Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)]

Alicante, 26/08/2019

LAWDIT SOLICITORS

29 Carlton Crescent

Southampton

Hampshire

SO15 2EW

REINO UNIDO

Application No:	018039517
Your reference:	MJC.SOT.R24/9
Trade mark:	safelogin
Mark type:	Figurative mark
Applicant:	Rochen Limited 11 Dudhope Terrace Dundee DD3 6TS REINO UNIDO

The Office raised an objection on 13/05/2019 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 03/06/2019, which may be summarised as follows.

1. The examiner has assessed the mark on the basis of its individual components rather than the overall impression that the mark creates. The mark needs to be considered as a whole. The average consumer does not proceed to analyse various details of a mark.

2. The word ‘SAFELOGIN’ is not found in any English dictionary and does not have any particular meaning in the minds of English speakers. When the mark is spoken aloud, English speakers will run the phonetic elements together, stressing the first syllable, and not enunciate the word elements separately. The word ‘SAFE’ is not descriptive for the majority of the goods and services. While their provision may involve a ‘protect[ion] from or no[n] expos[ur]e to danger or risk’ on the part of the supplier, it does not follow that the word itself is descriptive of the end product, that is to say, the goods and services themselves.

3. The word ‘LOGIN’ is not descriptive for the goods and services at hand as the meaning is too vague and unspecific. It is not obvious how some of the goods and services in Classes 9, 38 and 42 could be considered being related to ‘an act of logging in to a computer, database or system’ (or a ‘login’). In order to understand the meaning of the words ‘SAFE’ and ‘LOGIN’ as described by the examiner, in relation to the goods and services applied for, the average consumer would require some further explanation or a process of further thought or imagination would be needed.

4. The mark is sufficiently stylised, as it is written in a bold red colour with an italicised lowercase typeface. The threshold of distinctiveness is not high and the mark in question is sufficiently distinctive for registration.

5. The Office is obliged to follow the principles of equal treatment, transparency and competent administration and take into account the decisions already taken in respect of similar applications. The following earlier EUTM registrations are referred to: EUTM No 12 947 115 Easy Login; EUTM No 7 577 265 SAFE LOG; EUTM No 2 122 182 SIGNTRUST; EUTM No 8 780 371 MY LOGIN; EUTM No 16 860 471 LOGIN WITH MY BANK YES; EUTM No 909 135 SAFE GUARD; and EUTM No 939 702 SAFE CALL.

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)(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).

Indeed, and as the applicant correctly pointed out in its observations of 3/6/2019, the assessment of descriptiveness needs to be based on how the relevant consumer perceives the sign as a whole in relation to the goods and services for which the protection is sought. Even though marks that are made up of several components must be assessed as a whole, 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).

The mark applied for contains the conjoined word elements ‘SAFE’ and ‘LOGIN’. Contrary to what the applicant claims, the Office has not only examined the individual components of the mark but also assessed the mark as a whole in relation to the goods and services applied for, with a focus on the overall impression conveyed by all its constituent elements together.

The Office holds that there is nothing unusual about the combination of the word elements ‘SAFE’ and ‘LOGIN’ in the mark applied for. Therefore, the word elements, taken as a whole, are only a sum of their non-distinctive and descriptive parts (12/02/2004, 06/06/2019, R 344/2019‑2, Polywrap (fig.); 12/02/2004, C‑363/99, Postkantoor, EU:C:2004:86, § 100; 12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 41). The Office is of the opinion that the overall impression of the expression ‘SAFELOGIN’ is not sufficiently far removed from that produced by the mere combination of its constituent elements and therefore does not make the resulting compound term more than the mere sum of its parts.

The relevant public consists of not only the general public, but also a professional public. The Office notes that the average consumer’s attention is likely to vary according to the category of goods in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25-26).

In the present case, taking into account the goods and services at hand, the part of the relevant public consisting of the general public are deemed to be at least reasonably well-informed, observant and circumspect. The professional public have a level of attention that is usually high and they will pay a greater degree of attention when purchasing the goods and services in question.

The Office is not convinced that the relevant public would not pay sufficient attention to the details of the mark to perceive it as an expression informing that the relevant goods have a protected login system or are intended for such goods and that the services in Classes 38 and 42 are intended for providing a protected login (e.g. into a database or system). It must be borne in mind that, although average consumers normally perceive a mark as a whole and do not engage in an analysis of its various details, the fact remains that, when perceiving a word sign such as that in the present case, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51).

As regards the applicant’s claim that the term ‘SAFELOGIN’ cannot be found from any dictionary, 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).

Furthermore, the Office has provided in its letter of objection dated 13/5/2019 the definitions for the word elements of the mark, namely ‘SAFE’ and ‘LOGIN’. The mark as a whole is immediately intelligible to English speakers as a meaningful expression, even if the relevant consumer runs the phonetic elements together, as the applicant claims.

Moreover, the absence of a space between the two elements composing the sign applied for does not amount to evidence of any creative aspect capable of distinguishing the applicant’s goods and services from those of other undertakings (13/11/2008, T‑346/07, Easycover, EU:T:2008:496, § 52 and case-law cited).

As regards the applicant’s comments that it is not obvious in what way the term ‘LOGIN’ is descriptive for certain goods and services, the Office does not agree with the applicant’s analysis. For downloadable computer application software for mobile phones, namely, software for security and private browsing in Class 9, it may be true that the goods in question do not require an act of logging in but, as the Office stated in its letter of objection, with respect to these goods the mark would inform the relevant consumer of the intended purpose of these goods. The same holds true for VPN [virtual private network] hardware and VPN [virtual private network] operating software in Class 9. Insofar as providing virtual private network (VPN) services, namely, private and secure electronic communications over a private or public computer network in Class 38 and computer security services for protection against illegal network access; provision of security services for computer networks, computer access and computerised transactions; data security services [firewalls]; computer security system monitoring services; data security services in Class 42 are concerned, the mark would also inform that the services at hand are for providing a protected login into, for example, a database or a system.

Furthermore, it is on the basis of that acquired experience that the Office submits that the relevant consumers would perceive the trade mark sought as ordinary and not as the trade mark of a particular proprietor. Since the applicant claims that the trade mark sought is distinctive, despite the Office’s analysis based on the abovementioned experience, it is up to the applicant to provide specific and substantiated information to show that the trade mark sought has distinctive character, either intrinsically or acquired through use, since it is much better placed to do so, given its thorough knowledge of the market (05/03/2003, T‑194/01, Soap device, EU:T:2003:53, § 48).

Following the above, the Office does not agree with the applicant that the relevant public would require any further explanation or further mental steps to understand the mark as having the meaning provided when the mark is used in relation to the goods and services applied for.

As regards the figurative elements of the mark, comprising of the italicised typeface in red lowercase letters, these elements are of such a simple nature that they do not affect the aforementioned assessment of the word elements (12/05/2016, T‑32/15, MARK1 (fig.), EU:T:2016:287, § 43; 11/07/2012, T‑559/10, Natural beauty, EU:T:2012:362, § 25-27).

Furthermore, contrary to the applicant’s claim, the figurative elements in question do not endow the mark with any distinctive character. The use of colours and stylised typeface is common in promotion and advertising of goods and services in the relevant market. It is also worth remembering that even though it is acknowledged that signs with a low degree of distinctive character pursuant to Article 7(1) EUTMR are eligible for registration, a distinction must be made between signs which possess only a low degree of distinctive character and accordingly have a limited scope of protection and those which are devoid of any distinctive character.

The use of the sign the applicant refers to (annex 1) shows the word(s) with a distinctive element and this is not the EUTM applied for.

As regards the applicant’s argument that a number of similar registrations have been accepted by the Office, the Office notes that none of these registrations is identical to the mark applied for. In addition, one of the trade marks the applicant refers to in his observations, namely EUTM No 12 947 115 ‘EASY LOGIN’, was partially refused for various goods in Class 9 as the application was caught by one of the absolute grounds for refusal.

Furthermore, 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 also 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).

It is undeniable, as the applicant correctly noted, that the Office has the duty to exercise its powers in accordance with the general principles of EU law and that, when assessing an application for registration of an EU trade mark, it must take into account the decisions already adopted concerning similar requests and consider particularly carefully whether or not to make a similar decision. Nevertheless, the way in which the principles of equal treatment and sound administration are applied must be reconciled with compliance with the law. Accordingly, anyone seeking to register a sign as a trade mark may not plead, in their own favour, any illegal act committed for the benefit of others, in order to ensure an identical decision.

Moreover, for reasons of legal certainty and sound administration, the assessment of any application for registration must be stringent and complete in order to prevent trade marks being improperly registered. That assessment should be carried out on a case-by-case basis. Indeed, registration of a sign as a trade mark depends on the specific criteria applicable in the factual circumstances of each particular case to ascertain whether the sign in question is caught by a reason for refusal (10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 73-77; 15/09/2005, C‑37/03 P, BioID, EU:C:2005:547).

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 18 039 517 is hereby rejected for all the goods and services 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.

Päivi Emilia LEINO