Refusal of application for a European Union trade mark

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

Alicante, 28/06/2016

MAPA TRADEMARKS

Henao, 7 - 5ª planta

E-48009 Bilbao (Bizkaia)

ESPAÑA

Application No:	014989321
Your reference:
Trade mark:	Space Systems Engineering
Mark type:	Word mark
Applicant:	Space Systems Engineering, Inc. 1906 El Camino Real Menlo Park, STE 201 California CA94027 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised a partial objection on 17/02/2016 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.

The applicant submitted its observations on 14/43/2016, which may be summarised as follows:

1. The applicant, after having conducted searches in several dictionaries, claims that that there were no entries for ‘Space systems’ as such but only as separate entries, (Annexes I, II and III, IV). Therefore, the sign applied for ‘SPACE SYSTEMS ENGINEERING’ does not immediately convey to consumer an obvious and direct information on the goods/services in question (Judgement dated 9^th October 2002, Case T-360/00, UltraPlus; Case T-359/99 DKV v OHIM (EuroHealth) (2001) ECR II-1645, paragraph 35; Case T-24/OO Sunrider v OHIM (Vitalite (2001) ECR II-449, paragraph 24; Case T-87/00 Bank für Arbeit und Wirtscahft v OHIM (EASYBANK) (2001) ECR II-1259, paragraph 31);

2. Even if the Free Dictionary definition is taken as such, the applicant argues that there is no reason to refuse the sign applied for ‘SPACE SYSTEMS ENGINEERING’ for goods and services such as ‘software’, ‘marketing’, as the relevant section of the public would not associate it directly and without further reflection with a definite and direct association with ‘software’ and ‘marketing services’, (Court of First Instance (Second Chamber), 7^th June 2001, Case T-359/99 Eurohealth), thus drawing reference to indeterminate and vague relationship between the word and the financial services.

3. The applicant draws attention to similar trade mark registrations: ‘CASH POINTS’ EUTM No.14277057, ‘AEROFRAME’ EUTM No. 14396436, ‘MINILAB’ EUTM No. 14437891, which were considered non-descriptive and suitably distinctive.

4. The applicant refutes that it is not necessary for a sign to be original or fanciful in order to establish it as having sufficient distinctive character for registration.

5. Further, the applicant draws attention on the fact that the Applicant is a company incorporated in the United States under the name Space Systems Engineering Inc. as well as to the EUTM ‘RocketSpace’ belonging to Rocket Space Inc. being registered and published on March 7, 2016, in classes 9, 16, 35, 36, 38, 41, 42, 43 & 45 (annex V).

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 services’ 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).

Considering the applicant’s first argument, the Office claims that there is nothing new or unusual in the sign ‘SPACE SYSTEMS ENGINEERING’ which represents a mere combination of the elements of which it is composed, conveying obvious and direct information regarding the kind and intended purpose of the goods and services in question. Furthermore, as already stated in the Objection letter dated 17/02/2016, the mark conveys a clearly descriptive message since it would be immediately recognised that the goods concerned are intended to be used in, or to support, the application of scientific and mathematical principles to space systems, as well as services in question relate to, or are intended for, space systems engineering.

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore 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.)

Moreover, in the same paragraphs of this argument the applicant quotes Case Law, which altogether relates to cases found be too vague and indeterminate to render the sign descriptive, such as Euro health, UltraPlus. Nevertheless, the sign applied for, without any further examination, is clearly found descriptive. As already mentioned in the objection letter and above, the relevant public would still read and understand that the goods and services, also including goods as ‘software’, or ‘marketing services’, among others, offered under the sign ‘SPACE SYSTEMS ENGINEERING’ plainly have to do with software that enable space engineering systems, spacecraft manufacturing and associated industries and related marketing services.

Furthermore, the relevant public consists of a specialised professional public (engineers) with an extensive knowledge of the subject of space engineering systems. The specialist public will be aware that ‘SPACE SYSTEMS ENGINEERING’, as also some following extracts from the internet demonstrate:

PLM Software for Space Systems Engineering - Engineering solutions to manage spacecraft development and realization processes at lower cost and decreased risk(…) Space systems engineering capabilities have the potential to help achieve industry goals and propel the state of the art for spacecraft into a new era (https://www.plm.automation.siemens.com/en_us/aerospace-defense/space-systems/ ).

Streamlining the development of complex engineering systems..has been developing space systems and providing services of specialised scientists and engineers for most European missions in Earth observation, human spaceflight and science. - See more at: (http://www.rheagroup.com/space-systems-engineering/#sthash.CDwycJVz.dpuf )

Fundamentals of Engineering Space Systems I-The participants gain a deep understanding of systems quality assurance and implementation as they design and develop an actual spacecraft prototype.(…) With a strong systems engineering context, topics will include fundamentals on astrodynamics, power systems, communications, command and data handling, thermal management, attitude control, mechanical configuration, structures, as well as techniques and analysis methods for remote sensing applications. (https://ep.jhu.edu/programs-and-courses/675.401-fundamentals-of-engineering-space-systems-i )

Continuing Education: Space Systems Engineering: space systems engineering have provided training for professional engineers in the spacecraft manufacturing and associated industries spacecraft, including spacecraft manufacturers, insurers and satellite operators from many different countriesworld-wide. (http://www.southampton.ac.uk/engineering/cpd/courses/space_systems_engineering.page )

Considering other similar registrations being filed, the Office argues that the previous acceptances of the application for the marks ‘UltraPlus’, ‘MINILAB’, ‘CASH POINTS’, ‘AEROFRAME’ are not relevant to the present case, since these applications are not at issue and cannot be considered in an assessment of the merits of this application. Furthermore, they cannot be compared to the trade mark at issue since the goods and services referred to are neither similar nor are the trademarks. It is well-established practice to consider each new application on the basis of the specific circumstances of the case, on its own merits and not by reference to other applications.

As regards the applicant’s argument that a number of similar registrations 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).

Regarding the argument that the mark applied for possesses at least minimum degree of distinctiveness, the Office here reiterates that the sign ‘SPACE SYSTEM ENGINEERING’ is only a mere combination of three plain elements easily understood by the relevant public, conveying obvious and direct information regarding the kind and intended purpose of the goods and services in question. The ‘absence of distinctive character cannot arise merely from the finding that the sign in question lacks an additional element of imagination or does not look unusual or striking’ (judgment of 05/04/2001, T‑87/00, ‘EASYBANK’, paragraph 39).

It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

Finally, as the applicant draws attention to the fact that the company is incorporated in the United States under the name Space Systems Engineering Inc., the Office cannot concur with this notion as the sign is plainly descriptive. In addition, an abbreviation Inc. of the legal form of a company cannot add to the distinctiveness of an already descriptive sign. Moreover, a trademark is not only a name, but property which is generally used to brand a certain good or service and has a value in itself. Therefore, when a company name or a surname coincides with a conceptual meaning that is descriptive for the goods and services at issue, registration as a company name or a surname cannot eliminate the descriptive meaning. The assessment according to Article 7(1)(c) CTMR is to be based on the sign’s perception by the relevant public by way of a prognosis. Any use of the sign as a trade name or trade mark by the applicant can only be taken into consideration in the framework of Article 7(3) CTMR (see decision of 12 February 2014, R 111/2013- 4, “HALLOUMIS HALLOUMI”). Therefore, the relevant consumer will immediately and without further mental effort understand the combination of words “SPACE SYSTEMS ENGINEERING” as descriptive of the quality of the goods and services in question.

Furthermore, the plain, direct and unambiguous message conveyed by the mark is apparent as the mark lacks of any secondary or covert meaning or of fanciful/stylized elements that could divert the consumer’s attention from the descriptive and nondistinctive message conveyed by the verbal elements.

The applicant failed to provide any evidence in order to prove that the trademark applied for possesses inherent distinctiveness for the relevant public, as he claimed in his observation. It is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (judgment of 05/03/2003, T‑194/01, ‘Tablette ovoïde’, paragraph 48).

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’ (judgment of 27/02/2002, T‑79/00, ‘LITE’, paragraph 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (judgment of 15/09/2005, T‑320/03, ‘LIVE RICHLY’, paragraph 65).

For the abovementioned reasons, and pursuant to Article 7(1)(b), (c) and 7(2) EU TMR, the application for Community trade mark No 14 989 is hereby rejected for the following goods and services:

Class 9: Computer software platforms; Software for computers; Software for satellite navigation systems; Satellites; Satellites for scientific purposes; Scanners [data processing equipment].

Class 35: Marketing services;

Class 42: Software as a service (Saas), Platform as a services (Paas), Hosting platforms on the Internet, Programming of software for Internet platforms; Hosting of platforms on the Internet; research services (Scientific), product research, technological research, industrial research, technical research; product development, software design and development; design services, product design.

The application is accepted for the remaining services.

Class 35: Brand positioning, Brand testing, Brand strategy services, Brand positioning services, Brand creation services, Brand evaluation services, Brand creation services (advertising and promotion).

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 989 321 is hereby rejected for the goods and services claimed.

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.

Gordana TRIPKOVIC