Refusal of application for a European Union trade mark

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

Alicante, 28/04/2016

ZIVKO MIJATOVIC & PARTNERS

Avenida Fotógrafo Francisco Cano 91A

E-03540 Alicante

ESPAÑA

Application No:	014965611
Your reference:	LeEcoCloud
Trade mark:	LeEcoCloud
Mark type:	Word mark
Applicant:	Le Holdings Ltd., a Cayman Islands company Sertus Chambers, P.O. Box 2547, Cassia Court, Camana Bay, Grand Cayman Camana Bay LAS ISLAS CAIMÁN

The Office raised an objection on 05/02/2016 pursuant to Article 7(1)(b) EUTMR 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 17/03/2016, which may be summarised as follows:

• The Office registered ‘ECOCLOUD’ (EUTM No 11 074 986) for goods and services in Classes 9, 3, 38 and 42. The applicant has applied for the mark ‘LeEcoCloud’ for goods and services in the same classes. The refusal of the application would be a highly inconsistent and/or biased application of the law. Furthermore, in 2015, the Office found that four similar marks of the applicant were distinctive. These prior registrations demonstrate that the elements ‘LE’ and ‘ECO’ of the mark applied for, ‘LeEcoCloud’, are distinctive. The addition of the element ‘CLOUD’ does not render ‘LE’ or ‘ECO’ non-distinctive.

• The Office has only listed the goods and services for which registration is sought, and has not made any direct assessment as regards the relationship between the mark applied for and the goods and services. Although the Office has mentioned that the word ‘ECO’ could describe cloud computing, the applicant contends that this is not a meaning that the relevant public would associate with the mark because, for the general public, cloud computing is not at all related to ecology. Therefore, the relevant public would immediately perceive the mark as memorable because it juxtaposes two words that do not typically exist side by side.

• The mark applied for is extraordinarily unique, and such highly unique word combinations should be considered distinctive. A Google search for the exact phrase ‘Le Eco Cloud’ returns a mere four results, all of which relate to the applicant. The applicant contends that this weighs heavily in favour of a finding of distinctiveness. It is a phrase that has never been used, other than by the applicant, in any language.

• Furthermore, the French meanings proposed for the mark’s constituent parts in the notice of grounds for refusal will not be associated with the mark by French-speaking consumers. French speakers will immediately notice that ‘LeEcoCloud’ is not composed of French words because it does not follow basic French orthography or grammar rules, namely because of the absence of an accent over the second letter ‘E’ and the inclusion of the first letter ‘E’. The element ‘Eco’ will be distinguished by French speakers from the French prefix ‘éco-’ because of the absence of an accent.

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 for all the goods and services for which registration is sought, namely:

Class 9 Smartphones; Encoded magnetic cards; Computer programmes [programs], recorded; Computer operating programs, recorded; Computer software applications, downloadable; Television apparatus; Batteries, electric; Headphones; Compact disc; Navigational instruments.

Class 36 Insurance consultancy; Fund investments; Providing financial information via a web site; Financing services; Issue of tokens of value; Banking; Brokerage; Credit card services; Debit card services; Electronic funds transfer.

Class38 Television broadcasting; Wireless broadcasting; Message sending; Computer aided transmission of messages and images; Communications by fiber [fibre] optic networks; Electronic bulletin board services [telecommunications services]; Providing telecommunications connections to a global computer network; Providing online forums; Providing access to databases; Video broadcasting services via the Internet.

Class 42 Technical research; Off-site data backup; Electronic data storage; Software as a service [SaaS]; Computer software design; Rental of computer software; Conversion of data or documents from physical to electronic media; Hosting computer sites [web sites]; Providing search engines for the internet; Cloud computing.

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.1’, § 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’, § 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’, § 65).

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, ‘Ovoid tablet’, § 42 and 03/12/2003, T‑305/02, ‘Shape of a bottle’, § 34).

A sign, such as a promotional message, 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’, § 20 and 03/07/2003, T‑122/01, ‘BEST BUY’, § 21).

The mark applied for contains the words ‘Le’, ‘Eco’ and ‘Cloud’, conjoined to form the expression ‘LeEcoCloud’. In this regard, the Office clarifies that the notification dated 05/02/2016 defined ‘Eco’ not as a description of cloud computing, but simply as a prefix referring to ecology. ‘Le’ is the article ‘the’ in English, and ‘cloud’ is a word of English origin used in French to refer to network-based services that make information available from multiple electronic devices by linking to an account.

As regards the goods and services, the applicant remarks that the Office has not proved or provided any reasoning for the link made between the mark applied for and the goods and services covered by the application. In this regard, the Office points out that the goods for which registration is sought in Class 9 relate to different kinds of software, hardware and devices for managing data, information or sound, and accessories related thereto; the services in Class 36 are basically insurance and financial services; the services in Class 38 include all kinds of telecommunication services; and Class 42 covers different services of research, design, managing and rental, and ancillary services related to information technology.

Furthermore, as mentioned in the notification dated 05/02/2016, the expression ‘LeEcoCloud’ will be perceived by the relevant consumers – whether they are average or specialised consumers – as a meaningful expression, namely ‘the eco-cloud/eco-cloud-computing or the ecologic cloud/cloud computing’. This expression, in the context of the goods and services covered by the application, will indicate to consumers that they can be connected to or used with a sustainable or environmentally friendly cloud, for instance a cloud powered by renewable energy or that uses a clean and sustainable power grid, or even services provided by data centres with zero carbon emissions. In fact, the expression ‘LeEcoCloud’ can be easily and directly connected with all of the applicant’s goods, since the different kinds of hardware, software and devices of the applicant could be connected to or used with an environmentally friendly cloud; the same reasoning applies to all of the services in Classes 36, 38 and 42, which could also be provided/rendered by an environmentally friendly cloud computing centre.

In this regard, the applicant states that the French meanings proposed for the mark’s constituent parts in the notice of grounds will not be associated with the mark by French-speaking consumers. However, the Office points out that the fact that the article ‘Le’ is depicted with the letter ‘e’ and without an apostrophe does not mean that the French-speaking public will not understand its meaning. Moreover, in French, it is not unusual for articles, such as ‘le’, to be used without an apostrophe if the intention is to emphasise the noun the article is used with. Furthermore, in French, it is not mandatory to stress upper case letters, but it is optional; consequently, the word ‘Eco’ will be clearly recognised by the French-speaking public as a prefix related to ecology. Accordingly, the Office disagrees with the applicant’s argument that French speakers will immediately notice that ‘LeEcoCloud’ is not composed of French words because it does not follow basic French orthography or grammar rules.

There is no element of fancifulness or any unusual combination of words that might require some effort, such as grammatical analysis, on the part of the consumers before they will understand the meaning of the mark applied for in relation to the goods and services in question. This is true of average consumers and the specialised public. In addition, in view of the nature of some of the goods and services in question, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the goods or services, it is liable to be relatively low when it comes to purely non-distinctive promotional indications, which well-informed consumers do not see as decisive. It must be held that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, ‘Smart Technologies’, § 48). Consequently, even if the expression ‘LeEcoCloud’ were grammatically or linguistically wrong and considered a neologism, all of the individual elements that constitute the mark would be understood by the relevant public. The meaning of the expression ‘LeEcoCloud’ could be equally applied to all the goods and services covered by the application, and merely serves to highlight positive aspects of the goods and services concerned, namely that they can be connected to or used with a sustainable or environmentally friendly cloud, for instance a cloud powered by renewable energy or that uses a clean and sustainable power grid, or even services provided by data centres with zero carbon emissions. As such, the trade mark is not considered an unusual combination of words. With this in mind, the connotations conveyed are not vague, but explicit, and cannot be considered surprising or unusual for the relevant consumers.

With regard to the internet searches referred to by the applicant, the Office considers that, while internet examples might be useful when evaluating the lack of distinctiveness of a word or a mark, the lack of distinctiveness of the mark does not depend on whether or not an expression is commonly used on the internet. Even if it were uncommon to use the expression ‘LeEcoCloud’ in relation to the goods and services concerned, and all the results provided by the Google search engine using the keywords ‘LeEcoCloud’ were connected to the applicant’s goods and services, in order for the Office to refuse to register a trade mark under Article 7(1)(b) EUTMR, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T‑320/03, ‘LIVE RICHLY’, § 88). The same reasoning applies to the applicant’s argument that no competitors make use of the same combination.

In relation to the applicant’s argument that a similar registration has been accepted by EUIPO (EUTM No 11 074 986 ‘ECOCLOUD’), the Office considers that this European Union trade mark could have been registered in error. However, 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’, § 47 and 09/10/2002, T‑36/01, ‘Design applied to the surface of goods’, § 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’, § 67).

Furthermore, the four registrations owned by the applicant (EUTM No 14 568 471 ‘LeEco’, EUTM No 14 802 631 ‘LeEco’, EUTM No 14 515 324 and EUTM No 13 883 871 ) are not comparable to the mark applied for, ‘LeEcoCloud’, since these previous registrations are composed of only one or two words that, considered as a whole, are relatively vague, whereas the mark applied for is composed of three conjoined words and will be perceived as simply a promotional combination, as explained above.

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 14 965 611 is hereby rejected for all the goods and services claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Ignacio IGLESIAS ARROYO