Refusal of application for a European Union trade mark

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

Alicante, 22/07/2016

BOEHMERT & BOEHMERT Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte

Kurfürstendamm 185

D-10707 Berlin

ALEMANIA

Application No:	015039324
Your reference:	D75055EU
Trade mark:	ActiveTrack
Mark type:	Word mark
Applicant:	SZ DJI Technology Co., Ltd. 6/F, HKUST SZ IER Building, No. 9, Yuexing 1st Road, South District, Hi-Tech Park Shenzhen, Guangdong Province 518057 REPÚBLICA POPULAR DE CHINA

The Office raised an objection on 09/02/2016 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 10/05/2016, which may be summarised as follows:

1. The applicant argues that the term ‘ActiveTrack’ as such does not exist in the English language and that the separate parts of the trade mark have various meanings. The trade mark would be a lexical invention not commonly used for designating the goods and services or their essential characteristics.

2. The applicant also argues that even when the trade mark might allude to an objective message, it remains unclear which message this is. The trade mark can therefore not be considered to be devoid of any distinctive character.

3. The applicant does not agree with the total refusal of all the goods and services for which registration is sought, without a statement of reasons in respect of each of those goods and services. According to the applicant, the Office should not have applied a general reasoning for objecting to all the goods and services for which registration is sought, now the goods and services have no sufficiently direct and specific link to each other to the point that they form a sufficiently homogenous category in order to allow a general reasoning.

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 waive the objection for the following goods:

Class 9 Balancing apparatus; Batteries, electric; Computer memory devices; Downloadable music files; Flight simulators for aircraft.

The objection is maintained for the remaining goods/services.

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).

The Office does not share the applicant’s submission that the trade mark applied for provides no direct and immediately descriptive meaning in relation to the objectionable goods and services.

In order for a European Union trade mark to be refused on the basis of Article 7 EUTMR, it is sufficient if a ground of non-registrability exists in one Member State of the European Union (Article 7(2) EUTMR). Since the sign is composed of English words, it is sufficient that the non-registrability exists only in the English-speaking Member States, namely Ireland, Malta and the United Kingdom.

In the notice of preliminary refusal, the Office set out that the trade mark consists of the words with the following meanings:

ACTIVE ‘moving or tending to move about vigorously or frequently; working; operative’¹; ‘marked by vigorous activity’²

TRACK ‘to follow the trail of (a person, animal, etc.); to follow the flight path of (a satellite, spacecraft, etc.) by picking up radio or radar signals transmitted or reflected by it; (of a camera or camera operator) to follow (a moving object) in any direction while operating’³

The relevant consumer will understand the words as a meaningful expression: to follow a path or trail in a vigorous manner.

The distinctive character and descriptiveness or a trade mark must be assessed in relation to the goods and services for which registration is sought. In the present case, the objectionable goods consist of tracking devices (and components/accessories therefor) and of vehicles that can be used for tracking. The objectionable services consist of computer and technical services that can be used for tracking.

In relation with those goods and services, the words ‘ActiveTrack’ immediately inform consumers without further reflection that the goods and services applied for are used for tracking the paths or trails of persons or machines (such as vehicles), whether or not making use of radio or radar signals, thus conveying obvious and direct information regarding the intended purpose of the goods or of rendering of the service of the goods and services in question.

With regard to the applicant’s argument that the term ‘ActiveTrack’ as such does not exist in the English language and that the separate parts of the trade mark can have several meanings, the Office would like to point out the following.

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.)

It is … irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of [Article 7(1)(c) EUTMR] does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially.

(See judgment of 12/02/2004, C‑363/99, ‘Koninklijke KPN Nederland’, paragraph 102.)

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.)

In the same sense, an analysis of the term in question in the light of the relevant lexical and grammatical rules is also useful (judgment of 30/11/2004, T‑173/03, ‘NURSERYROOM’, paragraph 21).

In the present case, the combination of the two elements means nothing else than the sum of its elements, namely track in an active manner. The trade mark does not require any interpretative effort whatsoever from the side of the relevant consumer in order to understand its meaning and perceive a direct and specific link with the objectionable goods and services. Even if the words ‘ActiveTrack’ are presently not commonly used in the relevant market for designating the goods and services or their characteristics, there is no difference between the neologism and the mere sum of its parts which would allow for the neologism to create 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.

Neither does the Office agree with the applicant’s argument that, even if the trade mark would allude to an objective message, it would remain unclear which message this would be. On the contrary, the trade mark conveys obvious and direct information regarding the intended purpose of the objectionable goods and services, namely that they are meant to be used for tracking (in an active manner).

With regard to the applicant’s submission that the scope of the objection is too broad and that the examination has to be carried out in relation to each of the services specified individually, it should be pointed out that, according to established case-law, the examination of the grounds for refusal laid down in Article 7 EUTMR has to be carried out in relation to each of the goods and services for which trade mark registration is sought, as the applicant has correctly pointed out. A decision refusing registration of a trade mark must, in principle, state reasons in respect of each of those goods and services. Nonetheless, the Court has confirmed that, where the same ground of refusal is given to a category or group of goods or services, the competent authority may use only general reasoning for all of the goods and services concerned (judgment of 15/02/2007, C 239/05, ‘THE KITCHEN COMPANY’, paragraph 38).

In the present case, the Office agrees that the scope of the objection in its preliminary refusal was too broad. The objection has therefore been partially waived. However, the Office decided to maintain the objection for all the goods (including components and accessories) and services that are meant to be used for tracking, in line with the explanations above regarding the direct and obvious information conveyed by the trade mark.

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 15 039 324 is hereby rejected for the following goods/services:

Class 9 Altimeters; Antennas and aerials as components; Audio- and video-receivers; Automatic pilots; Azimuth instruments; Camera mounts; Cameras [photography]; Communications equipment; Computer peripheral devices; Computer programs [downloadable software]; Computer software; Computer software development tools; software and applications for mobile devices; Computers; Data processing apparatus; Downloadable image files; Downloadable video files; Electronic navigational and positioning apparatus and instruments; Navigation, guidance, tracking, targeting and map making devices; Flight controlling apparatus; GPS navigation device; Inertial navigational instruments; Integrated circuits; Laser detectors; Lasers; Measuring apparatus; Navigational instruments; Printed circuits; Radar apparatus; Remote control apparatus; satellite navigational apparatus; Sensors and detectors; Software Development Kit [SDK]; Sonars; Sound recording apparatus; Speed checking apparatus for vehicles; Speed measuring instruments; Speed controllers [electronic]; Speed indicators; Stereoscopes; Tilting heads [for cameras]; Vehicle radios; Video cameras; X-ray apparatus not for medical purposes; Gyroscopes; Wearable computer peripheral devices; Wearable activity trackers; Heat sensors; barometers; Control modules (Electric or electronic -).

Class 12 Vehicles for locomotion by land, air, water or rail; Air vehicles; Aircraft; Aircraft fuselages; Aircraft landing gear; Aircraft landing gear wheels; airplanes; Drone; Civilian drones; Military drones; Electric vehicles; electrically powered aircraft; gyrocopters; helicopters; Parachutes; propeller blade protectors for aircraft; propellers for air vehicles; Remote control vehicles, other than toys; rotor blades for helicopters; Screw-propellers; structural parts for airplanes; structural parts for gliders; structural parts for helicopters; tilt rotor aircraft; Tires, solid, for vehicle wheels; unmanned aerial vehicles [UAVs]; Vehicle chassis; Vehicle wheels.

Class 42 Computer diagnostic services; data recovery services; Computer programming; Computer software consultancy; Computer software design; Consultancy in the design and development of computer hardware; Conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Programming of software for e-commerce platforms; Constructing an internet platform for electronic commerce; development and testing of computing methods, algorithms and software; Electronic data storage; hosting of digital content on the internet; Hosting platforms on the Internet; installation, maintenance and repair of computer software; updating of computer software; Off-site data backup; Providing search engines for the internet; Surveying; Computer hardware and software consulting services; Technical research; Troubleshooting of computer hardware and software problems.

The application is accepted for the remaining goods:

Class 9 Balancing apparatus; Batteries, electric; Computer memory devices; Downloadable music files; Flight simulators for aircraft.

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.

Kaat SCHEERLINCK