between the sign applied for and the services at issue for the sign to fall under the absolute ground of refusal of Article 7(1)(b) EUTMR. The sign ‘INTERCONNECT’, as a whole, does not possess any characteristic that would enable consumers to perceive it as a distinctive sign that indicates the commercial origin of the services.

The applicant’s argument that the polysemic nature of the mark ‘INTERCONNECT’ ‘… is likely to endow that mark with distinctive character’ does not influence this finding. Case-law confirms that a word sign must be refused registration under Article 7(1)(b) EUTMR if at least one of its possible meanings designates a characteristic of the goods or services concerned (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 34; 23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

As regards the argument that the Office refused all the services without reference to any of the individual services, the Court of Justice has held that the competent authority may confine itself to general reasoning for all of the goods or services concerned in the case where the same ground of refusal is given for a category or group of goods or services (23/09/2015, T‑633/13, INFOSECURITY, EU:T:2015:674, § 46; 22/11/2011, T‑275/10, Mpay24, EU:T:2011:683, § 53).

According to the cited case-law, an option of this nature can extend only to goods or services that have a sufficiently direct and specific link to each other to the extent that they form such a sufficiently homogeneous category or group of goods or services that it allows general reasoning to be applied (03/03/2015, T‑492/13 & T‑493/13, DARSTELLUNG EINES SPIELBRETTS, EU:T:2015:128, § 40).

Although the Office did not specify each and every service to which an objection was raised, or explicitly state that they could be considered as a homogeneous group, the Office maintains that the examination of the absolute grounds for refusal was carried out in relation to all services. As mentioned above, all the services to which an objection has been raised operate with data and can be interlinked/interconnected with the particular data of a consumer.

In conclusion, the message conveyed by the sign does not allow the targeted public to immediately identify the commercial origin of the services. Therefore, the trade mark applied for is not prima facie distinctive. It could originate from any service provider, as long as the consumer is unable to create a link to a specific supplier as a consequence of extensive use (Article 7(3) EUTMR).

Furthermore, the applicant referred to trade mark No 1 893 965 ‘INTERCONNECTION’ registered for advertising; business management services; business administration; office functions in Class 35. However, the applicant cannot successfully rely on other registered European Union trade marks. Every trade mark is assessed on its own merits and the final assessment is based on specific grounds in every case. The circumstances that led to the acceptance of other marks cannot be a subject of the objections in the present proceedings, nor does it represent a valid argument in order to overcome the objection of lack of distinctiveness of the sign at issue. Although, when making an assessment, consistent appraisals should be sought as far as possible, this cannot lead to trade marks that are considered ineligible for registration being registered solely because other marks that include one of their elements have been registered.

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 [or her] 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 trade mark referred to by the applicant (UK trade mark registration No UK 3 396 806 ‘INTERCONNECT’),

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).

As regards an acceptance of the sign in the United States, it is recalled that 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.

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

Therefore, even though this may be taken into consideration, the registration of a trade mark in the United States is subject to different legal provisions, jurisprudence and interpretations from that of European Union trade marks (24/01/2008, T‑88/06, Safety 1st, EU:T:2008:15). It follows that it is the trade mark law of the United States that determines whether the sign was validly acquired and what scope of protection it has.

Since even registrations made in Member States are not a decisive factor it follows, a fortiori, that registrations made in non-member countries, whose legislation is not subject to European harmonisation, cannot in any way serve as proof that identical criteria to those set out in Article 7(1)(b) EUTMR in combination with Article 7(2) EUTMR were met in those countries.

It follows that the applicant has not succeeded in convincing the Office that the sign ‘INTERCONNECT’ will be perceived by consumers as indicating the commercial origin of the services in question.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 059 107 is hereby rejected for the following services:

Class 35 Customer relationship management services; compiling, processing, analyzing, monitoring, and managing information and data in the field of consumer lifestyles for business purposes; customer profiling for business purposes; analysis of consumer and commercial financial data for marketing prospecting and customer account management.

Class 36 Credit inquiry, evaluation, and alert services; financial data analysis; consumer financial data analytics; credit data analysis and modelling; credit risk assessment; financial assesment and risk management services for others in the field of consumer credit; financial database services; consumer credit database services; financial management of credit accounts; debt management; analysis of consumer and commercial financial data for financial portfolio management.

Class 45 Identity verification; fraud detection services in the field of consumer credit; monitoring of credit reports, the internet, and public records to facilitate the detection and prevention of identity theft and fraud; providing databases of information about fraud and identity theft protection; fraud detection, protection, and prevention.

The application may proceed for the remaining services:

Class 35 Advertising; business management; business administration; marketing.

Class 42 Providing non-downloadable software, platform as a service, and software as a service in the fields of business, credit scores, marketing, portfolio review, account acquisition, decision management, data analytics, credit risk modeling and analytics, credit letter generation, account management, identity verification, risk management, debt management, and fraud detection, protection, and prevention.

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