Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 01/02/2016

FRKELLY

27 Clyde Road Ballsbridge

Dublin 4

IRELAND

Application No:	014451521
Your reference:	TM100756EU00/CJG
Trade mark:	iConnect
Mark type:	Word mark
Applicant:	Stride Tool Inc. 46 East Washington Street, Ellicottville New York 14731 UNITED STATES OF AMERICA

The Office raised an objection on 1/09/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR 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 10/11/2015, which may be summarised as follows:

• the Examiner has erred in considering the constituent elements of the Mark separately in order to find the Trade Mark non-distinctive and exclusively descriptive. The applicant refutes the contention that the link between the expression iConnect and the goods referred to in the application are sufficiently close for the sign to fall within the scope of prohibition laid down by Article 7(1)(c) and 7(2)CTMR

• The term iConnect is not commonly used and has no particular meaning in relation to the goods applied for in Class 9. The connection between the possible meanings of the Trade Mark applied for and the goods claimed is too vague to substantiate the Examiner’s claim that the Mark is exclusively descriptive of said goods

• The applicant submits examples of a number of comparable word marks including the element ‘connect’ that have been accepted by OHIM in the past, and concludes that by reasons of legal certainty and equality of rights, the underlying application should be accepted as inherently registrable.

Pursuant to Article 75 CTMR, 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 uphold the objection in its entirety.

Under Article 7(1)(c) CTMR, ‘trademarks 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) CTMR 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 Community trademarks of the signs and indications to which it refers, Article 7(1)(c) CTMR 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 trademarks. (judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] 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).

Under Article 7(1)(b) CTMR, ‘trademarks 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) CTMR 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).

The applicant submits that In order for a Trade Mark to be devoid of distinctive character, the Trade Mark must be totally lacking in distinctive character. The applicant claims he cannot conceive how the applicant’s Mark iConnect can be considered totally lacking in distinctive character. The Applicant’s Trade Mark is comprised of the invented term iConnect which has been coined by the Applicant and which certainly possesses the minimum distinctiveness required for the purposes of registration. The applicant concludes that even if the elements “i” and “connect” could be considered devoid of distinctive character (which he submits is not correct), this does not mean that their combination cannot have distinctive character;… A word or combination of terms is not required to be unusual in order to be registrable.

The term iConnect is not commonly used and has no particular meaning in relation to the goods applied for in Class 9. The applicant further contends that the term “Connect” is not usually combined with the letter “i” and in this instance the coined phrase must be inherently registrable in relation to the goods applied for.

The Office agrees with the applicant that a mark comprising of two or more descriptive elements may, in that combination, have a distinctive character and the Office also follows the applicants’ argument that a combination of term is not required to be unusual in order to function as a trade mark. However in this case the applied for sign iConnect falls short of these requirements.

The examination has to be based on an overall perception of the trade mark by the relevant public. As a general rule, the mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics within the meaning of Article 7(1)(c) CTMR. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. However, such a combination may not be descriptive within the meaning of Article 7(1)(c) CTMR, provided that it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. Indeed, the mere fact that each of those elements, considered separately, is descriptive of characteristics of the goods and services does not mean that their combination cannot present such character (12/02/2004, C-265/00, Biomild, EU:C:2004:87, § 40, 41; 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 99, 100; 16/09/2004, C-329/02 P, SAT.2, EU:C:2004:532; 15/09/2005, C-37/03 P, BioID, EU:C:2005:547, § 29).

The goods refused are essentially ‘wireless computer interface for wired or wireless sensors for measuring instrumentation readings’, ‘computer application software downloadable onto a tablet or smart phone for wirelessly communicating with a computer interface for wired or wireless sensors’ and ‘computer application software downloadable onto a tablet or smart phone for displaying sensor readings taken from instrumentation’ in Class 9.

It has to be taken into consideration that the letter ‘I’ can stand for ‘interactive’ or for ‘internet’ (see http://www.acronymfinder.com/I.html, 16/12/2010, T-161/09, ilink, EU:T:2010:532, § 30, decisions of 21/09/2012, R 987/2012-4, istick, § 13; and of 17/06/2013, R 7/2012-4, iMessage, § 17). The prefix can also be used for the designation of ‘IT-related products’. The ‘I’ may also be understood as an abbreviation for ‘intelligent’ or ‘intelligence’. The use of the letter ‘i’ with this meaning is common in English and has already become customary in a wide variety of word combinations such as ‘iCard’, ‘iMarketing’ or ‘iVote’ (16.12.2010, T-161/09, ilink, EU:T:2010:532, § 30).

Therefore ,when used in relation to the goods covered by the application, the expression ‘iConnect’ would be perceived by reasonably attentive consumers, as a reference to their purpose: a wireless computer interface for sensors which transfers its data by means of Internet connection or any other interactive, intelligent means.

The applicant’s argument that the link between the expression and the goods does not contain obvious or direct information on the quality and intended purpose of the goods in question may not be accepted. The Office considers that this link is direct and straightforward. All that consumers expect from such goods is that they are connectable with the help of Internet connections or such like technology. Therefore, it will simply inform the consumers about its quality and will render the entire expression descriptive.

The fact that the sign is written as one word rather than retaining its spelling as two separate elements does not alter in any way the fact that the consumer will perceive the sign, without the need for any mental inferences, as an expression composed of two expressions and consequently descriptive in respect of the applicant’s goods.

Insofar as the applicant cites other signs that have been accepted by the Office, it must be noted that decisions concerning the registration of a sign as a Community trade mark which the Office, including the Boards of Appeal, are called on to take under the CTMR are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, and notwithstanding the importance of the principles of equal treatment and the principles of sound administration, the legality of those decisions must be assessed solely on the basis of that Regulation and not on the basis of the Office’s previous decision-making practice (see judgments of 10 March 2011, C-51/10 P, ‘1000’, paras 73 to 75 and of 16 July 2009, C-202/08 P and C-208/08 P, ‘RW feuille d’érable’, para. 57 and case-law cited therein).

Moreover, insofar as a certain inconsistency would have occurred with this or some other marks, a person who files an application for registration of a sign as a trade mark cannot rely, to his/her advantage and in order to secure an identical decision, on a possibly unlawful act committed with respect to another mark to the benefit of someone else (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 76 and case-law cited therein).

In the case of the registration of Community Trade Mark 1051903 CONNECT, 1819788 CONNECT2U, 425223 T-Connect, 977876 Connection With The Best and 3476405 DIGI CONNECT and further it must be noted that the publication of these marks took place more than ten years ago and since then the office practice and the practice of the Boards have evolved with time. It cannot be expected that the conditions under which these marks were assessed at the time can be extrapolated to the consideration of the grounds of registration of the present application. It is impossible to ascertain the examiner’s reason for accepting the mark at the time. Indeed, it cannot be denied that the examiner’s decision on distinctiveness is inevitably tainted by a certain degree of subjectivity. However, the observance of the principle of equal treatment must be reconciled with the observance of the principle of legality (see judgment of 8 July 2004, T-289/02, ‘Telepharmacy Solutions’, para. 59). The mere fact that, in other cases relating to other trademarks, a less restrictive approach seems to have prevailed, does not amount to a violation of the principle of non-discrimination, or a reason for invalidating a decision which per se appears to be reasonable and conforms to the CTMR, as interpreted by EU judicature.

Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgment of 10 March 2011, C-51/10 P, ‘1000’, para. 77 and case-law cited therein).

In the present case, it has become apparent that the application was caught by the grounds for refusal set out in Article 7(1)(b) and (c) CTMR because of the specific goods in respect of which registration was sought and because of the way in which the sign would be perceived by the relevant consumer.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 014451521 “iConnect” is hereby rejected for all the goods.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, 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 800 has been paid.

STEVEN STAM