Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 06/02/2020

LEWIS SILKIN LLP

5 Chancery Lane

Clifford's Inn

London EC4A 1BL

UNITED KINGDOM

Application No:	018091413
Your reference:	DF/89632.9
Trade mark:	CONSTANT CONTACT
Mark type:	Word mark
Applicant:	Constant Contact, Inc. c/o The Endurance International Group, 10 Corporate Drive Burlington Massachusetts 01803 UNITED STATES OF AMERICA

The Office raised an objection on 12/08/2019 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 submitted its observations on 04/12/2019, which may be summarised as follows:

• The trade mark CONSTANT CONTACT (004819652) has been accepted by the EUIPO in 2006 in the class 9, class 16 and class 42. The IP right is valid and is due to expire on 06/01/2026.

• The trade mark CONSTANT CONTACT has been registered in many IP offices throughout the world, including English speaking jurisdictions. Furthermore, the trade mark was registered by the UK office on 05/July/2019 with the class 35, class 42 and class 45.

• Similar marks have been accepted by the Office, including CONTACT, CONTACT NOW and CONTACT Software, without any evidence of distinctiveness acquired through use being filed for identical services. The applicant argues that in accordance with the principle of equal treatment, the objection should be waived.

• The mark CONSTANT CONTACT is not allusive in respect to the majority of the services being provided (examples have been given).

• The expression CONSTANT CONTACT is not common place (e.g. not found in Goggle search, other than the applicant’s sites), constitutes a play on words, has a unique alliteration and finally has a vague meaning. The mark is clearly capable of indicating the origin of the services as being those solely of the applicant.

In summary, as only a low level of distinctiveness has been deemed acceptable to satisfy the requirements of Article 7(1)(b) and Article 7(2), the mark does in fact have the required distinctiveness contrary to the arguments of the Office,.

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, more particularly in respect to the statement that “the mark .. is definitely not allusive for the majority of the services”, the Office has decided to waive the objection for the following services:

Class 35	Consulting services in the fields of marketing, advertising, internet marketing and advertising, and mobile marketing and advertising; marketing consulting services in the fields of marketing and advertising media, social media, email marketing and strategy, and marketing strategy and advertising on search engines.
Class 42	Design, creation, hosting, maintenance of websites for others; software as a service (saas) services, namely, hosting software for use by others in building, designing, managing, customizing and personalizing websites and website services, features, and functions; software as a service (saas) services featuring software for use by others in designing, managing, customizing and personalizing websites and websites services, features, and functions; platform as a service (paas) featuring computer software platforms for use by others in building, designing, managing, customizing, and personalizing websites and website services, features, and functions; computer website design consultation; design, hosting and maintenance of website security services; hosting websites; server hosting; hosting of databases; hosting of digital content; hosting of multimedia applications; hosting of interactive applications; cloud hosting provider; developing and hosting a server on a global computer network for the purpose of facilitating e-commerce via such a server.
Class 45	Domain name registration services; domain name registration advisory services; consultancy relating to the registration of domain names; domain name search services for the availability of domain names.

The objection is maintained for the remaining services, which are

Class 35

Advertising, marketing and promotion services; marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and commercial information services, via the internet.

As already stated in the initial objection, the advertising and marketing services are foreseen to be provided within cyberspace or simply via the internet. The nature of such a medium enables such services to stay in CONSTANT CONTACT with their clients.

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).

Although the criteria for assessing distinctiveness are the same for the various categories of marks, it may become apparent, in applying those criteria, that the relevant public’s perception is not necessarily the same for each of those categories and that, therefore, it may prove more difficult to establish distinctiveness for some categories of mark than for others (29/04/2004, C‑456/01 P & C‑457/01 P, Tabs, EU:C:2004:258, § 38).

Moreover, it is also settled case-law that the way in which the relevant public perceives a trade mark is influenced by its level of attention, which is likely to vary according to the category of goods or services in question (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, §  42; and 03/12/2003, T‑305/02, Bottle, EU:T:2003:328, § 34).

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).

As regards the applicant’s argument that the same trade mark CONSTANT CONTACT has been registered by the EUIPO in 2006 in the class 9, class 16 and class 42, the objection is maintained for the registration of the said expression for specific terms (see below) in class 35 only.

As regards the national decisions i.e. the UK and third countries in this case, 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.

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

As regards the applicant’s argument that a number of similar registrations have been accepted by the EUIPO, 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 applicant’s argument that third parties, and more particularly its competitors, do not need to use or use the sign (following the Google search) at issue to designate the services to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [EUTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

(27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 39).

In its submissions the applicant has argued that the mark itself is sufficiently fanciful, particularly taking into account that the combination of CONSTANT and CONTACT. The applicant argues that CONSTANT CONTACT as presented is particularly distinctive, and therefore enables the public to view the trade mark as a badge of trade origin.

Furthermore, the fact that the sign at issue can be a play on words does not suffice to make it distinctive, nor does the alliteration. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The Office has noted the applicant’s submission. However, the Office cannot find anything unusual or distinctive about the mark applied for. The mark lacks any secondary or covert meaning, and its message to the consumer is plain, direct and unambiguous. Without any proof that the mark has become distinctive through long and extensive use, it is believed that the mark, prima facie, will not function as a badge of trade origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 018091413 is hereby rejected for the following services:

Class 35

Advertising, marketing and promotion services; marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels; advertising and commercial information services, via the internet.

The application may proceed for the remaining services.

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.

Eamonn KELLY