Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 12/08/2020

‘АЙ НЕТ ЕВОЛЮШЪН’ ЕАД

гр. София, ПК 1616, район ‘Витоша’, ул. ‘Беловодски път’ No 104

1616 София

BULGARIA

Application No:	018207607
Your reference:
Trade mark:
Mark type:	Figurative mark
Applicant:	‘АЙ НЕТ ЕВОЛЮШЪН’ ЕАД гр. София, ПК 1616, район ‘Витоша’, ул. ‘Беловодски път’ No 104 1616 София BULGARIA

The Office raised an objection on 09/04/2020 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 letter.

The applicant submitted its observations on 20/05/2020, which may be summarised as follows.

1. Protection is sought for specific services to be provided in two areas:

1. Entertainment: the relevant services will be offered to visitors in places of entertainment, such as amusement parks, pleasure yachts or fests. Pictures of consenting visitors will be taken to capture joyful moments during their stay. The services will use artificial intelligence (AI) technologies for processing the pictures. These technologies allow various functionalities and create value-added services.

2. Security: security surveillance systems will be developed on the basis of the abovementioned AI technologies. These systems will be part of the security measures deployed in banks, casinos, supermarkets, etc. with the services being provided to individuals or companies commissioned with security services.

2. As the mechanism for providing these services is quite complicated, they cannot be considered limited to the action of taking pictures.

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.

Descriptiveness – Article 7(1)(c) EUTMR

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 the present case, the relevant English-speaking consumer would understand the sign as having the following meaning: a website for taking pictures.

The relevant consumers would perceive the sign as providing information that the software that is the subject of the relevant services enables the consumer to take pictures online. Therefore, despite the sign having certain stylised elements (blue/green upper-case and lower-case letters), the relevant consumer would perceive it as providing information about the intended purpose of the services in question and the place where they are rendered (on the internet).

While making submissions, the applicant limited some of the services in Class 42 for which protection was sought by adding the wording in the area of security surveillance systems and entertainment in amusement parks, fests, pleasure yachts, recreational boats, etc. to some of the services and with AI technologies to others. However, these limitations do not overcome the objection. The applicant acknowledges in its submissions that the services that relate to entertainment will enable pictures to be taken of visitors. Although this statement was not made in relation to the services that relate to security, it can be concluded that the latter services will also enable pictures to be taken. Moreover, it appears logical that installation of computer software in the area of security surveillance systems or software as a service [SaaS] in the area of security surveillance systems involves, for example, software for taking pictures that will be used for the security surveillance of a certain place. The addition with AI technologies merely specifies a technical feature of the services in question and does not affect the possibility that the services in question enable pictures to be taken.

As to the applicant’s argument that the services in question cannot be considered limited to the action of taking pictures, it has to be noted that:

it is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 102).

Lack of distinctive character – Article 7(1)(b) EUTMR

Signs that are devoid of any distinctive character under Article 7(1)(b) EUTMR are those that are incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the public concerned to repeat the experience of 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 in question (10/10/2008, T‑224/07, Light & Space, EU:T:2008:428, § 19). A descriptive trade mark lacks any distinctive character and falls foul of Article 7(1)(b) EUTMR, because a descriptive word mark necessarily also lacks distinctiveness (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 86).

As a purely descriptive indication with the meaning shown above, which will be readily inferred by the relevant English-speaking consumers, the sign applied for lacks the necessary distinctive character under Article 7(1)(b) EUTMR.

Although the sign for which protection is sought contains certain stylised elements that confer upon it a degree of stylisation, the nature of these elements is so negligible that they do not endow the trade mark as a whole with any distinctive character. These elements do not possess any feature regarding the way in which they are combined that allows the mark to fulfil its essential function for the services for which protection is sought.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 18 207 607 is hereby rejected for the following services:

Class 42 Installation of computer software in the area of security surveillance systems and entertainment in amusement parks, fests, pleasure yachts, recreational boats, etc.; computer software consultancy; computer programming with AI technologies; rental of computer software; maintenance of computer software; computer software design with AI technologies; software as a service [SaaS] in the area of security surveillance systems and entertainment in amusement parks, fests, pleasure yachts, recreational boats, etc.; software development in the framework of software publishing.

The application will proceed accordingly for the following services:

Class 35 Marketing in the framework of software publishing.

Class 41 Entertainment information.

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.

Ivo TSENKOV