Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 16/12/2019

MASON HAYES & CURRAN

South Bank House

Barrow Street

Dublin 4

IRLANDA

Application No:	18 085 523
Your reference:	BMC/JM/44953.6
Trade mark:	REGSYS
Mark type:	Word mark
Applicant:	Enterprise Registry Solutions Limited Plaza 4, Level 2, Custom House Plaza, Harbourmaster Place, I.F.S.C. Dublin 1 D01 K6P2 IRLANDA

The Office raised an objection on 22/07/2019 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 19/09/2019 which may all be summarised as follows:

1. Descriptiveness/distinctive character/several meanings of the sign and its’ elements

2. Similar marks registered by the Office

3. Similar marks registered by national offices

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.

1. Descriptiveness/distinctive character/several meanings of the sign and its’ 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).

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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

No other entity is entitled to apply for a trade mark in respect of the sign ''REGSYS” for the goods applied for as this is linked to the applicant´s business. The “REGSYS” product and brand has been established by the applicant for a specified purpose and it is therefore clearly a badge of origin and inherently distinctive. The word "REGSYS" cannot be made available to third parties as this is the specific name adopted by the applicant for its product/service and it cannot be used by third party competitors. It is not possible for the mark to be freely used by anyone and for this reason it is submitted that the objection raised relating to descriptiveness does not apply to this application.

The word “REGSYS” can have many meanings and interpretations such as Integrated Regional Energy Systems (RegSys), Regulatory and Systems Genomics (RegSys), and Trojan.Regsys (an antivirus protection which modifies registry settings).

The dictionary references quoted in the Office´s notice of grounds for refusal are disputed because the online dictionary www.dictionary.com does not provide a definition for the word “REGSYS" which also indicates the level of distinctiveness of the word. Moreover, the definition of ‘reg’ in the same online dictionary is '"Noun, Usually regs. Informal, regulations” as opposed to 'register’ or 'registry’ as stated by the Office. Neither in www.dictionary.com nor in the Cambridge dictionary https://dictionary.cambridge.org/ a definition of the word ‘sys’ can be found. Therefore, the definition of ‘sys’ as an "abbreviation of system(s)” as stated by the Office does not appear to be universally accepted.

Office´s comments

The distinctive character and descriptiveness of a trade mark must be assessed, first, by reference to the goods or services in respect of which registration of the sign is sought and, second, by reference to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (judgment of 27/11/2003, T-348/02, ‘Quick’, paragraph 29).

Therefore, the mark ‘RegSys’ is to be assessed in relation to the goods and services at issue which for the sake of good order are:

Class 9 Computer software; computer software for business registry purposes; computer software for creating, maintaining and operating registry systems; computer software programs for reading, transmitting and organising data, database and registry management, data compression and processing software, data warehousing and for searching of data; computer software programs for database and registry management; computer software for application and database integration; computer software that provides web-based access to applications and services and for providing multiple user access to a global information network; computer software for creating searchable databases; software for searching and retrieving information across a computer network.

Class 35 Registry services; administration services being recording and maintaining client lists and information for others; compilation, creation and management of computerised registers; compilation of information into computerised registers; maintaining a registry of information; data processing; operation of electronic business information management and registry systems for the registration, maintenance, searching and retrieval of information.

Class 42 Scientific and technological services and research and design relating thereto; providing temporary use of non-downloadable software; providing temporary use of computer software for registry systems; providing temporary use of non-downloadable computer software for business purposes; providing temporary use of non-downloadable computer software for creating, maintaining and operating registry systems; providing temporary use of computer software programs for reading, transmitting, and organising data, database and registry management, data warehousing and for searching of data; providing temporary use of non-downloadable computer software that provides web-based access to applications and services and for providing multiple user access to a global computer information network; providing temporary use of non-downloadable computer software for creating searchable databases; providing temporary use of non-downloadable software for searching and retrieving information across a computer network; design and development of computer software; computer software and consultancy; providing temporary use of non-downloadable data compression and processing software; computer programming; maintenance of computer software; writing, installation and updating of computer software; hosting computer software applications for others; updating of computer software for databases; software engineering services.

The assessment of the mark has been carried out exactly in this manner. The

dictionary references given by the Office in its original objection demonstrate that the expression ‘RegSys’ will be perceived as a meaningful expression for registry system or registration system.

Ad verbal element ‘reg’:

With reference to the Cambridge Dictionary which the applicant refers to in its’ observations:

https://dictionary.cambridge.org/dictionary/english/reg

the verbal element ‘reg’ is used informally as a written abbreviation for registration, f.ex. reg.number of a car. This is also confirmed by the Merriam-Webster Dictionary:

www.merriam-webster.com/dictionary/reg

where the definition of reg, being an abbreviation, means, i.a., register, registered, registration.

Ad verbal element ‘sys’:

With point of departure in AcronymFinder as cited in the Office´s notice of grounds for refusal, the abbreviation ‘SYS’ ranks first on the list with five star with the meaning ‘system(s)’, see following excerpt:

https://www.acronymfinder.com/SYS.html

‘SYS’ as the abbreviation of ‘system’ is also confirmed by the Merriam-Webster Dictionary, see following excerpt:

https://www.merriam-webster.com/dictionary/sys

Therefore, the Office is of the position that the sign ‘RegSys’ will inform the relevant consumers direct and straightforwardly that the goods applied for in class 9 are, inter alia, various computer software for registry systems and registry management, that the services in class 35 are, inter alia, various registry services, involving computerized registers and registry systems, and that the services in class 42 are, inter alia, providing temporary use of computer software for registry systems; searchable databases, etc., apart from the scientific and technological services and research and design relating to these registry systems.

Therefore, it is the Office’s view that the sign at issue, ‘RegSys’, is intelligible for the relevant consumer when taken in conjunction with the goods and services applied for.

The Office does not dispute the fact that the term ‘RegSys’, seen as a whole, may not appear in dictionaries and that the individual verbal elements of the sign - in the absence of any goods or services as a point of reference for assessment - may have various different meanings. However, 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).

As to the applicant´s assertions that that no other competitors can make use of the same combination, ‘the distinctive character of a trade mark is determined on the basis of the fact that that mark can be immediately perceived by the relevant public as designating the commercial origin of the goods or service in question. The lack of prior use cannot automatically indicate such a perception.’ (15/09/2005, T 320/03, Live richly, EU:T:2005:325, § 88).

A sign that fulfils functions other than that of a trade mark in the traditional sense of the term ‘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’ (judgment of 05/12/2002, T-130/01, ‘REAL PEOPLE, REAL SOLUTIONS’, §20 and

judgment of 03/07/2003, T-122/01, ‘BEST BUY’, §21).

In the present case, the sign ‘RegSys’ is a combination of two descriptive elements in relation to the goods and services at issue, which does not create an impression sufficiently far removed from that produced by the mere combination of the elements of which it is composed to amount to more than the sum of its parts. It has a sufficiently clear meaning for the relevant predominantly professional public – apart from the average consumer who is reasonably well-informed, reasonably observant, and reasonably circumspect – and makes it possible to designate the kind, quality and intended purpose of the goods and services concerned.

Therefore, the Office maintains its’ position that the current sign, ‘RegSys’, seen as a whole is descriptive and devoid of any distinctive character and not capable of distinguishing the goods and services to which an objection has been raised within the meaning of art. 7(1)(b) and (c) EUTMR and art. 7(2) EUTMR.

2. Similar marks registered by the Office

Applicant´s remarks

Many trade marks, similar in nature to the current sign, have been registered by the Office. Examples hereof are:

EUTM no REPRESENTATION

IR1167287

2 273 001 REGISTRYPRO

8 563 141 CENTRAL REGISTRY SOLUTIONS

9 233 941 SUPERREGISTRY

3 978 038

10 862 233

12 690 145 RITTAL SOFTWARE SYSTEMS

17 890 269

Office´s comments

Firstly, the Office would like to point out that in the case of

EUTM no. 8 563 141 - CENTRAL REGISTRY SOLUTIONS,

this EU trade marks was object to a partial refusal by the Office, inter alia, for services in class 35 and 42.

Moreover, in the following cases:

3 978 038

10 862 233

12 690 145 RITTAL SOFTWARE SYSTEMS

these trade marks have incorporated a proper noun as distinctive identifier – in casu Arco, Rittal – or a non-descriptive acronym – in casu QMI – apart from the two of the three signs being figurative marks with figurative and stylized elements which bestow them with the necessary distinctive character.

In the following case

EUT no 17 890 269

the figurative element being a stylized eye above the verbal elements of the sign bestows the otherwise descriptive sign with its’ verbal elements with the necessary distinctive character.

Secondly, the Office would also like to point out that that 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).

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).

3. Similar marks registered by national offices

Applicant’s remarks

The applicant has equally filed application for registration of the sign ‘REGSYS’ with the Canadian Trade Mark Office/CIPO¹, with the Australian IP Office under application no. 2022030² and moreover with the US Trade Mark authorities.

Office’s comments

As regards the national decisions referred to by the [applicant][holder], according to case-law: the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently, the registrability of a sign as a European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated (27/02/2002, T‑106/00, Streamserve, EU:T:2002:43, § 47).

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 18 085 523 is hereby rejected for all the goods and services, namely:

Class 9 Computer software; computer software for business registry purposes; computer software for creating, maintaining and operating registry systems; computer software programs for reading, transmitting and organising data, database and registry management, data compression and processing software, data warehousing and for searching of data; computer software programs for database and registry management; computer software for application and database integration; computer software that provides web-based access to applications and services and for providing multiple user access to a global information network; computer software for creating searchable databases; software for searching and retrieving information across a computer network.

Class 35 Registry services; administration services being recording and maintaining client lists and information for others; compilation, creation and management of computerised registers; compilation of information into computerised registers; maintaining a registry of information; data processing; operation of electronic business information management and registry systems for the registration, maintenance, searching and retrieval of information.

Class 42 Scientific and technological services and research and design relating thereto; providing temporary use of non-downloadable software; providing temporary use of computer software for registry systems; providing temporary use of non-downloadable computer software for business purposes; providing temporary use of non-downloadable computer software for creating, maintaining and operating registry systems; providing temporary use of computer software programs for reading, transmitting, and organising data, database and registry management, data warehousing and for searching of data; providing temporary use of non-downloadable computer software that provides web-based access to applications and services and for providing multiple user access to a global computer information network; providing temporary use of non-downloadable computer software for creating searchable databases; providing temporary use of non-downloadable software for searching and retrieving information across a computer network; design and development of computer software; computer software and consultancy; providing temporary use of non-downloadable data compression and processing software; computer programming; maintenance of computer software; writing, installation and updating of computer software; hosting computer software applications for others; updating of computer software for databases; software engineering services.

Class 9 Software and technologies designed to automate prepaid, postpaid and toll utility services.

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.

Finn PEDERSEN