Refusal of application for a European Union trade mark

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

Alicante, 26/09/2016

MARKS & CLERK LLP

1 New York Street

Manchester M1 4HD

REINO UNIDO

Application No:	015011505
Your reference:
Trade mark:	DELIBERATE INNOVATION
Mark type:	Word mark
Applicant:	INTERACTIVE INTELLIGENCE, INC. 7601 Interactive Way Indianapolis, Indiana 46278 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 10/02/2016 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 15/06/2016, which may be summarised as follows:

1. The average consumer would not view the trade mark in isolation but in relation to the goods and services for which registration is sought. The mark ‘DELIBERATE INNOVATON’ might be descriptive of research and development services, but it is not directly descriptive of the goods and services in question, such as computer software in relation to voice and data communication, the provision of temporary access to such software and technical support in relation to such software. None of these goods or services would be perceived as related to or intended for ‘deliberate innovation’. The relevant consumers would not purchase the goods and services for deliberate innovation but to manage voice and data communications. Therefore, the trade mark applied for is highly fanciful in relation to the goods and services in question, and does not convey any obvious or direct information regarding the intended purpose of those goods and services.

2. Given that the goods and services for which registration is sought do not relate to the mark ‘DELIBERATE INNOVATION’, the mark will be perceived by the relevant public as a distinctive sign indicating the commercial origin of the goods and services in question.

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.

‘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).

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T 118/00, ‘Shape of a product for washing machines or dishwashers’, paragraph 59).

It is also 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).

Furthermore, 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 (judgment of 23/10/2003, C 191/01 P, ‘Wrigley’, paragraph 31).

The applicant argues that the mark ‘DELIBERATE INNOVTION’ is not descriptive of the goods and services for which registration is sought, since the relevant consumers will not make a sufficiently direct and specific association between the mark applied for and the goods and services in question. In this regard, the Office is still of the view that the goods and services for which registration is sought, namely, software for combining, integrating and controlling internal/external communications, and related technical support services, etc., are directly related to or intended for ‘deliberate innovation’ in an organisation, specifically in its communication systems, even though the goods and services in question do not include research and development services within Class 42.

Contrary to the applicant’s argument, the relevant consumer, which, in this case is usually a company or organisation, will purchase the goods and services in question, expecting them to contribute its intentional innovation or support such innovation in its communication systems.

Therefore, the relevant consumers will not perceive the mark, ‘DELIBERATE INNOVATION’, as a designation of the source of the applicant’s goods and services, but, rather, will perceive it as a description of the characteristics of the goods and services in question.

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 15 011 505 is hereby rejected for all 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.

Youngmin GOO