Refusal of application for a European Union trade mark

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

Alicante, 19/05/2016

Purewal & Partners

1 Fore Street London

City of London, London EC2Y 9DT

REINO UNIDO

Application No:	014989305
Your reference:
Trade mark:	SpatialOS
Mark type:	Word mark
Applicant:	IMPROBABLE WORLDS LIMITED 20 Farringdon Road London London, City of EC1M 3HE REINO UNIDO

1. The Office raised an objection on 27/01/2016, 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 letter.

2. The applicant submitted its observations on 25/03/2016, which may be summarised as follows:

• The mark as a whole is not descriptive in relation to the goods and services applied for.

• The applicant holds that the SpatialOS software does not involve “spatial computing” as defined in the web sites provided by the examiner, and explains that the software does not itself work as an “operating system”, but permits software programs, information and other assets to operate and be organised efficiently in relation to each other for a common purpose, in particular for distributed simulation, via a complex and innovative cloud-based storage, retrieval and processing system.

• Neither the mark SpatialOS as a whole, nor the words “Spatial” and “OS” denote or provide a concrete indication as to the goods and services.

• The goods and services relate to a cloud-based software application which allows professional game and other software developers to among others create large-scale simulations and virtual worlds. The relevant public is thus not the general public, but professional users.

• SpatialOS is not a generic word because of the variety of different contexts in which it can be used.

• Every result on the first 3 pages of a Google search for the term “SpatialOS” relates to the applicant, the creator of the SpatialOS software.

• The Office has accepted other marks ending in OS for goods in class 9, e.g. MAC OS, LAB OS, and LINK OS.

• The applicant wishes to limit the list of goods and services, as indicated in the submissions, if the objection is maintained.

3. 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.

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.

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).

The Office cannot find other than that the mark is descriptive and devoid of any distinctive character for the goods and services at issue.

The goods and services applied for are among others, all kinds of software, telecommunication services and computer services.

Contrary to the applicant’s assertion, the goods and services are not solely directed at professional users. The list of goods includes for instance computer software and application software, and telecommunication services, which are also used by the average consumer.

However, it is more likely that computer and telecommunication professionals, who keeps up to date with the latest findings and research, and the newest technologies in their field, know the concept of “spatial computing”. This concept is quite new and it is further developed all the time, which means that new uses are found for it, not least in relation to gaming and gaming environments. (It is noted that the gaming industry is usually in the forefront of technology).

The applicant explains that the software does not relate to spatial computing as indicated by the examiner, however, the mark has to be examined in relation to the goods and services applied for. As they are wide terms they include goods and services in relation to spatial computing.

As previously stated the term “OS” stands for “operating system” which is software which runs other programs and applications (www.webopeidia.com ). An operating system is therefore the backbone of any computing system, and a “spatial OS” would be the backbone of a “spatial computing system”.

When viewing the mark in connection with the goods and services in question, the professional users will immediately understand that they are or relate to an operating system in relation to spatial computing. There is no element whatsoever in the mark that would lead the relevant consumers to believe it to be an indication of commercial origin.

The applicant is of the opinion that because the meaning of the word “spatial” depends on the context in which it is use, the term “SpatialOS” is not a generic term, however, it is clear from case law that a sign must be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned”. (See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 32, emphasis added.)

As regards the fact that every result on the first 3 pages of a Google search for the term “SpatialOS” relates to the applicant, this is not relevant, as it is how the relevant consumer perceives the mark that is relevant.

As regards the applicant’s argument that a number of marks ending with “OS” have been accepted by the EUIPO, 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 (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 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’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

The proposed limitation cannot be accepted as it is conditional.

4. 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 14989305 is hereby rejected for the following goods and services:

Class 9: Software; simulation software; computer software; application software; communication software; database synchronisation software; database management software; computer game software; video game software; electronic game software; interactive entertainment software; game software for mobile phones; operating system programs and software; virtual reality software; computer software for use in uploading, downloading, storing, backing up, transmitting, receiving, accessing, retrieving, managing, organizing, and synchronizing data, email, documents, images, audio, video, multimedia content, electronic publications, computer files and other computer software; downloadable software for accessing and managing of computer applications over a global computer network; downloadable computer game, video game, electronic game and interactive entertainment software; computer software development tools; computer software for use in migrating between different computer network operating systems; computer programs; simulation apparatus; data processing apparatus and devices; computer and video game apparatus; computer operating systems; network operating systems; computer programs for data and image processing; computer programs for user interface design; electronic publications; software applications; website applications; digital games.

Class 16: Printed matter, goods from paper, not included in other classes; printed materials; manuals; books.

Class 38: Telecommunications; telecommunication services; telecommunication of computer programs and electronic, computer and video games; secure transmission of data, sound or images; transmission and dissemination of data, sound and images by telecommunications; signal transmission for electronic commerce via telecommunication systems and data communication systems; providing a virtual computing environment accessible via the Internet; providing on-line facilities for real-time interaction between and among computer users, in particular relating to software and computer games.

Class 42: Computer services, namely remote hosting of operating systems and computer applications; providing hosted operating systems and computer application through the internet; writing, designing, developing and producing computer software and hardware, computer programs and computer games; computer programming services; updating computer software, computer programs and computer games; computer software licensing; scientific and technological services and research and design relating thereto; industrial analysis and research services; cloud computing; consulting in the field of cloud computing networks and applications; rental of operating software for accessing and using a cloud computing network; design and development of operating software for accessing and using a cloud computing network; providing information and advice in relation to the aforesaid services.

The application is accepted for the remaining goods and services.

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.

Anne-Lee KRISTENSEN