Refusal of application for a European Union trade mark

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

Alicante, 01/02/2017

Pia Amin

Grejsdalen 1, Nyborg 5800

DK- Nyborg

DINAMARCA

Application No:	015738214
Your reference:
Trade mark:	RISK TRACKER
Mark type:	Word mark
Applicant:	Pia Amin Grejsdalen 1, Nyborg 5800 DK- Nyborg DINAMARCA

The Office raised an objection on 22/08/2016, pursuant to Article 7(1)(b) and (c) and 7(2) EUTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character for all the goods and services applied for. The objection letter is attached.

The mark applied for is RISK TRACKER and is considered objectionable for all the goods and services claimed, namely:

Class 9 Financial management software; Computer software for producing financial models; Computer software relating to financial history; Computer software relating to the handling of financial transactions; Computer programmes relating to financial matters; Application software for cloud computing services; Software; Interface software; Software drivers; Packaged software; Community software; Computer software; Computer software [programmes]; Computer software programs; Internet access software; Business technology software; Computer application software; Operating system software; Computer software applications; Downloadable computer software; Credit screening software; Software for debt recovery; Mobile device management software; Cloud network monitoring software; Computer software downloaded from the internet; Computer application software for mobile phones; Downloadable application software for smart phones; Communication software for connecting computer network users; Communication software for connecting global computer networks.

Class 36 Financial investments; Arranging of financial investments; Financial consultancy services relating to investments; Advisory services relating to financial investments; Financial analysis services relating to investments; Providing information and analysis via the Internet in the field of financial investments; Counterparty risk management; Risk management [financial]; Insurance risk management; Credit risk insurance; Financial risk management; Risk management consultancy [financial]; Financial risk management services; Credit risk insurance [factoring]; Financial risk assessment services; Investment risk assessment services; Advisory services relating to [financial] risk management; Financial research in the field of risk management; Financial consultancy in the field of risk management; Financial management of risk capital, investment capital and development capital.

The applicant submitted its observations on 17/10/2016 which may be summarised as follows:

• The applicant requests amendment of the goods and services under Classes 9 and 36 in order to clarify the nature of the goods and services.

• The applicant disagrees with the assertion that the mark is descriptive and requests withdrawal of the assertion on the basis that the mark is at least suggestive of the goods and services in light of the proposed classification amendment and otherwise.

• Multistage reasoning is required to deduce that the applied-for mark and the goods and service’s bear any relation.

• If one must exercise mature thought or follow a multistage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.

• It is well established that a mark is merely descriptive if it immediately describes the ingredients, qualities, or characteristics of the goods or services or if it conveys information regarding a significant function, purpose, or use of the goods or services” (Article 7(1)(b) EUTMR).

• It is commonly accepted that a minimum degree of distinctiveness suffices, it must also be taken into account that in order to be distinctive as a European trade mark, the mark must be distinctive with regard to the European Union as a whole.

• RISK TRACKER cannot be considered descriptive especially in light of the amended goods and services.

• RISK TRACKER does not immediately describe a financial software or services, as would be required if the mark were descriptive instead of suggestive.

• The mark is susceptible to multiple connotations, and requires imagination, cogitation, or gathering of further information in order for the relevant public to perceive any significance of the mark as it relates to a significant aspect to applicant’s goods and services.

• A relevant consumer shall probably relate RISK to “risk of life, limbs, war, flood, etc.

• Likewise TRACKER can be perceived as “Someone who tracks down game, hunter, huntsman, etc.

• The mark has a double entendre with respect to the applied-for goods and services, and therefore, even if one of the mark’s meanings could be characterized as descriptive, the mark as a whole should not be refused registration.

• The Board and the courts have held that a double entendre mark is suggestive, and entitled to registration.

• Article 7(1)(c) EUTMR does not apply to those terms which are only suggestive or allusive as regards certain characteristics of the goods.

• RISK TRACKER has a double meaning that would be readily apparent from the mark itself. On one hand, it may describe a risk tracking characteristics, but it is not inherently clear if the ‘risk’ is financial only as it could be implied as physical risk, mental risk and/or generally of any other sorts.

• In light of the amendments made to the goods and services in Classes 9 and 36, the mark is suggestive and not descriptive.

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.

At the outset it is important to note that following the applicant’s request the Office hereby confirms that the list of goods and services originally applied for have been restricted as instructed. As a result, the list of goods and services of this application have now been amended and read as follows:

Class 9 Computer application software; Application software for cloud computing services; Fiscal management software; Downloadable computer software; Credit screening software; Software for debt recovery.

Class 36 Financial consultancy in the field of business management, financial management of capital, investment capital and development capital; Financial investments; Financial consultancy services relating to investments; Advisory services relating to financial investments; Providing information and analysis via the Internet in the field of financial investments; Financial research in the field of venture management.

However, the applicant is informed that after giving due consideration to the requested limitation the Office is of the opinion that it fails to overcome the original objection contained in the Notice of Refusal. Therefore, despite the above limitation and after giving due consideration to the applicant’s arguments filed in support of the subject mark in regards to the limited goods and services, the Office remains of the opinion that the mark is not eligible for registration under Article 7(1)(b) and (c) and Article 7(2) EUTMR for the reasons previously given.

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 which underlies 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 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 October 2003, Case C-191/01P, OHIM (EUIPO) /WM. Wrigley JR. Company (DOUBLEMINT), ECR I-12447, § 31).

Furthermore, 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’, § 34).

In the present case, the objectionable goods and services covered by the mark applied for are specialised goods and services, mainly aimed at a professional public. In view of the nature of the goods and services in question, the awareness of the relevant public will be high.

Moreover, since the mark applied for consists of English language words, the relevant public with reference to which the absolute ground for refusal must be examined is the English language-speaking consumer in the Union (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 27/11/2003, T-348/02, Quick, EU:T:2003:318, § 30).

To reiterate, the Office remains of the opinion that taken as a whole, the word RISK TRACKER immediately informs consumers without further reflection that the goods and services are directly concerned with tracking, e.g. through a process of measurement and analysis, the risk associated with a financial/investment decision losing or not increasing in value. Therefore, the mark consists essentially of an expression that conveys obvious and direct information regarding the kind, characteristics and intended purpose of the goods and services in question, this remains the case despite the newly limited goods and services submitted by the applicant. The combined words the expression consists of provides a straightforward and clear message in relation to the goods and services concerned and as such there is nothing abstract about the expression RISK TRACKER as its semantic content, in relation to the relevant goods and services is quite obvious.

The Office confirms that the above reasoning applies equally to all the newly limited goods and services claimed, and as such, it is not necessary for the Office to provide an explanation to the objection on a good by good, service by service basis, it is sufficient for the applicant to note that the objection raised and the reasoning provided in support of the objection applies equally to all the contested goods and services (as amended).

Consequently, the Office confirms that it remains of the opinion that contrary to what the applicant says, the term RISK TRACKER is indeed descriptive of the kind and intended purpose of the goods and services at issue.

The words in the mark applied for are presented in a sequence that is intellectually meaningful. Therefore, there is no doubt that the relevant consumer will not perceive it as unusual but rather as a meaningful expression in relation to the goods and services concerned. Furthermore, the term RISK TRACKER is not sufficiently ambiguous or fanciful in order to require a measure of interpretation, thought or analysis by the relevant consumer in relation to the goods and services at issue. As a result, despite the fact that the goods and services have been limited, the Office remains of the opinion that the message conveyed by the mark is remains clear, direct and immediate to the relevant public, within the financial sector, and in relation to all the goods and services, as amended, on the basis that it is not vague in any way, nor does it lend itself to different interpretations, nor is it akin to an allusive fanciful sign in relation to the goods and services concerned.

The Office notes the applicant’s comments that the mark is in fact susceptible to multiple connotations, requiring imagination, cogitation, or gathering of further information in order for the relevant public to perceive any significance of the mark, however, the Office cannot agree with the applicant’s viewpoint. It is important for the applicant to note that 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, emphasis added).

Thus, the Office remains of the viewpoint that the words contained in the sign, namely RISK TRACKER, will be understood by the relevant specialist/professional consumer in the financial sector in a descriptive sense rather than as an indicator of sole trade origin. The mark comprises of two common English words, namely ʻriskʼ and ʻtracker’, accordingly, it is reasonable to believe that the relevant consumer would not require a high degree of sophistication to make a sufficiently clear link between the mark and the goods and the services at issue and perceive the descriptive message of the mark. No other interpretation is reasonably open to the relevant public in the context of the goods and services concerned. Indeed, the mark not only directly embodies a sensible meaning in relation to the goods and services in question, it is a combination of words that might profitably be employed for such goods and services. It should be observed that under Article 7(1)(c) EUTMR, a mark must be refused registration where, as in this instance, the indications composing the mark may be used to designate the goods and services in question. It is thus not necessary that the signs and indications composing the mark are currently in use (12/01/2005, T-367/02 - T-369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 40 and the case-law therein cited).

It has to be put forward that as a main rule the mere combination of descriptive terms remains essentially descriptive. The only exception is where the unusual nature of the combination of word elements creates an overall impression which is sufficiently far removed from that produced by the mere combination of its constituent elements, thereby making the resulting compound term more than the mere sum of its parts (19/04/2007, C-273/05 P, Celltech, EU:C:2007:224, § 76,78).

The goods and services concerned would tend to be directed at a professional/specialist public and as such this relevant public would undertake the relevant purchase/use of the goods and services concerned with a higher than average level of care and attention. That said, there is no evidence to suggest that the relevant consumer in the area of the goods and services concerned would be particularly trade mark ‘educated’ or savvy and would instantly perceive the words RISK TRACKER as a trade mark in relation to the contested goods and services rather than as a descriptive message in relation to the characteristics and/or intended purpose of the goods and services.

Furthermore, on a similar note, it must be held that the fact that the relevant public is a professional/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 public is, by definition, higher than that of the average consumers carrying out everyday purchases, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist/professional (judgment of 12/07/2012, C-311/11 P, ‘Smart Technologies’, § 48).

In addition the Office reaffirms that as the sign RISK TRACKER also lacks any distinctive character in relation to the contested goods and services it therefore also falls foul of Article 7(1)(b) EUTMR, not only because the mark lacks distinctiveness (12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 86), but also because, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods and concerned.

In conclusion, the argument in the present case concerns whether RISK TRACKER can be registered as a trade mark for the contested goods and services claimed in Classes 9 and 36 in view of the terms of Article 7(1)(b) and (c) [EUTMR]. This therefore is essentially a matter of determining what meaning the expression is likely to convey to a relevant consumer of those goods and services, in particular the English-speaking consumer. The Office is of the viewpoint that the objection has been fully explicated. Thus, the Office confirms, for the reasons already given, that the mark RISK TRACKER conveys obvious and direct information regarding the kind and intended purpose of the goods and services in question. Whilst it is noted that the applicant does not agree with this viewpoint, the Office has to put forward that when the mark RISK TRACKER is used in connection with the contested goods and services it is reasonable to accept that the relevant consumer is highly likely to perceive the expression in a descriptive sense rather than as a badge of sole trade origin.

Consequently, for the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 15 738 214 is hereby rejected for all the goods and services claimed (as amended), namely:

Class 9 Computer application software; Application software for cloud computing services; Fiscal management software; Downloadable computer software; Credit screening software; Software for debt recovery.

Class 36 Financial consultancy in the field of business management, financial management of capital, investment capital and development capital; Financial investments; Financial consultancy services relating to investments; Advisory services relating to financial investments; Providing information and analysis via the Internet in the field of financial investments; Financial research in the field of venture management.

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.

Sam CONGREVE