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

(Article 7 EUTMR)

Alicante, 08/07/2020

APPLEYARD LEES IP LLP

15 Clare Road

Halifax, West Yorkshire HX1 2HY

REINO UNIDO

Application No:	018081804
Your reference:	T38619EM42/DXM
Trade mark:	BLOCKIT
Mark type:	Word mark
Applicant:	GA Telesis, LLC 1850 NW 49th Street Fort Lauderdale Florida 33309 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 31/10/2019 pursuant to Article 7(1)(b) and Article 7(2) EUTMR because it found that the trade mark applied for is devoid of any distinctive character for the reasons set out in the attached letter.

The applicant submitted its observations on 05/03/2020, which may be summarised as follows:

1. The relevant public will have a higher-than-average degree of attention when purchasing the services in question. These software services are designed to facilitate the safe exchange of information, including the transfer of money electronically between individuals, companies, or between individuals and companies. Given the sensitivity and importance of such a transaction, the relevant consumer will pay a higher degree of attention when choosing which undertaking to use to facilitate this transaction. Consequently, the relevant consumer will have a higher-than-average degree of attention, carefully assessing the source of the service and will, therefore, more readily pick up on unusual aspects of a trade mark.

2. The applicant disagrees with the Office’s conclusions that the mark is devoid of distinctive character or that the mark will be perceived as a merely laudatory message highlighting positive aspects of the service offered, namely that it blocks a virus or a Trojan. They also disagree with the meaning provided in the notice of grounds for refusal.

3. The applicant argues that its software service is concerned with the exchange of information, that it ensures that both the sender and the receiver receive the wire transfer details securely, and that the software is focused specifically on the transfer of information, ensuring that the information does not fall into the wrong hands. Therefore, the software service provided is not ‘blocking’ anything per se and is distinct from a firewall.

4. Regarding the search evidence provided in the notice of grounds for refusal, the applicant argues that it shows common usage of the term ‘blockit’ in the context of firewall type of software/software services but not in relation to the market for wire transfer software.

5. The sign applied for is ‘BLOCKIT’, written as one word, and is an invented word that does not appear in any English dictionary. The sign is, therefore, rendered somewhat visually and phonetically unusual given the singularity of the wording. It is by no means the most apt term for the services applied for, and is not directly descriptive of them. The objections are based on the sign being dissected into two separate words when, in fact, there is no space between the words. The attentive relevant consumer will, therefore, read the sign as one word and will note the singularity of the two words placed together with no space between them. This inevitably makes the sign more memorable in the eyes of the relevant consumer who pays a higher-than-average degree of attention.

6. The applicant’s service concerns a software service tool that facilitates safe wire transfers and, consequently, the sign ‘BLOCKIT’ does not immediately suggest anything about the nature of the service in question. The relevant consumer will take note of the unusual use of the word ‘BLOCK’ in the context of the service because the service is, in fact, not ‘blocking’ anything per se.

7. The Office has accepted the registration of numerous marks for ‘software as a service’ in Class 42 containing the word ‘BLOCK’, for example: EUTM No 18 138 277 ‘SMARTBLOCK’, EUTM No 17 873 402 ‘blockman’ or EUTM No 17 931 835 ‘Block0’. Whilst the applicant accepts that each individual case is decided on its own merit, the above registrations show the willingness of the Office to accept marks containing ‘BLOCK’ for ‘software as a service’ in Class 42.

8. The applicant makes a subsidiary claim that the sign of the present application has acquired distinctiveness through use within the meaning of Article 7(3) EUTMR.

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.

Article 7(1)(b) EUTMR

Article 7(1)(b) EUTMR provides that trade marks which are devoid of distinctive character cannot be registered. Article 7(2) EUTMR provides that paragraph 1 of that article is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

In order for a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the services in respect of which registration is sought as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings (17/01/2019, T-91/18, DIAMOND CARD (fig.), EU:T:2019:17, § 13 and the case-law cited).

It is settled case-law that a sign composed of generic, usual or commonly-used names in the sector of the goods or services at issue, words, which inform the public of a characteristic of the goods or services at issue does not comply with the requirements of Article 7(1)(b) EUTMR (19/09/2002, C-104/00P, Companyline, EU:C:2002:506, § 21; 27/02/2002, T-79/00, Lite, EU:T:2002:42, § 33, 35; 08/05/2008, C-304/06 P, Eurohypo, EU:C:2008:261, § 69; 29/04/2010, T-586/08, BioPietra, EU:T:2010:171, § 22, and the case-law cited therein; 03/07/2003, T-122/01, Best Buy, EU:T:2003:183, § 30).

A sign’s distinctiveness can be assessed only by reference, first, to the goods or services in respect of which registration is sought and, second, to the relevant public’s perception of that sign (09/10/2002, T-360/00, UltraPlus, EU:T:2002:244, § 43).

Relevant public

The mark applied for is made up of words which have a meaning, at least in English. Therefore, the existence of the absolute ground for refusal examined in the present case must be assessed, pursuant to Article 7(2) EUTMR, in relation, at the very least, to the English-speaking consumer in the European Union.

The services in Class 42 target both the average consumer seeking assistance in relation to or using software services that will enable them to exchange information (in a secure manner) and, at least, professionals in the field of IT.

The Office agrees with the applicant’s argument that the relevant public will pay a higher-than-average degree of attention when purchasing the services in question.

However, even if the awareness of part of the relevant public is high, given the relatively high technical level and cost of the services, it is liable to be relatively low when it comes to purely promotional indications, which well-informed consumers do not see as decisive (05/12/2002, T‑130/01, Real People, Real Solutions, EU:T:2002:301, § 24).

In addition, the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C‑311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

In this respect, it is not important whether the (general) public knows exactly how the services offered under the mark ‘BLOCKIT’ work; what is important is only that they know the term is an important feature of today’s IT sector

Whilst the applicant’s software as a service (SaaS) services and the services featuring software for enabling the secure exchange of information by users are designed to facilitate safe exchange of information, including the transfer of money electronically between individuals, companies, or between individuals and companies, those services could be designed to prevent access to or the use of something, more precisely to secure the exchange the information, data etc. by blocking a virus or a Trojan, or to restrict access to information or resources for others who are not allowed to access that information.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it can be perceived as ironic, surprising and unexpected, does not suffice to make it distinctive. Those various elements only make that sign distinctive insofar as it is immediately perceived by the relevant public as an indication of the commercial origin of the applicant’s services, thus enabling the relevant public to distinguish, without any possibility of confusion, the applicant’s services from those of a different commercial origin.

(15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

The mark applied for

The applicant does not dispute the individual meanings of the word ‘BLOCK’ and abbreviation ‘IT’ composing the mark, but argues that the sign applied for is ‘BLOCKIT’, as one word, an invented word that does not appear in any English dictionary and, in addition, the relevant consumer will read the sign as one word and will note the singularity of the two words placed together with no space between them. Further, the applicant argues that writing the words without a space makes the sign more memorable for the relevant consumer.

The fact that the term ‘BLOCKIT’ does not appear in any English dictionary does render the mark eligible for registration (10/05/2012, T‑325/11, Autocoaching, EU:T:2012:230, § 38; 24/04/2012, T‑328/11, EcoPerfect, EU:T:2012:197, § 29). It is common ground that dictionaries are not structured to provide every possible word combination (23/09/2015, T‑633/13, INFOSECURITY, EU:T:2015:674, § 39; 19/04/2016, T‑261/15, Daylong (fig.), EU:T:2016:220, § 32).

Regarding arguments 3 and 6, and considering the dictionary definitions provided in the notice of grounds for refusal, ‘BLOCK’ and ‘IT’ will be clearly understood by the relevant English-speaking public in the context of the relevant services as a factual and informative reference, conveying to the consumer that the services will help the user to block a virus or a Trojan, or to restrict access to information or resources for others by denying access to a web server, website, application etc., or to prevent them from performing a certain action. By using the applicant’s services the user will feel more secure and will be able to perform blocking-related tasks or actions and to secure the exchange of information, data etc., and to have full control of the actions that they can allow or prohibit, or to manage the persons that can access a specific type of information, web page etc.

With regard to argument 3, it should be noted that the services applied for in Class 42 cover, among others, the general specification software as a service (SAAS) services; and consultancy, advisory and information services for or in relation to any or all of the aforementioned services in this class. The abovementioned specification could relate to a software service such as one used for ‘blocking’ something, like a firewall software service. The internet search evidence provided in the notice of grounds for refusal clearly demonstrates the common usage in the market.

In addition, the same reasoning could apply for the remaining services. The components of the mark applied for are part of English terminology and the mark as a whole conveys the meaning of information technology related to blocking-related tasks or actions, something that prevents access to, or the use of, something, or that delays or sits idle while waiting for something, something that restricts access to information or resources by denying access to a web server, website etc. or which prevents someone from performing a certain action or maybe something which enable the passage of something (e.g. a virus or a Trojan) to be blocked. The mark applied for cannot be found lacking any concept as the applicant alleges; it provides a clear promotional message of direct relevance to the services in question, the specification of which does not preclude that they relate to technology connected with blocking-related tasks or actions.

There is nothing uncommon in this expression. As such, the expression ʽBLOCKITʼ will not require any mental steps to set off a cognitive process on the relevant public’s part. Moreover, the relevant public will perceive the meaning of these words – and their combination – intuitively rather than from a linguistic or scientific point of view, as reflected in dictionaries (09/03/2015, T‑377/13, ultra.air ultrafilter, EU:T:2015:149, § 36).

Therefore, the trade mark applied for does not enable the relevant public to memorise it easily and instantly as a distinctive mark for the relevant services. As a result, the sign applied for is incapable of performing the essential function of a trade mark and does not enable the consumer who uses or buys the services in question 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. The trade mark applied for merely conveys an unambiguous promotional laudatory message, the function of which is both to communicate a customer service statement and an inspirational or motivational statement.

The message of the terms ‘BLOCK’ and ‘IT’, even if written as one word without a space, is expressed in banal terms using words in their ordinary meaning, and contains nothing that is memorable in terms of a play on words, a rhyme, a subliminal message, unusual syntax, an image or a symbol.

The mark applied for will not trigger any particular cognitive process on the part of the relevant public; they will not need to exert any interpretative effort to understand the message that the applicant’s services will help the user in the many ways outlined above.

Based on the above, the Office maintains its opinion that the mark is devoid of distinctive character within the meaning of Article 7(1)(b) EUTMR.

Previous registrations

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).

‘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 Office has also considered the previous EU trade mark registrations referred to by the applicant. The assessment of distinctive character is not, however, an exact science. The EUIPO strives to act consistently, but each case must be considered separately. Even though in some earlier cases the examiner, in the applicant’s opinion, may have followed a less strict approach with regard to marks that in some respects are similar to the one applied for, the contested decision is, however, in accordance with later decisions of the EU Courts and the Boards of Appeal. If, by accepting in a decision given in a particular case that a sign is eligible for registration as an EU trade mark, the Office has erred in law, that decision cannot be successfully relied on to support an application for the annulment of a later contrary decision adopted in a similar case. 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 (08/07/2004, T‑289/02, Telepharmacy Solutions, EU:T:2004:227,§ 59).

Furthermore, the Office finds that, even if the marks cited by the applicant were comparable to the mark currently under review, and in the event that these marks could serve to demonstrate the general practice followed by the EUIPO to accept marks containing the word ‘BLOCK’ for ‘software as a service’ in Class 42, each case must be examined separately. In this respect, an examiner’s decision to accept a trade mark, in contrast to a possible decision to refuse a trade mark, does not contain any explanation as to why the examiner has regarded the mark as distinctive.

Even though the marks referred to by the applicant have the verbal element ‘BLOCK’ in common, they cover different goods and services and none of them are made up of the additional term ‘IT’. Therefore, since the circumstances in those cases are not the same, the present decision does not contradict the former findings.

Subsidiary claim within the meaning of Article 7(3) EUTMR

The Office takes note of the applicant’s claim within the meaning of Article 7(3) EUTMR. 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.

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and Article 7(2) EUTMR, the application for EUTM No 18 081 804 ‘BLOCKIT’ is declared to be non-distinctive pursuant to Article 7(1)(b) in the relevant territory of the Member States where English is an official language, namely, at least in Ireland, Malta and the United Kingdom, for all the services claimed.

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.

Roxana PISLARU