Decision on the inherent distinctiveness of an application for a European Union trade mark

(Article 7 EUTMR)

Alicante, 28/11/2019

WYNNE-JONES IP LIMITED

2nd Floor, 5210 Valiant Court Gloucester Business Park

Gloucester Gloucestershire GL3 4FE

REINO UNIDO

Application No:	18 030 523
Your reference:	RLB/MT/TM8088EU00
Trade mark:	ICEBOT
Mark type:	Word mark
Applicant:	JCAI Inc. 2355 Derry Road East, Suite 45 Mississauga Ontario L5S 1V6 CANADÁ

The Office raised a partial objection on 04/04/2019 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 its observations on 06/06/2019, which may be summarised as follows:

1. Request for limitation of the list of goods

2. Descriptiveness/distinctive character of the sign and its’ verbal elements

3. Similar marks registered by the Office

4. Claim of acquired distinctiveness through use under art. 7(3) EUTMR

On 21/06/2019, the Office requested the applicant to clarify its’ claim under art. 7(3)

EUTMR whether being a principal or a subsidiary claim. Accordingly, on 08/07/2019

the applicant confirmed its’ claim under art. 7(3) EUTMR as intended to be a

subsidiary claim.

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.

The applicant reserved the right to submit further observations in respect of the inherent distinctiveness if the objection is maintained by the Office. However, as the Office´s decision is based on the arguments raised in its notice of grounds for refusal of 04/04/2019 upon which the applicant has availed of the opportunity to present its observations, made on 06/06/2019, the Office cannot find any justifiable reason for granting another opportunity to submit further observations. Thus, the request cannot be met.

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

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1. Request for limitation of the list of goods

Applicant´s remarks

The applicant requests to remove the term ‘industrial robots’ in class 7 from the list of goods.

Office´s comments

According to the request from the applicant, the Office has amended the list of goods, and the list of goods objected to by the Office now reads as follows:

Class 7 Air-craft de-icing and snow removal machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely aircraft de-icing, aircraft snow removal, de-icing preparations for aircrafts, aircraft ice and snow conditions, and atmospheric information.

2. Descriptiveness/distinctive character of the sign and its’ verbal elements

General remarks on Article 7(1)(c) EUTMR

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).

General remarks on Article 7(1)(b) EUTMR

Under Article 7(1)(b) EUTMR, ‘trade marks which are devoid of any distinctive character’ are not to be registered.

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).

Applicant´s remarks

The Office is of the view that “the English speaking consumer, namely a professional in the field of aviation and/or aircrafts would understand the sign as having the following meaning, namely an ice [removal] robot and/or a software agent in relation to [risk of] ice/de-icing.” Thus the sign describes the intended purpose of the objectionable goods. The applicant disagrees with the Office’s assertions and refute them in totality.

Ad verbal element ‘ice’

The goods in class 7 are both for the removal of ice, and for the removal of snow. No reference is made to this process of removal, or to ‘de-ice’ as mentioned within the specification. ICE alone fails to identify the intended purpose of the goods. It is also clear that it does not identify any other characteristic of the goods.

The objectionable goods included in class 9 are computer software products. The connection between a frozen liquid and these goods is far removed. Even where the software products make some reference to de-icing, the inclusion of the three letters ICE within the mark gives no reference to the intended purpose, or any other characteristic of the class 9 products, which are software for data analysis for mining, analysis and display of data in the field of vehicle operation and maintenance. The use of ICE cannot be said to have any relation to the following goods:

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely atmospheric information.

The following goods also make no reference to ICE, and would not be fit for purpose in relation to ICE:

Class 7 Air-craft snow removal machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely aircraft snow removal, aircraft snow conditions.

Ad verbal element ‘bot’:

In some instances the use of the word BOT may refer to a type of robot or type of system. However, BOT is also a common suffix in many English words such as turbot (a type of fish), burbot (a type of fish), talbot (a breed of dog aml), abbot (the head of an abbey of monks), manbot (a fine to be paid), sabot (a type of shoe).

The sign seen as a whole

The Office has erred particularly in relation to the assessment of the sign as a whole. The sign ICEBOT is a made up word with no dictionary definition. The sign is a unique term coined by the applicant, and has no formal or informal meaning within the English language. The consumer would need to go through multiple steps to derive any form of meaning from the mark. There is no additional relevance of the sign to the group of professionals identified by the Office. The professional nature of the consumer will amplify the uniqueness and unusualness of the sign, made up word with no clear technical meaning, in a field where precision and detail is key.

The Office fails to explain how the consumer will immediately perceive, without further thought that the intended purpose of the goods is:

“.. a professional in the field of aviation and/or aircrafts would understand the sign as having the following meaning, namely an ice [removal] robot and/or a software agent in relation to [risk of] ice/de-icing”. The meaning is neither direct nor specific, and the Office has stretched the meaning of the individual elements of the marks unnaturally.

The definitions provided by the Office give no indication that the objectionable goods removes ice from aircrafts, or indeed performs any type of ice removal; or that the objectionable goods are management applications or software in relation to de-icing apparatus in or machinery.

The sign is a made up word coined by the applicant, taking both thought and imagination. The sign is playful and unique and the meaning of the mark is not direct or specific. The sign in the context of the objectionable services serves to intrigue and make an impression in the mind of the relevant consumer; thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent acquisition.

In case the Office maintains its’ objection in respect of the full list of goods, it is requested that the Office lifts the objection in respect of the goods with no mention of ice, as follows:

Class 7 Air-craft snow removal machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely aircraft snow removal, aircraft snow conditions, and atmospheric information.

Office´s comments

The sign at issue, ‘ICEBOT’, has to be assessed, seen as a whole, in relation to the goods at issue which after the deletion of ‘industrial robots’ in class 7 as requested by the applicant are the following:

Class 7 Air-craft de-icing and snow removal machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely aircraft de-icing, aircraft snow removal, de-icing preparations for aircrafts, aircraft ice and snow conditions, and atmospheric information.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (19/09/2001, T-118/00, Tabs (3D), EU:T:2001:226, § 59).

Therefore, the Office remains of the position that the sign ‘ICEBOT’, - composed of the word ‘ice’, meaning ‘frozen water or freezing liquid water’, and the word ‘bot’ in the sense of ‘a software program accomplishing some task autonomously once triggered’ - will be perceived by the relevant professional public as straightforward information about the goods in class 7 - air-craft de-icing and snow removal machinery - with the necessary software applications and software programs in class 9 for information retrieval and information processing, namely data monitoring of the same anti-/de-icing and snow removal apparatus and machinery with transmission of data to a remote-controlled measuring station (a computer/a mobile phone/a smart phone, etc.). This transmission or processing of data concerns particularly atmospheric information such as precipitation intensity of snow, icy or freezing rain, atmospheric icing (when water droplets freeze on objects, it can be particularly dangerous to aircrafts as the built-up ice changes the aerodynamics of the flight surfaces), visibility, air temperature, etc. De-icing is the process of removing snow, ice or frost from a surface which means that ice and snow removal are two sides of the same coin and cannot be artificially separated the one from the other as suggested by the applicant. The term for the goods in class 7 – air-craft de-icing and snow removal machinery – also confirms the dual, implicit function of the goods. Moreover, reference can be made to the following link from various aviation and airport authorities regarding aircraft maintenance, comprehending removal of snow and ice:

https://www.airport-technology.com/features/winter-is-coming-five-innovative-snow-removal-technologies-at-airports/

https://www.aopa.org/news-and-media/all-news/2015/february/12/clear-snow-and-ice-for-a-safe-departure

https://www.faa.gov/airports/resources/advisory_circulars/index.cfm/go/document.current/documentNumber/150_5220-20

Therefore, the sign, in relation to the goods at issue, describes the kind and quality – being aircraft de-/anti-icing equipment and snow removal machinery – together with the necessary data monitoring and data control systems and software, including measuring atmospheric icing and precipitations with the intended purpose of subsequent removal of snow and ice from aircraft surfaces and airport runways.

As regards the applicant´s argument that the sign ‘icebot’ does not appear in an English dictionary, in casu ‘Oxford Living Dictionaries’, and regarding the applicant´s argument that the verbal element ‘bot’ – apart from meaning a type of robot or a type of system – also can be used as a suffix in English words with various meanings, 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 (23/10/2003, C 191/01 P, Doublemint, EU:C:2003:579, § 32).

Moreover, as to the applicant´s argument that the sign can have several meanings, the Office asserts that the fact that the sign at issue can have several meanings, and that it ma be perceived as playful, does not suffice to make it distinctive. Those various elements only make that sign distinctive in so far as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s goods, and so as to enable the relevant public to distinguish, without any possibility of confusion, the applicant’s goods from those of a different commercial origin (15/09/2005, T-320/03, Live richly, EU:T:2005:325, § 84).

Based on the above-mentioned reasoning, the Office maintains its’ position that the sign ‘ICEBOT’, taken as a whole, is descriptive and devoid of any distinctive character, and is not capable of distinguishing the goods to which an objection has been raised within the meaning of art. 7(1)(b) and (c) and art. 7(2) EUTMR.

3. Similar marks registered by the Office

Applicant´s remarks

The Office has previously set a precedent that the English speaking consumer will be able to identify marks ending in the ‘BOT’ suffix as a sign of commercial origin, rather than a description of the goods registered. Examples hereof are the following:

EUTM no REPRESENTATION

• 5 577 978 SWATBOT

• 7 433 725 PACKBOT

• 9 618 414 ROTABOT

• 8 689 549 SENSIBOT

• 14 406 292 HANDIBOT

• 16 148 521 CELLBOT

• 17 896 084 COOKIEBOT

• 17 941 337 LEAFBOT

• 17 962 415 Envirobot

Office´s comments

As regards the applicant’s argument that a number of 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).

The mere fact that the Office once registered a similar or identical trade mark - even in error – does not entitle to make a claim for subsequent registration. In addition it is clear that the market, the perception of the consumers and, moreover, the practice of the Office could have changed during that period. The Court of Justice is also aware of this market and practice evolution and have stated 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).

4. Subsidiary claim of acquired distinctiveness through use under art. 7(3) EUTMR

Applicant’s remarks

In case the Office maintains its’ objection in respect of the inherent distinctive character of the sign, the applicant reserves its rights to present the Office with evidence of acquired distinctiveness, being a subsidiary claim.

Office´s comments

As stated below in this communication, once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon art. 7(3) EUTMR and art. 2(2) EUTMIR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 030 523 is declared to be descriptive and non-distinctive pursuant to Article 7(1)(b) and (c) in the English-speaking territory of the European Union for the following goods claimed, namely:

Class 7 Air-craft de-icing and snow removal machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely aircraft de-icing, aircraft snow removal, de-icing preparations for aircrafts, aircraft ice and snow conditions, and atmospheric information.

The application may proceed for the remaining goods, namely:

Class 7 Aircraft servicing and maintenance machinery.

Class 9 Computer, mobile phone, smart phone, and tablet software applications for the collection, data mining, analysis and display of data in the field of vehicle operation and maintenance, namely, aircraft maintenance, aircraft servicing, aircraft repair, aircraft flight instruction and aircraft flight simulations.

According to Article 66(2) EUTMR, you have a right to appeal against this decision which does not terminate the examination proceedings. 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

Once this decision has become final, the proceedings will be resumed for the examination of the subsidiary claim based upon Article 7(3) EUTMR and Article 2(2) EUTMIR.

Finn PEDERSEN