Refusal of application for a European Union trade mark

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

Alicante, 09/12/2016

ABB AB

Charlotta Selander

Forskargränd 7

721 78 Västerås

Sweden

Application No:	015493711
Your reference:	5734EU
Trade mark:	COLLABORATIVE OPERATIONS
Mark type:	Word mark
Applicant:	ABB AS P.O. Box 94 N-1375 Billingstad NORUEGA

The Office raised an objection on 22/06/2016 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 21/10/2016, which may be summarised as follows:

1. ‘COLLABORATIVE OPERATIONS’ is not a mere word mark but a slogan, a play on words ‘giving “operations” a “mind” to choose “collaboration”’. The mark makes consumers see operations from a new perspective.

2. The distinctiveness of a trademark must be assessed in relation to the goods and services for which protection is sought. ‘Being “collaborative” demands a form of intelligence and mind not (yet!) being included in our computer and machines’. It is thus naturally impossible for the word ‘COLLABORATIVE’ to describe the goods applied for in Class 9. Likewise, this term cannot be descriptive in relation to the services applied for in Class 38 given that these are provided by devices and machines. Similarly, the word ‘OPERATIONS’ refers to something made by humans ‘… we believe the Examiner is mixing the words “operations” with “operating” which indeed a machine always is doing.’

3. ‘COLLABORATIVE OPERATIONS’ is distinctive.

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.

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 (16/09/2004, C‑329/02 P, SAT/2, EU:C:2004:532, § 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.

(23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

Bearing in mind the foregoing, it is, therefore, necessary to establish whether, in the mind of the relevant consumers, the sign ‘COLLABORATIVE OPERATIONS’ is descriptive of the characteristics of the goods and services applied for or whether it is reasonable to assume that that might be the case in the future (12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 56).

As far as the relevant public is concerned, as already stated in the provisional refusal, the objectionable goods and services covered by the mark applied for comprise both everyday consumption goods and services and specialised goods and services and are aimed at both average consumers and a professional public.

Moreover, since the mark ‘COLLABORATIVE OPERATIONS’ is composed of English words, the relevant public with reference to which the absolute ground for refusal must be examined is the English-speaking consumer in the EU.

Next, it must be borne in mind that how the relevant public perceives a trade mark is influenced by the consumers’ level of attention, which is likely to vary according to the category of goods or services in question. In view of the nature of the goods and services applied for, and as mentioned in the provisional refusal, the awareness of the relevant public will range from average to high.

As regards the sign applied for, it must be recalled that as already indicated in the notice of grounds for refusal:

The trade mark consists of the words ‘COLLABORATIVE OPERATIONS’ with the following meanings:

COLLABORATIVE Adjective ‘1. Produced by or involving two or more parties working together: collaborative research.’

(Information extracted from Oxford Dictionaries, on 22/06/2016 at http://www.oxforddictionaries.com).

OPERATIONS Noun ‘1. The action of functioning or the fact of being active or in effect. 1.1 An active process; a discharge of a function. 3 3 [often with adjective or noun modifier] An organized activity involving a number of people.’

(Information extracted from Oxford Dictionaries, on 01/06/2016 at http://www.oxforddictionaries.com).

The relevant consumer will understand the words as a meaningful expression: active processes or organized activities produced by or involving two or more parties working together.

[…]

Taken as a whole, the words ‘COLLABORATIVE OPERATIONS’ immediately inform consumers without further reflection that the goods and services applied for are or are intended for active processes or organized activities produced by or involving two or more parties working together.

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

1. As regards the applicant’s first argument, the Office notes that from the above it is clear that the Office did not claim that the trade mark in question is a promotional or laudatory slogan but rather that the mark is descriptive because the link between the words ‘COLLABORATIVE OPERATIONS’ and the goods and services referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) EUTMR and Article 7(2) EUTMR.

Furthermore, even if the Office could accept the applicant’s argument that the trade mark applied for could be used or perceived as a slogan, the message conveyed by the verbal element is clear and indisputable, namely that the goods and services for which registration is sought are or are intended for active processes or organized activities produced by or involving two or more parties working together. Therefore, the applicant’s claim does not take away from the issue of mere descriptiveness since it is the meaning that purchasers or users of the goods and services are likely to see that counts and the intention of the applicant in itself cannot be deemed to change the perception of the public of the mark applied for.

In this respect it should be noted that the examination of a trade mark should be based on objective criteria and that the alleged intentions of the applicant (e.g. to humanise operations and trigger the consumers’ mind) can have no bearing on the assessment of a mark in respect of absolute grounds for refusal pursuant to Article 7 EUTMR.

2. As regards the applicant’s second argument, the Office fully agrees that the distinctiveness (and descriptiveness) of a sign must be assessed not in the abstract but with reference to the specific goods and services applied for.

The applicant submits that although all the goods and services of concern are used actively and in processes the mark cannot be considered to describe any of their characteristics since being objects (like machines, apparatus, instruments and devices) and not human beings or services provided by machines they cannot be qualified as been collaborative.

The Office does not share the applicant’s view. It is a well know fact that technological advances (in electronics, microprocessors, software, etc.) have considerably influenced for example the industrial and home automation areas over the past years. Smart technology allows the creation (in all areas) of networks of ordinary, physical objects equipped, for example, with sensors and actuators that have the capacity to observe and collect information about their environments and then share that data with each other and any other device or person connected, for example, to the Internet (see Annex 1 for purely illustrative purposes).

From the above it is evident that notwithstanding the fact that a machine, an apparatus, instrument or any other device of the type applied for in Class 9 (e.g. forming part of systems which are designed with the capacity of artificial intelligence) is not a human being, it may still interact with humans or other devices and may thus also be described as collaborative.

In this respect it is noted that human-machine collaborative systems or collaborative robots allowing human-machine interaction or interaction between different devices are nowadays a reality in many areas, including industrial automation, as can be seen in the documents included in Annex 2 for purely illustrative purposes.

Furthermore, contrary to what is the applicant seems to believe, the definition submitted in the notification of 22/06/2016 corresponds to the definition of the word ‘OPERATION’ and not of the word ‘operating’. According to said definition the word designates, amongst others, the ‘action of functioning or the fact of being active or in effect. 1.1 An active process’. From these definitions it is clear that the use of this word is restricted to designate actions performed by human beings.

Having regard to the particular goods for which protection is sought in Class 9, which include, amongst others, electric installations for the remote control of industrial operations; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programsremote control apparatus; electric installations for the remote control of industrial operations; surveying apparatus and instruments; switchboards; switches, electric, the Office considers that these goods can be specifically designed for use in active processes involving two or more parties working together (e.g. as a collaborative network or part of it).

Likewise, as regards the services in Classes 37, 38 and 42, including building construction; building construction supervision; installation, maintenance and repair of computer hardware; electric appliance installation and repair; machinery installation; telecommunications Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; computer software design; installation of computer software; maintenance of computer software; updating of computer software; computer system design; computer virus protection services; computer software consultancy; consultancy in the field of energy-saving; computer system design; industrial design; consultancy in the field of energy-saving; engineering; industrial design; installation of computer software; scientific laboratory services; maintenance of computer software; monitoring of computer systems by remote access; oil prospecting; research and development for others, just to cite a few, it is considered that all these services can be qualified as active processes involving two or more parties working together or, at the very least, that the purpose of all these services is to provide active processes involving two or more parties.

Therefore, when the mark is applied to the above indicated goods and services it conveys obvious and direct information regarding their kind and/or intended purpose.

Thus, contrary to the applicant’s contention, the expression ‘COLLABORATIVE OPERATIONS’ is particularly suitable to describe desirable characteristics of the goods and services applied for.

3. As regards the applicant’s argument that ‘COLLABORATIVE OPERATIONS’ is perfectly well adapted to performing a trade mark function, it is noted that given that the mark has a clear descriptive meaning in relation to the goods and services for which protection is sought, 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.

Consequently, the relevant consumers will be incapable of perceiving the sign as a commercial identifier belonging to a particular supplier. They will see it as only an informative statement. They will focus only on the inherent meaning of the expression rather than on its function as a trade mark.

Due to the impression produced by the mark as a whole, the connection between the relevant goods and the mark applied for is not sufficiently indirect to endow it with the minimum level of inherent distinctiveness required under Article 7(1) (b) CTMR.

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 15 493 711 is hereby rejected.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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.

Isabel DE ALFONSETI HARTMANN

Annex 1

Relevant information retrieved from the internet on 09/12/2016 at the indicated addresses.

Smart Technology refers to systems designed with the capacity of artificial intelligence, i.e. software or hardware that has the ability to observe, and make decisions, based on the environment around them via complex algorithms and information processing databases.

https://hpectechtrends.wordpress.com/category/6-smart-technology/

Annex 2

Relevant information retrieved from the internet on 09/12/2016 at the indicated addresses.

Traditional robot manipulators are prohibitively costly for many small lot manufacturing entities (SMEs) companies to due to their rapidly changing assembly lines and aging equipment with highly variable performance. We aim to simplify robot integration, improve efficiency of collaborative industrial robot systems, and enable their application in complex, dynamic environments.

Our CoSTAR system provides a powerful visual programming interface to a broad range of robot capabilities. We demonstrated the power of this system at the KUKA Innovation Award competition at Hannover Messe 2016, where we won a €20,000 prize over 25 other entrants and 5 other finalist teams.

(emphasis added)

http://cirl.lcsr.jhu.edu/research/human-machine-collaborative-systems/

With the increasing demand of the manufacturing industry, there's a need to expedite output production per day. However, man alone cannot produce enough products in such a high speed manner, that's why companies are looking at hiring 'Cobots' or the collaborative machines who can work side by side with humans.

(emphasis added)

http://www.natureworldnews.com/articles/21824/20160509/cobots-collaborative-machines-can-work-with-people-in-assembly-and-production.htm

http://www.emeraldinsight.com/doi/abs/10.1108/01439910310473915

We're on the Job

Where can you use a smart, collaborative robot? Just about anywhere. The unequalled versatility of our robots make them a perfect fit for a wide range of industries and applications. If you’ve got a process (or ten) in need of automation, we’ve got a robot for you

(emphasis added)

http://www.rethinkrobotics.com/applications-industries/

9.1. What Is a Collaborative System?

A collaborative system is one where multiple users or agents engage in a shared activity, usually from remote locations. In the larger family of distributed applications, collaborative systems are distinguished by the fact that the agents in the system are working together towards a common goal and have a critical need to interact closely with each other: sharing information, exchanging requests with each other, and checking in with each other on their status. In this chapter, we'll consider a collaborative system as one that is also distinguished by a certain level of concurrency; i.e., the agents in the system are interacting with the system and with each other at roughly the same time. So a chat session is collaborative, because all of the agents involved need to coordinate with each other to be sure that the chatters don't miss anyone else's comments. An email system isn't collaborative, because each email client simply wants to be sure that its messages get to the right server, and eventually to the intended recipient. A particular email client doesn't care about the state of any other client, and doesn't need to coordinate with any of them in order to accomplish its goal.

(emphasis added)

Chapter 9. Collaborative Systems

http://docstore.mik.ua/orelly/java-ent/dist/ch09_01.htm