Refusal of application for a European Union trade mark

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

Alicante, 23/03/2016

URQUHART-DYKES & LORD LLP

Tower North Central

Merrion Way

Leeds LS2 8PA

UNITED KINGDOM

Application No:	15 020 514
Your reference:	T238327EM/AMF
Trade mark:
Mark type:	Figurative mark
Applicant:	CELLHIRE PLC Park House, Clifton Park York YO30 5PB UNITED KINGDOM

The Office raised an objection on 08/02/2016 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 23/02/2016, which may be summarised as follows:

1. The relevant consumers are professionals and specialists.

2. Since data roaming is not a tangible product, but a concept, and the term ‘DATAROAM’ is not an English word, the mark in question is not descriptive.

3. The mark , as a whole, is distinctive enough.

4. The Office has accepted marks including or consisting of the words ‘DATA’ or ‘ROAM’ or ‘a cloud device’.

5. The applicant has enclosed printouts to show how the mark in question is being used as an indicator of origin.

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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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.

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).

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).

With regard to the applicant’s observations, the Office responds as follows:

1. The relevant consumers are professionals and specialists.

The Office cannot agree with the applicant’s argument. As stated in the objection letter of 08/02/2016, regarding some of the goods and services in question, such as telecommunications equipment, telephones, cellular phones, accessories and parts and fittings of these goods, retail services for the abovementioned goods and telecommunication services relating to the abovementioned goods, the relevant public is composed of both average consumers and a professional 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 services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (judgment of 05/12/2002, T‑130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, paragraph 24).

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 (judgment of 12/07/2012, C‑311/11 P, ‘Smart Technologies’, paragraph 48). The Office does not see any valid reasons why, owing to their position as professionals in the sector, the targeted consumers would not perceive the descriptive connotation of the sign. On the contrary, they are likely to perceive that descriptive connotation more immediately than the public at large.

Consequently, the Office finds that the applicant, claiming that the mark serves as an indication of origin, cannot rely on the mere fact that the consumer is a specialist.

2. Since data roaming is not a tangible product, but a concept, and the term ‘DATAROAM’ is not an English word, the mark in question is not descriptive.

The Office cannot agree with the applicant. The intangible nature of the term in question cannot change the perception of the relevant public that the phrase has a clear descriptive meaning in relation to the goods and services for which registration is sought.

Furthermore, the fact that a term is not included in a dictionary does not preclude its descriptiveness. The purpose of a dictionary is not to collect each and every expression that might be used in trade. For example, a dictionary does not list diminutives, superlatives or compound expressions. Terms such as ’the best hair care’, ’tasty hamburger’ or ’fast delivery’, to name a few examples, would be clearly descriptive and lacking in any distinctive character for certain goods and services, and are not found in any dictionary. The same applies to technical dictionaries or any other reference materials.

Given that the mark has a clear descriptive meaning in relation to the goods and services applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

3. The mark, as a whole, is distinctive enough.

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, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

For a trade mark that consists of a neologism or a word produced by a combination of elements to be regarded as descriptive within the meaning of Article 7(1)(c) EUTMR, ‘it is not sufficient that each of its components may be found to be descriptive. The word or neologism itself must be found to be so’ (judgment of 12/01/2005, joined cases T-367/02, T-368/02 and T-369/02, ‘SnTEM’, paragraph 31).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) EUTMR, unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts (see judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32).

The Office has analysed the mark with great care and cannot find anything unusual about the combination of the two descriptive words, ‘DATA’ and ‘ROAM’, and the simple figurative elements that would lead to the creation of a distinctive whole. The Office notes that the expression is composed of English words that, in combination, are entirely meaningful. When perceived in relation to telecommunications and data transmission equipment, telephones, satellite phones, cellular phones and accessories and parts and fittings for these goods in Class 9, the mark immediately informs consumers that these goods can, or are designed to, access digital information by using another operator’s cellular network while in an area in which the network subscribed to is unavailable. In relation to retailing services for telecommunications and data transmission equipment, telephones, satellite phones, cellular phones, accessories and parts and fittings of these goods in Class 35, the mark informs consumers that these services are retailing goods that can access digital information using another operator’s cellular network, especially whilst travelling. Regarding telecommunications and rental services relating to telecommunications and data transmission equipment, telephones, satellite phones, cellular phones, telecommunications and data transmission advisory services, provision of information and analysis of information relating to telecommunications and data transmission services in Class 38, the mark immediately informs consumers that these services are designed to provide access to another operator’s cellular networks to receive information in digital form.

In addition, the figurative elements of the mark consist of a slightly stylised blue cloud containing a blue symbol signifying a telecommunications signal. The blue cloud can be understood as referring to the virtual cloud in which data are stored, and the blue signal conveys the concept of wireless communications. The figurative elements only reinforce the descriptive message of the mark, namely that the goods and services can, or are designed to, access data stored in the virtual cloud using wireless telecommunications. The relevant consumer will perceive the descriptive message immediately. The stylisation is minimal and overshadowed by the semantic message, which is the first thing that consumers will perceive and the information that they will take away. The graphic depiction does not detract from the verbal message; rather, it adds to and reinforces it. The mark as a whole requires no cognitive leap whatsoever in relation to the goods and services to which an objection has been raised. The sign conveys a direct, meaningful and obvious message that is exclusively descriptive within the meaning of Article 7(1)(c) EUTMR and therefore will not be remembered in relation to the goods and services in question.

As the sign is descriptive and the stylisation is subtle, the mark is incapable of constituting a badge of origin. When the verbal element of a mark is descriptive, for that mark to be registrable, the stylisation must be striking enough to divert the consumer’s attention from the non-distinctive message.

The elements of stylisation do not possess any feature, as regards the way in which they are combined, that allows the mark to fulfil its essential function in relation to the goods and services covered by the trade mark application (judgment of 15/09/2005, C 37/03 P, ‘BioID’, paragraph 74).

Therefore, the mark conveys obvious and direct information regarding the kind, characteristics and intended purpose of the goods and services in question.

The meaning of the mark , as a whole, will be clear to any English-speaking consumer, who will immediately and without any difficulty establish a direct and specific link between the mark and the goods and services for which registration is sought.

It is, therefore, the Office’s view that the expression is readily intelligible when taken in conjunction with the goods and services for which registration is sought, and viewed by the relevant consumer, who will see the expression merely as a descriptor of the kind of goods and services in question rather than as an indicator of origin.

4. The Office has accepted marks including or consisting of the words ‘DATA’ or ‘ROAM’ or a cloud device.

As regards the applicant’s argument that comparable registrations have been accepted by 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).

In any event, none of the examples cited by the applicant contains the juxtaposition of terms that constitute the mainstay of the applicant´s argument. It must also be noted that the fact that marks including or consisting of the words ‘DATA’ or ‘ROAM’ or ‘a cloud device’ were registered by the Office does not necessarily mean that, when combined, they will be perceived by the relevant consumer as an indication of commercial origin.

5. The applicant has enclosed printouts that show how the mark in question is being used as an indicator of origin.

The applicant seems to refer to the acquired distinctiveness through use of the mark. However, the applicant has not submitted sufficient evidence to support this argument; therefore, the Office dismisses the argument as unfounded.

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 15 020 514 is hereby rejected for the following goods and services:

Class 9 Telecommunication and data transmission equipment; telephones, satellite phones, cellular phones; accessories and parts and fittings for telecommunication and data transmission equipment; telephones, satellite phones, cellular phones.

Class 35 Retail services relating to telecommunication and data transmission equipment, telephones, satellite photos, cellular phones, accessories and parts and fittings for telecommunication and data transmission equipment, telephones, satellite phones, cellular phones.

Class 38 Telecommunication services, rental services relating to telecommunication and data transmission equipment, telephones, facsimile machines, satellite phones and cellular phones; managing telecommunication and data transmission systems of others; telecommunication and data transmission advisory services; provision of information relating to telecommunication and data transmission services; analysis of information relating to telecommunication and data transmission 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.

Mustafa IMAMOGLU