Refusal of application for a European Union trade mark

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

Alicante, 28/03/2017

BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE

Postfach 10 71 27

D-28071 Bremen

ALEMANIA

Application No:	015873607
Your reference:	H12256EU
Trade mark:	INDUSTRIAL CLOUD ALLIANCE
Mark type:	Word mark
Applicant:	Honeywell Limited 3333 Unity Drive Mississauga Ontario L5L 3S6 CANADÁ

The Office raised an objection on 07/10/2016 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, after the granted extension, submitted its observations on 03/02/2017, which may be summarised as follows:

1. The trade mark applied for cannot be regarded as descriptive and is not lacking distinctiveness, as there is not a clear relationship between the meaning of the mark and the services for which registration is sought.

2. The trade mark applied for is composed of several elements that may individually be devoid of distinctive character but when combined are distinctive.

3. The word ‘CLOUD’ has more than one meaning according to the cited Cambridge Dictionary and can be used in various contexts; therefore, the nature of the services remains vague. The meaning of the word ‘INDUSTRIAL’ is also unclear when considered in relation to the services for which registration is sought; therefore, in Class 42, it has to be considered vague or allusive. The word ‘ALLIANCE’ refers to a group of people or agreement but does not refer to the services in Class 42.

4. The combination of words in the trade mark applied for, ‘INDUSTRIAL CLOUD ALLIANCE’, is not grammatically correct, so the meaning and the message is unclear; therefore, the mark applied for is distinctive.

5. The Office has already accepted several similar marks containing the word ‘CLOUD’, for example registrations No. 6 868 533, No. 13 896 618, and No. 12 140 158.

6. The internet hits regarding the trade mark applied for do not contain any instances of ‘INDUSTRIAL CLOUD ALLIANCE’ as a whole, but rather show single elements of the trade mark applied for.

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.

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).

The marks referred to in Article 7(1)(b) EUTMR are, in particular, those that do not enable the relevant public ‘to repeat the experience of a purchase, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition of the goods or services concerned’ (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26). This is the case for, inter alia, signs commonly used in connection with the marketing of the goods or services concerned (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 65).

In response to point 1) 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 Office refers to the communication of 07/10/2016 in which it was stated that the mark conveys information only regarding the kind and intended purpose of providing the services for which registration is sought. Furthermore, 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 for 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).

Furthermore, it is clear from case-law that the Office may carry out a general examination for each category of goods or services only if the goods or services are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (see judgment of 12/04/2011, T-28/10, ‘Euro Automatic Payment’, paragraph 57). This is clearly applicable to the present case, since it is described by the sign in question, that consultation services in the field of development can be stored, managed and processed online, therefore applies to all the services for which registration is sought.

In response to point 2) Since the trade mark at issue is made up of several words, for the purposes of assessing its distinctive character it must be considered as a whole. The Office maintains its opinion that the relevant consumer will immediately understand that mark applied for, in connection with the relevant consultation services, designates the development of cloud solutions. Therefore, the mark applied for cannot indicate the commercial origin of the services in question.

In response to point 3) For a trade mark to be refused 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32, emphasis added).

All of the definitions provided by the Office were extracted from Collins Online Dictionary, which is an acknowledged reference source. It gives as a definition of the word ‘CLOUD’ the following: ‘(modifier) of or relating to cloud computing: a cloud application’. This immediately informs consumers that information related to the services in question is stored in a network of remote servers and is available to manage and process online. The word ‘CLOUD’, may also be defined as a ‘method of running application software and storing related data in central computer systems and providing customers or other users with access to them through the Internet’ (see Encyclopaedia Britannica, http://global.britannica.com/technology/cloud-computing, as cited in decision of 23/07/2012, R 0242/2012-4, ‘MOBILECLOUD’, paragraph 16). Depending on its configuration, apart from the mere technical outsourcing of applications and/or data a cloud may also enable new forms of collaboration between the cloud’s users. In a professional context, this may not be confined to the users of a single company but may constitute a platform for various stakeholders, for instance of different companies working in alliance on a project (decision of 19/05/2014, R 1478/2013-2, ‘CLOUDPT’, paragraph 15; decision of 09/06/2015, R 1499/2014-2, ‘CLOUDGUARD’, paragraph 32).

The word ‘CLOUD’ not only is used by IT experts and other professionals, but has also entered into common parlance, particularly in the wake of the widespread use of smartphones, which can transmit personal data to a cloud. This is also reflected in the number of recent decisions of the Boards of Appeal that have addressed applications encompassing the word ‘CLOUD’ (07/06/2012, R 2619/2011-1, ‘CloudPlus 10’; decision of 17/10/2013, R 1041/2013-4, ‘PROJECTCLOUD’; 23/07/2012, R 242/2012-4, ‘MOBILECLOUD’; 06/03/2014, R 1854/2013-1, ‘MARKETINGCLOUD’).

The Office maintains its opinion that the definitions of the other two words of the mark in question, ‘INDUSTRIAL’ and ‘ALLIANCE’ are clear and understandable in connection with the services for which registration is sought.

Therefore, given that the mark has a clear descriptive meaning in relation to the 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.

In response to point 4) There is no element of fancifulness or any unusual combination of words in the mark applied for that might require some effort, such as grammatical analysis, by the consumers before they will understand its meaning in relation to the services in question. Even if the expression ‘INDUSTRIAL CLOUD ALLIANCE’ is grammatically or linguistically wrong, all of the individual elements that constitute the mark will be understood by the relevant public. As such, the trade mark is not considered an unusual combination of words. With this in mind, the concepts conveyed are not vague, but explicit, and cannot be considered surprising or unusual for the relevant consumers.

In response to point 5) As regards the applicant’s argument that a number of similar 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 (15/09/2005, C‑37/03 P, BioID, EU:C:2005:547, § 47; and 09/10/2002, T‑36/01, Glass pattern, EU:T:2002:245, § 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’ (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 67). In any event, the fact that the Office might, in error, have registered similar or identical trade marks in the past does not oblige it to continue to register trade marks similar or identical to them if those trade marks are descriptive. Decisions relating to descriptiveness and distinctiveness depend to an extent on the evaluation in an individual case. Furthermore, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and comprehensive, in order to prevent trade marks from being improperly registered. Accordingly, such an examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (21/11/2012, T-338/11, ‘PHOTOS.COM’, paragraph 69). Moreover, the Office points out that the cited EUTMs have different verbal elements, and are registered for different lists of goods and services from the mark in question. Therefore, the comparison is not appropriate.

In response to point 6) With regard to the internet searches, the Office considers that internet examples might be useful when evaluating the lack of distinctiveness of a word or a mark. Even if it is uncommon to use the expression ‘INDUSTRIAL CLOUD ALLIANCE’ as a whole in relation to the services for which registration is sought, all the results of the Google search showing the individual elements of ‘INDUSTRIAL CLOUD ALLIANCE’ were connected to the applicant’s services. For the Office to refuse to register a trade mark under Article 7(1)(b) EUTMR, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or services in question. The lack of prior use cannot automatically indicate such a perception’ (15/09/2005, T-320/03, ‘LIVE RICHLY’, § 88).

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. 15 873 607 is hereby rejected for all the services:

Class 41 Consultation services for the development of cloud based solutions.

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.

Petra CHARUZOVÁ

Enclosure: 4 pages