Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 04/03/2020

PISTIOLIS - TRIANTAFYLLOS AND ASSOCIATES

103 Vas. Sofias Avenue

GR-11521 Athens

GRECIA

Application No:	018096006
Your reference:
Trade mark:	mapmydata
Mark type:	Figurative mark
Applicant:	PISTIOLIS - TRIANTAFYLLOS AND ASSOCIATES LAW FIRM 103 Vas. Sofias Avenue GR-11521 Athens GRECIA

The Office raised an objection on 06/08/2019 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 26/09/2019, which may be summarised as follows:

1. The wording of the sign is not used in its literate form as used and understood by the Office, but rather a reverse order of the term ‘data mapping’, constituting thus a play on the relevant words. In any event its origin has a totally different starting point, than the one mentioned in the reasoning of the Office, since it has been chosen as relevant to one formal requirement imposed by the Regulation (EU) 2016/679 of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation, “GDPR”), which provides for a record of processing activities that should be kept -amongst other documentation- as a requirement to demonstrate compliance with the legal framework. The manner to produce such record is to map the relevant personal data flows in order to show how the latter are being processed within an organization, upon which legal basis, to whom they are disclosed etc. The sign will therefore distinguish a relevant software program developed and intended to map the personal data flows within an organization from other goods. The connotation of the wording leads to the legal/IT terminology widely and commonly used amongst the IT and legal practitioners engaged with GDPR compliance projects and known as ‘data mapping’. However, the interpretation of the slogan requires a considerable mental effort before establishing a clear and direct link of the sign with the goods and services covered. The sign has nothing to do with data warehousing or data integration which are related with data mapping as explained and perceived by the Office. Therefore, and following this reasoning, it cannot be perceived as a mere promotional laudatory slogan. To this respect, a screenshot from the UK Information Commissioner’s Office is attached herein, where clarifications are provided to the organizations with respect to the documentation required under the GDPR and the data-mapping exercises.

2. When the sign immediately conveys the kind, quality, intended purpose or other characteristics of the goods or services, it is descriptive and therefore, not qualifying for protection, as implied for the sign proposed with regards to Class 9. However, in our case the wording proposed relates to the formal requirement as provided in GDPR. Therefore, the subject matter of Class 9 of the sign applied for is not described as such in its wording, taking into consideration its origin within the context of the GDPR. Therefore, there is no sufficiently direct relationship between the sign and the goods and services in question to enable the public to immediately perceive without further thought a description of the goods and services in question or one of their characteristics (22/06/2005, T-19/04, Paperlab, EU:T:2005:247, § 25; 27/02/2002, T-106/00, Streamserve, EU:T:2002:43, § 40).

3. The wording is further supplemented by stylized elements, which entail a level of particularity, since they reflect the style and format of the actual platform used for the purpose of rendering goods and services distinguished by the sign proposed. One cannot claim that the colour combination used is the commonplace colour for similar services to be rendered by the sign. Therefore, a certain level of distinctiveness should be considered in terms of visual representation of the sign.

D E C I S I O N

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.

Legal background

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).

The applicant’s arguments in detail

Ad 1

The applicant claims that the wording of the sign is not used in the literate form “data mapping”, but is rather a reverse order of this term and constitutes, therefore, a play on the relevant words. Furthermore, according to the applicant the interpretation of the slogan requires a considerable mental effort before establishing a clear and direct link of the sign with the goods and services covered.

This argument, however, cannot convince. The Court of Justice has provided the following criteria that should be used when assessing the distinctive character of a slogan (21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 47; 13/04/2011, T-523/09, Wir machen das Besondere einfach, EU:T:2011:175, § 37).

An advertising slogan is likely to be distinctive whenever if it is seen as more than a mere advertising message extolling the qualities of the goods or services in question because

it:

• constitutes a play on words, and/or

• introduces elements of conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or unexpected, and/or

• has some particular originality or resonance, and/or

• triggers in the minds of the relevant public a cognitive process or requires an interpretative effort.

In addition to the above, the following characteristics of a slogan may contribute towards a finding of distinctiveness:

• unusual syntactic structures;

• the use of linguistic and stylistic devices, such as alliteration, metaphors, rhyme, paradox, etc.

Furthermore, a slogan whose meaning is vague or impenetrable or whose interpretation requires considerable mental effort on the part of the relevant consumers is also likely to be distinctive, since consumers would not be able to establish a clear and direct link with the goods and services for which the trade mark is protected.

However, none of these criteria apply to the sign at hand which is made up of the three words ‘map, ‘my’ and ‘data’. These three elements are juxtaposed in accordance with the rules of English grammar and common parlance and form a single expression meaning, ‘associate or link the information in digital form that belongs to me’.

The slogan is not a play on words, neither surprising nor original nor unexpected. Contrary to the applicant’s view, it is evident and does not require any cognitive process to understand the above meaning. The phrase will thus easily be understood as meaning that the applicant’s products and services aim to relate, link or associate different data sets of the clients.

The applicant´s reference to the GDPR cannot alter this finding, but to the contrary merely enforces the non-distinctive character of the slogan. All the goods in class 9 are or include software for data analysis. Likewise, the services in class are all software as a service (SaaS) which can also include data analysis software and applications. It is irrelevant in this regard whether the use of the sign, as intended by the applicant, has nothing to do with data warehousing or data integration, but rather with the compliance of the data-mapping requirements of the GDPR, since the wording of the list of goods and services covers broad categories of software that (at least potentially) contain the subcategory of specific data-mapping software.

Ad 2

The applicant argues that the sign does not immediately convey the kind, quality, intended purpose or other characteristics of the goods or services in questions and, therefore, there is no close relation of the sign to the goods and services rendering it descriptive.

In this regard, it has to be noted that the objection is not based on descriptiveness according to Article 7(1)(c) EUTMR, but on the lack of distinctiveness according to Article 7(1)(b) EUTMR.

As stated above, distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings (29/04/2004, C-468/01 P – C-472/01 P, Tabs (3D), EU:C:2004:259, § 32; 21/10/2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 42; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 66; 21/01/2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 33). According to settled case-law, such distinctiveness can be assessed only by reference first to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 24 and case-law cited).

Even though a given term might not be clearly descriptive with regard to the goods and services concerned, as to the point that an objection under Article 7(1)(c) EUTMR would not apply, the term can still be objectionable under Article 7(1)(b) EUTMR on the ground that it will be perceived by the relevant public as only providing information on the nature of the goods and/or services concerned and not as indicating their origin. For example, this is the case with the term ‘medi’, which was considered as merely providing information to the relevant public about the medical or therapeutic purpose of the goods or of their general reference to the medical field (12/07/2012, T-470/09, Medi, EU:T:2012:369, § 22).

The same applies to the present case where the slogan ‘map my data’ merely provides information to the relevant public about the purpose of the goods or of their general reference to the field of data-mapping.

Ad 3

The applicant claims that a minimum level of distinctiveness should be considered in terms of the graphic representation of the sign. It is true, that the presence of figurative elements may give distinctive character to a sign consisting of a descriptive and/or non-distinctive word element so as to render it eligible for registration as an EUTM. The question to be considered is whether the stylisation and/or the graphical features of a sign are sufficiently distinctive for the sign to act as a badge of origin.

However, in the present case the stylization does not possess any feature regarding the way in which those characteristics are combined that allows the mark to fulfil its essential function in relation to the goods and services for which protection is sought.

It must be reminded that, according to the Common Practice agreed by the Office and a number of trade mark offices in the European Union, descriptive/non-distinctive word elements appearing in basic/standard typeface, lettering or handwritten style typefaces — with or without font effects (bold, italics) — are not registrable. The same applies where the mere ‘addition’ of a single colour to a descriptive/non-distinctive word element, either to the letters themselves or as a background, will not be sufficient to give the mark distinctive character.

In particular, the mark in question, , merely consists of the non-distinctive word element ‘map my data’ in standard typeface and black and red colour. The representation of the second word (map) in red only emphasizes that the verbal element is made up of three words and not one. Consequently, the graphical stylisation is not sufficiently distinctive for the sign to act as a badge of origin.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and 7(2) EUTMR, the application for European Union trade mark No 18 096 006 is hereby rejected for the following goods/services:

Class 9 Computer application software; Interactive computer software; Software for the analysis of business data.

Class 42 Providing temporary use of web-based applications; Software as a service [SaaS]; Providing temporary use of non-downloadable software applications accessible via a web site; Platform as a service [PaaS]; Consulting services in the field of software as a service [SaaS]; Providing temporary use of web-based software.

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.

Konstantinos MITROU