The judgment of the General Court (Ninth Chamber) of 13 July 2022. In the Rimini Street, Inc. v European Union Intellectual Property Office (Case T 634/21) is a good illustration of what the trade mark descriptiveness ground for refusal is all about.
An IT support services company Rimini Street wanted to register a word sign WE DO SUPPORT through the WIPO system in the European Union. The mark was to be registered for services in Class 42 of the Nice Classification, i.e. ‘Computer software consulting services; technical support services, namely, proving maintenance services for enterprise and database software; technical support services, namely, providing troubleshooting of enterprise and database software problems; maintenance of computer software; technical support services, namely, troubleshooting computer software problems’.
EUIPO examiner issued a provisional refusal of protection in respect of all the services at issue, in so far as the application in question falls within Article 7(1)(b) and (2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). By decision of 3 March 2021the examiner confirmed the refusal of protection of the contested international registration in the European Union for all services at issue. On 19 April 2021, the applicant filed an appeal with EUIPO against the examiner’s decision. By the contested decision, the Board of Appeal dismissed the applicant’s appeal. Accordingly, Rimini Street requested annulment of this decision from the CJEU.
EUIPO indicated that the contested international registration was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001 and refused its protection in the European Union. It found that the composition of the words making up that sign, taken as a whole, complied with the rules of English grammar and conveyed the meaning ‘we provide support’.
The Board of Appeal found, in essence, that, concerning the services at issue the expression ‘we do support’ was merely promotional in nature in that it was laudatory of those services, that is it referred to the idea that the relevant public might find and obtain support services from the holder of the contested international registration, and was not capable of indicating their commercial origin.
Rimini Street primarily argued that the contested international registration conveys a message likely to set off a cognitive process on the part of the relevant public. According to the applicant, that international registration gives, first of all, the impression that it is the services at issue themselves which assist, which causes a personalisation capable of reinforcing distinctiveness. Moreover, due to the presence of the element ‘do’ in the international registration in question, the grammatical arrangement of that mark also contributes to the distinctiveness, in so far as it is an exaggeration according to which the holder of the registration is the only one to offer such services.
The Court did not share Rimini Street’s argument. The CJEU pointed out that in that regard, it should be noted that the contested international registration is composed of common English words and is correct from a grammatical point of view in English. In accordance with the case-law, the combination of common English words in a single sign, which is in conformity with the rules of English grammar, conveys a clear and unequivocal message which is immediately apparent and does not require any interpretative effort on the part of an English-speaking consumer.
Even if, as the applicant submits, the contested international registration could be perceived by the relevant public as referring indirectly to the knowledge, experience, donations and closeness and efficiency of the service provider, such an interpretation does not differ significantly from the meaning referred to above, but is part of the same conceptual context of a general advertising message lacking originality or resonance. In addition, it does not require any interpretative effort, but is rather an ordinary meaning of the sign, given that the ability to provide support is clearly apparent from the respective abilities of the service provider, such as its knowledge, experience and efficiency.
As is apparent from the above, the contested international registration is a mere laudatory slogan which does not possess any originality or resonance requiring at least some interpretation or setting off a cognitive process on the part of the relevant public, and the applicant has not shown that beyond its promotional function that international registration will be perceived as an indication of commercial origin. Accordingly, the action was dismissed by the court in its entirety and the EUIPO decision was upheld.
This time it is difficult to disagree with the reasoning adopted by the Court. The phrase WE DO SUPPORT directly describes the services that Rimini Street provided and is not distinctive to the average consumer. An interesting thing is also what the scope of protection could be of such a trademark. We think that almost none. Nobody could monopolise a phrase about providing support in any area of business. Therefore, before filing for a trademark application it is always prudent to think about the scope of protection the trademark we plan to register offers. If none, it is not worth trying to register a trademark and make effort and spendings on trying to persuade an examiner that the trademark is distinctive.