Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 13/09/2018

LADAS & PARRY LLP

Temple Chambers, 3-7 Temple Avenue

London, EC4Y 0DA

REINO UNIDO

Application No:	017890907
Your reference:	GF/Gronow
Trade mark:	SYSTEMA
Mark type:	Word mark
Applicant:	Brett James Gronow 627 Malvern Road Toorak Victoria 3142 AUSTRALIA

The Office raised an objection on 13/06/2018 pursuant to Article 7(1)(b) and (c) 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 his observations on 17/07/2018, which may be summarised as follows:

1. The words provided by the Office in Bulgarian, Spanish and Italian are not the same as the sign applied for. The Bulgarian word (‘СИСТЀМА’) is written in Cyrillic and therefore not the same as the mark applied for. The Spanish and Italian spelling (‘SISTEMA’) of the word is different from and therefore only allusive to the word ‘SYSTEMA’. The substitution of the letter ‘Y’ for the letter ‘I’ is sufficient to distinguish the mark applied for from the dictionary word in Spanish or Italian.

2. The EUIPO has previously accepted the applicant’s word mark ‘SYSTEMA’ (IR No 990 491) and the word mark ‘Systema’ of another applicant (EUTM No 6 591 119) for similar goods and services.

Pursuant to Article 94 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)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ 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).

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).

A sign ‘is only distinctive for the purposes of Article 7(1)(b) EUTMR if it may be perceived immediately as an indication of the commercial origin of the goods or services in question, so as to enable the relevant public to distinguish, without any possibility of confusion, the goods or services of the owner of the mark from those of a different commercial origin’ (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 20; and 03/07/2003, T‑122/01, Best Buy, EU:T:2003:183, § 21).

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).

1. As regards the applicant’s argument that the Bulgarian word provided by the Office is written in Cyrillic and is therefore not the same as the mark applied for, the word ‘SYSTEMA’ is a transliteration in Latin script of the Bulgarian word ‘СИСТЀМА’ written in the Bulgarian (Cyrillic) alphabet. According to the case-law of the General Court, Article 7(1)(c) EUTMR also applies to transliterations. As stated in the judgment of 16/12/2010, T‑281/09, Chroma, EU:T:2010:537, § 34, transliterations of Greek words into Latin characters must be treated in the same way for the purpose of examining absolute grounds for refusal as words written in Greek characters and vice versa. This is because the Latin alphabet is known to Greek-speaking consumers. The Office applies the same principle to the Cyrillic alphabet, which is used in the EU by Bulgarians, who are also very well acquainted with Latin characters and are able to read them. Bulgarians are regularly exposed to goods/services bearing trade marks in Latin characters. The Latin alphabet is used to such an extent that it is highly unlikely that there are any Bulgarians who are unable to read Latin characters. Therefore, the relevant Bulgarian-speaking consumer would understand the sign ‘SYSTEMA’ as having the same meaning as ‘СИСТЀМА’.

With regard to the Spanish and Italian spelling (‘SISTEMA’) of the word ‘SYSTEMA’, words can be considered descriptive or non-distinctive even if they do not follow usual grammatical rules. This is supported by numerous decisions of the Boards of Appeal and the General Court, for example in relation to the signs ‘Easi-Cash’ (20/11/1998, R 96/1998-1) and ‘HIPERDRIVE’ (22/05/2014, T‑95/13, Hiperdrive, EU:T:2014:270, § 33-42). As a rule, misspellings endow a sign with a sufficient degree of distinctive character when they are striking, surprising, unusual, arbitrary and/or capable of changing the meaning of the word element or require some mental effort from the consumer in order to make an immediate and direct link with the word that they supposedly refer to. The Office submits that there is no such element present in the sign ‘SYSTEMA’. The letters ‘Y’ and ‘I’ are phonetic equivalents in Spanish and Italian and therefore the Spanish- and Italian-speaking consumers in the Union would immediately think of the word ‘SISTEMA’ when encountering the sign applied for.

Consequently, the Office maintains that the relevant consumers would perceive the sign as providing the information that the goods in Class 9 (computer software programs and tools for different purposes, computer operating system programs) are sets of rationally linked programs that perform some functions as a whole (e.g. allow a user of a system to analyse customer purchasing habits). In relation to the services in Class 35 and Class 42, the relevant consumer would perceive the sign as providing the information that these services are provided using computer systems (i.e. the different business services) or are intended to design, develop, analyse, update or maintain the computer systems (e.g. software as a service, design and development of a software program, development of systems architecture). Therefore, the sign describes the kind and intended purpose of the goods and services in question.

Given that the sign has a clear descriptive meaning, it is also devoid of any distinctive character under Article 7(1)(b) EUTMR, as it is incapable of performing the essential function of a trade mark, which is to distinguish the goods or services of one undertaking from those of other undertakings.

2. As regards the applicant’s argument that similar registrations have been accepted by the 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).

The marks mentioned by the applicant were registered almost 10 years ago. The practice of the Office has evolved over the years.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and Article 7(2) EUTMR, the application for European Union trade mark No 17 890 907 is hereby rejected for all the goods claimed.

According to Article 67 EUTMR, you have a right to appeal against this decision. According to Article 68 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.

Stanislava MIKULOVA