Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 06/11/2016 r.

GILL JENNINGS & EVERY LLP

The Broadgate Tower

20 Primrose Street

London EC2A 2ES

REINO UNIDO

Application No:	014442222
Your reference:	MXD01667EM
Trade mark:	ALERTSITE
Mark type:	Word mark
Applicant:	SmartBear Software, Inc. 450 Artisan Way, 4th floor Somerville Massachusetts 02145 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 27/08/2015 and 19/04/2016 pursuant to Article 7(1)(b) and (c) EUTMR 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 letters.

The applicant submitted its observations on 31/12/2015, which may be summarised as follows:

• The ‘SITE’, an internet location, would not be understood by consumers to have an alarm.

• The only fact that the mark complies with the rules of English grammar does not mean that it is not distinctive.

• It is unclear whether the Office assessed the mark as ‘ALARMSITE’ or ‘ALERTSITE’.

• At best, the mark is suggestive but it does not directly describe characteristics of the goods or services at hand. Thus, it is distinctive.

• Moreover, the mark acquired distinctiveness in consequence of the use which has been made of it.

Pursuant to Article 75 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.

General remarks on 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 (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

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

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

General remarks on acquired distinctiveness

Under Article 7(3) [EUTMR], the absolute grounds for refusal laid down in Article 7(1)(b) to (d) of that regulation do not preclude registration of a mark if, in relation to the goods or services for which registration is requested, it has become distinctive in consequence of the use which has been made of it.

In the circumstances referred to in Article 7(3) EUTMR, the fact that the sign which constitutes the mark in question is actually perceived by the relevant section of the public as an indication of the commercial origin of a product or service is the result of the economic effort made by the trade mark applicant. That fact justifies putting aside the public-interest considerations underlying Article 7(1)(b) to (d) [EUTMR], which require that the marks referred to in those provisions may be freely used by all in order to avoid conceding an unjustified competitive advantage to a single trader.

First, it is clear from the case-law that the acquisition of distinctiveness through use of a mark requires that at least a significant proportion of the relevant section of the public identifies the products or services as originating from a particular undertaking because of the mark. However, the circumstances in which the condition as to the acquisition of distinctiveness through use may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as specific percentages.

Second, in order to have the registration of a trade mark accepted under Article 7(3) EUTMR, the distinctive character acquired through the use of that trade mark must be demonstrated in the part of the European Union where it was devoid of any such character under Article 7(1)(b) to (d) of that regulation.

Third, in assessing, in a particular case, whether a mark has become distinctive through use, account must be taken of factors such as, inter alia: the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking and statements from chambers of commerce and industry or other trade and professional associations. If, on the basis of those factors, the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark, it must be concluded that the requirement for registering the mark laid down in Article 7(3) EUTMR is satisfied.

Fourth, according to the case-law, the distinctiveness of a mark, including that acquired through use, must also be assessed in relation to the goods or services in respect of which registration is applied for and in the light of the presumed perception of an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect.

(10/11/2004, T‑396/02, Karamelbonbon, EU:T:2004:329, § 55-59; 04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/2006, C‑25/05 P, Bonbonverpackung, EU:C:2006:422, § 75; and 18/06/2002, C‑299/99, Remington, EU:C:2002:377, § 63).

As to the applicant’s arguments

As stated in the notifications of 27/08/2015 and 19/04/2016, the mark applied for consists of the combined words ‘ALERTSITE’ and is considered objectionable for:

Class 9 Computer software; downloadable software for on-line tools used for software testing, software development, and website and application monitoring; downloadable software for an on-line tool used for assessing the quality of an application program interface's functional, performance, load and monitoring ability throughout its lifecycle, and for simulating the application program interface; downloadable software for creating a shared server environment for managing and running a simulated application programming interface; downloadable software for creating simulated application programming interfaces, and deploying and managing simulated application programming interfaces in a shared server environment; downloadable software for performance, stress and load testing of applications; downloadable computer software for assessing an application program interface's load tolerance.

Class 42 Computer software development; providing a website featuring non‑downloadable software for on-line tools used for website and application monitoring; providing a website featuring non-downloadable software for on-line tools used for software life cycle management, and website and application monitoring; application service provider (ASP) featuring software for use in simulating application programming interfaces; technical computer services, namely, an Internet web site and e-mail monitoring and notification service, server performance monitoring service, and security monitoring and scanning service relating to the prevention of computer risks.

It should be firstly explained, that in the notification, the Office erroneously referred to the mark as ‘ALARMSITE’ instead of ‘ALERTSITE’, but the examination of the mark at no point referred to the term ‘ALARMSITE’.

The Office agrees with the applicant that trade marks which are merely suggestive or require further interpretation shall not be refused registration. However, the mark in question cannot be perceived as anything other than an indication of the characteristics of the goods and services in question. The message expressed by the sign applied for is clear, direct and immediate to the relevant public. It is not vague in some way or other, it does not lend itself to different interpretations and it is not imprecise or akin to an ‘evocative’ sign. The term ‘ALERTSITE’ is not sufficiently unusual to require a significant measure of interpretation, thought or analysis by the relevant consumer.

As stated in the objection letters of 27/08/2015 and 19/04/2016, ‘ALERTSITE’ will be understood by the relevant public as meaning an internet location featuring an alarm or warning.

Thus, the sign will immediately inform the relevant public without further reflection that the goods and services applied for are software in Class 9 is intended for an Internet site issuing alarms or warnings to its users. Likewise, in relation to IT services in  Class 42 the sign indicated clearly and directly that the services are related to development and provision of software generating alerts on a Internet site.

Therefore, the Office maintains that the mark ‘ALERTSITE’ conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question.

The applicant merely states that the internet location would not be understood to have an alarm, but does not support this claim with further explanations or evidence.

Moreover, in the present case, the Office did not object to the mark only because it complies with the English grammar rules, but because the sign ‘ALERTSITE’ is a straightforward combination of two descriptive elements, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts.

The structure of the term ‘ALERTSITE’ cannot be perceived as unusual by the consumers concerned: it has a sufficiently clear meaning for the relevant public and makes it possible to designate the essential characteristics of the goods and services concerned.

Consequently, the Office does not agree with the applicant that the mark has distinctive character. It is settled case-law that there is a clear overlap between the scope of the grounds for refusal set out in Article 7(1)(b) to (d). In particular, it is clear from the case-law that a word mark which is descriptive of characteristics of goods or services within the meaning of Article 7(1)(c) is, on that account, necessarily devoid of any distinctive character with regard to the same goods or services within the meaning of Article 7(1)(b) of the regulation (see judgment of 12/06/2007, T 190/05 ‘TWIST & POUR’, paragraph 39).

The applicant claimed that the mark acquired distinctiveness in consequence of the use which has been made of it.

In order to support its claims, the applicant submits a general statement that ‘ALERTSITE’ has been widely used in Europe over the past 16 years and has 150 large customers in Europe. Moreover, it states that the product has been actively marketed in Europe and provides general statement of revenue figures generated in the years 2014 and 2015 in the following countries: Austria, Belgium, Czech Republic, Denmark, France, Germany, Greece, Hungary, Ireland, Italy, Luxembourg, Malta, Netherlands, Norway, Poland, Portugal, Slovakia, Spain, Sweden, Switzerland, United Kingdom.

The applicant further states that the site has been saved on thousands occasions since 1999 and submits to that effect an internet link to the Wayback Machine website which stores historical website data.

As regards the evidence files it should be stated that it is not sufficient to prove acquired distinctiveness of the trade mark acquired through use.

Firstly, such general figures alone, without additional corroborative details, are too general to allow specific conclusions to be drawn about the use of the trade mark.

Secondly, the evidence does not show that the mark has become distinctive in relation to the goods and services applied for in classes 9 and 42.

Thirdly, it should be noted that statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. Thus, they should be supported by further evidence or evidence originating from independent sources (labels, packaging, press articles, awards, opinion polls, statements from chambers of commerce and industry or other trade and professional associations etc.).

Finally, the evidence provided does not prove that the mark is perceived by a significant proportion of the relevant public as identifying specific goods or services from a particular undertaking.

Upon the applicant’s request, a further period of two months was granted for submission of further evidence of acquired distinctiveness of the sign in question. However, the applicant failed to submit further evidence within the time limit.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 014442222 is hereby rejected.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. 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.

Anna MAKOWSKA

Attachment:

Notice of 19/04/2016 of absolute grounds of refusal of the application