Refusal of application for a European Union trade mark

OPERATIONS DEPARTMENT

L123

Refusal of application for a European Union trade mark

(Article 7 and Article 42(2) EUTMR)

Alicante, 19/08/2020

Kilburn & Strode LLP

Laapersveld 75

NL-1213 VB Hilversum

PAÍSES BAJOS

Application No:	18 212 301
Your reference:	IAS/kvs/T135231EM
Trade mark:	SUPPORT OF THINGS
Mark type:	Word mark
Applicant:	TeamViewer Germany GmbH Jahnstrasse 30 D-73037 Goeppingen ALEMANIA

The Office raised an objection on 26/03/2020 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 22/05/2020, which may be summarised

as follows:

The applicant and the relevant public

The goods and services applied for

Distinctiveness of the sign

Similar marks registered by the Office

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.

The applicant and the relevant public

Applicant´s remarks

The applicant – with its’ head quarter in Germany but with a worldwide customer base - was founded in 2005 and is a world leader in Remote Software Innovation, with a particular focus on cloud-based technologies to enable remote access, collaboration and system integration globally.

The relevant consumer would be the public at large as well as the professional public and business customers in the field of IT. The relevant consumer of the goods and services in question will display a high level of attention due to the fact that the goods and services are highly specialised and sophisticated. The goods in class 9 and the services in class 38 and 42 are used to protect expensive computers and devices and are purchased very infrequently and are usually expensive. Therefore, the average consumer would display a high level of attention when purchasing said goods and services.

Office’s comments

The Office has taken note of the applicant´s detailed background information and its´ focus on cloud-based technologies dedicated to supporting services such as enabling remote access, collaboration and system integration globally.

The Office agrees with the applicant that the relevant consumer is composed both by the average public as well as the professional public/business customers in the field of IT.

However, in view of the nature of some of the goods and services in question, 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).

It must be held that 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).

The goods and services applied for

Applicant´s remarks

The mark SUPPORT OF THINGS has high distinctive character in relation to many of the goods and services, such as “computer-aided transmission of messages and images” and “providing computer-aided connectivity for encrypted transmission of images and messages across computer and mobile operating systems”. Therefore, the applicant cannot see how the objections would be pertinent to such services.

Office´s comments

The Office respectfully disagrees with the applicant that the sign has distinctive character in relation to the goods and services applied for. The services in class 38 as referred to by the applicant - computer-aided transmission of messages and images; providing computer-aided connectivity for encrypted transmission of images and messages across computer and mobile operating systems – are exactly characterized by supporting connected things and devices by providing connectivity and transmission of digital content on computer systems. Therefore, the Office finds the sign at issue equally descriptive for these services.

Distinctiveness of the sign

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

It is necessary to consider whether the mark “SUPPORT OF THINGS” is capable of being perceived as a distinctive sign and being memorable to the relevant consumer in relation to the goods and services.

The Office artificially dissects the mark and provides dictionary definitions of the three word elements that make up the mark, to arrive at the conclusion that overall the sign would be perceived as a promotional statement, highlighting positive aspects of the goods and services. The meaning of the mark is unclear and could mean any number of things, and the Office has had to make several assumptions to arrive at the conclusion that the sign is a promotional formula.

According to the Merriam Webster online dictionary, the word “SUPPORT” has 14 definitions as a transitive verb and four meanings as a noun. Seen as a whole, the sign “SUPPORT OF THINGS” is so vague and meaningless, and therefore cannot act as a promotional formula as it does not clearly convey any information. The Office has taken a significant mental leap to determine that the sign would be perceived as meaning that the goods are “e.g. various technical support services in class 42 and the provision of computer-aided connectivity and transmission of messages in class 38 in order to support and protect from malware threats”.

The applicant disagrees with the Office´s assertion that the sign will be understood by the relevant consumer to mean “an interconnected information and support network for the IOT/Internet of Things”. This conclusion is based on a preconceived notion of terminologies that are not the subject of the application. The sign is a fanciful term that would not be used in everyday language. Seen as a whole, the sign is innovative and constitutes a play on words that does not have a clear meaning and triggers a mental process. The sign is meaningless; regardless of whether it makes a covert allusion to other terminology.

The sign “SUPPORT OF THINGS” is inherently distinctive as it has no clear meaning in relation to the goods and services. If a message requires a

measure of interpretation on the part of the public and sets off a minimal cognitive process, it is to be declared distinctive.

Office’s comments

The Office agrees with the applicant that the distinctive character 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’, §29).

Therefore, the sign ’SUPPORT OF THINGS’ is to be assessed in relation to the goods and services at issue which for the sake of good order are the following:

Class 9 Downloadable software; software; computer software; downloadable

software for remotely accessing and controlling a computer;

downloadable software for providing online technical support;

downloadable software for providing online solutions to software-related problems and technical issues; downloadable software for protecting and monitoring remote devices; anti-virus software; antimalware software; downloadable software for protecting computers and other devices from malware; downloadable software for scanning devices connected to a computer's USB port to detect and block any malware present on the connected device; downloadable software for transmitting alerts and notifications concerning the detection of malware on a remote device.

Class 38 Computer-aided transmission of messages and images; providing

computer-aided connectivity for encrypted transmission of images and

messages across computer and mobile operating systems; computer-aided transmission of messages and images related to protection of remote devices from malware threats.

Class 42 Non-downloadable software; cloud-based software; non-downloadable

software for remotely accessing and controlling a computer; technical support services, namely, troubleshooting of computer software problems; technical support, namely, monitoring technological functions of computer network systems; technical

support services, namely, remote management services for

monitoring, administration, and management of public and private

cloud computing information technology (IT) and application systems;

non-downloadable software for providing online technical support;

non-downloadable software for providing online solutions to software-related issues; computer services, namely, on-line scanning,

detecting, quarantining and eliminating of viruses, worms, trojans,

spyware, adware, malware and unauthorized data and programs on

computers and electronic devices; non-downloadable software for

protecting and monitoring remote devices; non-downloadable software

for protecting computers and other devices from malware; non-downloadable software for transmitting and receiving alerts and

notifications concerning the detection of malware on a remote device;

non-downloadable software for performing diagnostics on remote

computers, servers, networks, and connected devices; non-downloadable software for monitoring performance of remote

computers, servers, networks, and connected devices.

The focal point of the goods and services are technical support services and computer protection services from malware, spyware, viruses, etc., and the adjoining necessary software/non-downloadable software. As equally mentioned above, the relevant consumer is composed by the average public as well as the professional public/business customers in the field of IT.

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).

The Office respectfully disagrees with the applicant that the sign, seen as a whole, is vague and meaningless. On the contrary, the Office finds that the relevant public straightforwardly would perceive the sign as [the philosophy of] support of things/SoT which in the context of the goods and services applied for may be defined as a platform which not only consists of hardware, software, and application level support, but also is a “blended” support network that allows customers to resolve specific issues. As mentioned by the Office previously, the concept of SOT/support of things may additionally be applied as an interconnected information and support network for the IOT/Internet of Things. The afore-mentioned definition of the sign is based on the context of the goods and services applied for, e.g. downloadable software for providing online technical support in class 9, various technical support services apart from non-downloadable software for providing online technical support in class 42.

Furthermore, the fact that the sign at issue can have several meanings, that it can be a play on words and that it might even 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 goods and services, thus enabling the relevant public to distinguish, without any possibility of confusion, the applicant’s goods and services from those of a different commercial origin (15/09/2005, T‑320/03, Live richly, EU:T:2005:325, § 84).

Consequently, the Office finds that the sign in question is devoid of any distinctive character within the meaning of Article 7(1)(b) and Article 7(2) EUTMR.

Similar marks registered by the Office

Applicant´s remarks

For the sake of legal certainly the Office´s attention is drawn to the following examples of equivalent signs which have been found to be inherently capable of distinguishing similar goods and services:

EUTM no. REPRESENTATION

17 643 693 INFINITE NEXUS OF THINGS
4 207 957 SEE THINGS DIFFERENTLY
663 864 GET THINGS MOVING
5 978 879 GETTING THINGS DONE
10 532 356 SUPPORTING THE GAMES
9 151 788 SUPPORT SMARTER
4 261 798 SupportCode

Office´s remarks

Firstly, as to the EUTM no 17 643 693 - INFINITE NEXUS OF THINGS applied for/registered by the Office for i.a. goods in class 9 and services in class 38 and 42, the sign may be a play on the term Internet of Things (IoT). However, the term Infinite Nexus makes no sense and therefore the sign, seen as a whole, and in the context with the goods/services applied for, is distinctive and registrable.

Moreover, 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).

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).

For the abovementioned reasons, and pursuant to Article 7(1)(b) EUTMR and

Article 7(2) EUTMR, the application for European Union trade mark No 18 212 301

is hereby rejected for all the goods and services claimed, namely: