Refusal of application for a European Union trade mark

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

Alicante, 14/07/2017

MATHYS & SQUIRE LLP

Abbey House 32 Booth Street

Manchester Lancashire M2 4AB

REINO UNIDO

Application No:	016199424
Your reference:	T15616EU
Trade mark:	i-Function
Mark type:	Figurative mark
Applicant:	I-Function, Inc. 1951 NW 7th Avenue, Suite 300 Miami Florida 33136 ESTADOS UNIDOS (DE AMÉRICA)

1. The Office raised an objection on 30/01/2017 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.

2. After an extension of two months the applicant submitted its observations on 30/05/2017, which may be summarised as follows:

• The mark “i-Function” as a whole has at least the minimum level of distinctive character. It is a non-descriptive, contrived term with more than one meaning represented in a stylised manner.

• The examiner has merely looked up the terms “I” and “function” on dictionary websites and applied a perceived interpretation of the two to all the goods at issue. The examination stops there and lacks any true justification or a real assessment based on the English language.

• There is not a sufficiently direct and specific relationship between the sign and the goods.

• The purchasers will be sufficiently sophisticated consumers to recognise the stylised mark as serving to denote the source of the products.

• The applicant refers to Board of Appeal decisions and case law.

3. 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: Downloadable computer software and computer applications for use in the assessment of skills and skills training for people with cognitive disorders and mild cognitive impairments; downloadable software in the nature of a mobile application that enables users to assess and train skills of people with cognitive disorders and mild cognitive impairments.

The objection is maintained for the remaining goods.

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.

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).

The goods under objection are the following:

Class 9: Computer software; computer application software; downloadable applications for use with mobile devices.

All these computer software and computer application software can be e.g. interactive apps, or relate to the Internet and are directed at both average consumers and the professional public at large. The software and apps have not been specified to any area/s, which means that they include a wide range of software used in a wide range of fields.

As shown in the Notice of grounds of refusal, the abbreviation “I“ stands for “Internet” and “interactive”. This has been confirmed by the Board of Appeal in among others the decision of 14 May 2013, 1173/2012-2, i-area.

As for the word “function” it means, among others, “the function of a computer program or piece of computer equipment”.

More generally the word “function” may also be defined as “the natural action or intended purpose of a person or thing in a specific role” https://www.collinsdictionary.com/ , and “the special kind of activity proper to anything; the mode of action by which it fulfils its purpose” http://www.oed.com/ .

Both average consumers and the professionals public are familiar with these meanings and would therefore when viewing the mark “i-function” as a whole perceive it as an obvious abbreviation for “interactive function” and/or ”internet function”. The mark thus has two meanings, both which are descriptive of the goods.

As indicated in the Notice of grounds for refusal the mark “i-function” as a whole indicates that the software and apps have an “interactive function” or an “Internet function”, e.g. their intended purpose is to enable a computer or mobile device etc. to connect to Internet or that it enables users to be interactive with such devices. Both the terms “interactive function” and “Internet function” are used in a descriptive way in trade. See the following websites:

http://answers.livefyre.com/developers/identity-integration/

Livefyre Apps include rich interactive function like posting a comment, writing a review, or liking content.

https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4114511/

…The smartphone apps bring together the advantages of computer-based and Internet-based smoking cessation interventions. They also overcome their limitations. When there is no Internet connection, the user can still benefit from the computational interactive function and static information in the apps

https://panasonic.net/cns/projector/download/application/whiteboard/

This is a software application that lets you operate interactive function. Requiring no PC installation, it can be started and used
from external memory.

http://www.emassoftware.com/mim.htm

The Ideal Accounting Software

Ideal for Mid end user. MIM Software is powering with internet function. powering your business with MIM Software.

http://www.wayteq.com/wayteq/x960BT.html

WayteQ x960BT

Internet anywhere

…The device comes complete with the Windows CE version of Internet Explorer to freely browse the net. What's more, you can now make use of the Internet function of navigation softwares like Sygic Drive, traffic and weather information.

The goods “computer software; computer application software; downloadable applications for use with mobile devices” are wide terms that include all kinds of software and apps, including those that enable and facilitate interactive and/or Internet functions on computers, mobile devices, smart TVs, etc.

The term “i-function” is composed in accordance with English grammar rules and is an alternative spelling/abbreviation of “interactive function” and “Internet function”. This interpretation is in line with the Office’s practice. See for instance the following marks which were refused: EUTM No. 13251178, i-control, for goods and services in classes 9, 37 and 45, and EUTM No. 14191324, i-PRACTICE, for goods in classes 9, 16 and 41.

The typeface of the mark is not stylized enough to render it distinctive. There is nothing that stands out in the typeface and would lead the relevant consumers to believe that the mark as a whole is an indication of commercial origin.

See the examples in the Office’s Guidelines, Examination, Section 4, Absolute Grounds for Refusal, Chapter 4, 4.2 Assessment of the figurative threshold.

https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/law_and_practice/trade_marks_practice_manual/WP_1_2017/Part-B/04-part_b_examination_section_4_absolute_grounds_for_refusal/part_B_examination_section_4_chapter_4_Descriptive_tm_7-1-c/part_B_examination_section_4_chapter_4_Descriptive_tm_7-1-c_en.pdf

Therefore, the Office cannot find other than that the mark “i-function” as a whole is descriptive and devoid of any distinctive character for the goods at issue.

4. 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 16 199 424 is hereby rejected for the following goods:

Class 9: Computer software; computer application software; downloadable applications for use with mobile devices.

The application may proceed for the remaining goods.

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.

Anne-Lee KRISTENSEN

Enclosures: A copy of the Notice of grounds for refusal, and print-outs of the above cited Internet references, 5 pages.