DECISION

of the Fifth Board of Appeal

of 10 January 2017

In Case R 1325/2016-5

 

Angoss Software Corporation
111 George Street, Suite 200 Toronto Ontario M5A 2N4 Canada	Applicant / Appellant

represented by Mewburn Ellis LLP, City Tower, 40 Basinghall Street, EC2V 5DE London, United Kingdom

APPEAL relating to European Union trade mark application No 14 804 645

THE FIFTH BOARD OF APPEAL

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

 

gives the following

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Decision

Summary of the facts

1. By an application filed on 18 November 2015, Angoss Software Corporation (‘the applicant’) sought to register the word mark

 

KNOWLEDGEMANAGER

 

for the following list of goods and services:

Class 9 – Computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models;

Class 42 – Computer software design, namely, design of computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models; computer software development, namely, development of computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models;

Class 45 – Licensing of computer software, namely, licensing of computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models.

2. On 27 November 2015, the examiner sent the applicant a letter of provisional refusal of protection on the grounds that the application was partially not eligible for registration under Article 7(1)(b), (c) in conjunction with Article 7(2) EUTMR, in respect of all of the goods in Class 9 and the services in Class 42.
3. On 29 January 2016, the applicant responded to the provisional refusal stating that:

• A limitation of the list of goods and services is requested by deleting the terms ‘computer software’ in Class 9 and ‘computer software design’ and ‘computer software development’ in the specification of the services in Class 42. The remaining goods and services fall outside the scope of the objection.
• The applied for goods and services do not immediately convey to the relevant consumer that they relate to ‘a computer programme that organises a resource, such as a set of files or a database or specific information about a subject’. The mark cannot be said to be descriptive.
• The mark requires time and effort on the part of the relevant consumer to make sense of the unusual use of the word ‘knowledge’ especially in combination with the word ‘manager’.
• As ‘knowledge’ cannot be managed, the sign KNOWLEDGEMANAGER is an unusual and fanciful use and juxtaposition of words that will be instantly noticed and appreciated by the consumer and is memorable.

4. The examiner took a decision (‘the contested decision’) dated 5 April 2016  and sent on 17 May 2016  refusing the trade mark applied for the goods in Class 9 and the services in Class 42. It allowed the application to proceed to registration for the services in Class 45. The reasoning can be summarised as follows:

• The Office acknowledges the limitation the applicant submitted concerning the goods and services in Classes 9 and 42, but the proposed limitation does not change the fact that the sign remains descriptive and non-distinctive and therefore maintains its opinion that the restriction would not change the outcome of the objection.
• The mark consists of the combination of two English words, ‘KNOWLEDGE’ and ‘MANAGER’. According to the Collins English Dictionary, the word ‘KNOWLEDGE’ will be understood as ‘specific information about a subject’ and the word ‘MANAGER’ is defined as ‘a computer programme that organizes a resource, such as a set of files or a database’.
• The contested goods are software (computer programmes) and the contested services, design and development services, are connected to the goods. Consequently the relevant consumer will understand the mark applied for as a meaningful expression: a computer programme that organises a resource.
• The word ‘organise’ can have inter alia the following meanings: ‘coordinate, for form (parts of elements of something) into a structured whole, to arrange methodically or in order, to provide with an organic structure. Therefore the goods for which registration is sought can be used to coordinate, enable combining of some parts or elements of something into a structure whole, to arrange methodically or in order to provide an organise structure; and the services the same reasoning applies, since they are connected to the knowledge manager.
• Consequently taken as a whole the mark ‘KNOWLEDGEMANAGER’ would be easily perceived as an indication of an important characteristic of the goods or services in question
• The expression ‘KNOWLEDGEMANAGER’ is simply a combination of two individual words, which comprises nothing unusual or striking as it merely combines the meanings lent by the elements of which is it composed. The meaning conveyed by the juxtaposition of the two words would be directly identified by the consumer involved in the relevant field.
• There is nothing imaginative, suggestive or unusual about the trade mark that would enable the relevant public to distinguish the goods and services from those of other undertakings. The connection between such goods and services and the words ‘KNOWLEDGEMANAGER’ is direct and obvious and the link is not sufficiently tenuous to allow the sign to function as a trade mark.
• The application is rejected for the goods in Class 9 and the services in Class 42 and accepted for the remaining services in Class 45.

5. On 21 July 2016, the applicant filed an appeal against the contested decision, requesting that the application be allowed to proceed in its entirety. The statement of grounds of the appeal was received on 15 September 2016.

Grounds of appeal

6. The arguments raised in the statement of grounds may be summarised as follows:

• The applicant repeats its request to delete the following terms from the list of goods and services: ‘computer software’ in Class 9; ‘computer software design’ and ‘computer software development’ in Class 42. This is requested in order to eliminate any remote possibility that ‘KNOWELDGEMANAGER’ might be considered to be allegedly descriptive in relation to some kind of computer software products or services that are distinct from those of specific interest to the applicant and as otherwise specifically claimed in the application.
• Secondly, the applicant wishes to clarify the term ‘data exploration’ by inserting the phrase ‘analysing the summarizing the feature of a dataset’ immediately afterwards wherever the term appears in its list of goods and services. This is done in order to reflect the fact that the term has a specialized and specific meaning in the relevant field.
• The word ‘KNOWLEDGE’ is somewhat nebulous and encompasses a wealth of learning and experience, amounting to a profound understanding of a subject. Its use in the form of the mark ‘KNOWLEDGEMANAGER’, in relation to computer software and related services is therefore incongruous and alien. Computer software, by its nature, is incapable of learning through experience. It can be an impressive repository of facts, but it can never acquire the familiarity and deep understanding of a subject known as ‘knowledge’.
• The mark ‘KNOWLEDGEMANAGER’ is unusual and fanciful in relation to the goods and services claimed. Its incongruity in connection with software products and related services means that consumers will perceive it as imaginative and thereby capable of fulfilling the essential function in indicating trade origin. As such, ‘KNOWLEDGEMANAGER’ is a distinctive and innovative trade mark; it is certainly not a common term or phrase in the relevant market.
• It is artificial and incorrect to consider ‘KNOWLEDGEMANAGER’ as being two separate words, when it is clearly a single neologism. The mark can comfortably perform the essential function of a trademark when it is used in a trade mark manner and context.
• From the Internet citations provided by the examiner, it has not been sufficiently proven that ‘knowledge manager’ is common in the specific market, namely computer software products and services relating predictive analytics and data mining, but rather in relation to other computer software markets. It is not plausible for the examiner to extrapolate what might be a common term in one area of software, to another software field.
• Some of the Examiners evidence of the alleged common nature of ‘knowledge manager’ is irrelevant. And the examples of usage identified by the examiner allegedly demonstrating that ‘knowledge manger’ is a common term are insufficient. Five citations is clearly insufficient.
• Furthermore, third parties would not be unduly prejudiced by the registration of ‘KNOWLEGEMANAGER’.

Reasons

7. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.

Article 7(1)(c) EUTMR

8. Article 7(1)(c) EUTMR excludes trade marks from registration 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 rendering of services, or other characteristics of the goods or services.
9. The raison d’être behind this provision is the general underlying public interest, in securing that descriptive signs or indications relating to the goods and services for which registration is sought, may be used freely, by preventing such signs and indications from being subject to exclusive rights as trade marks (see to that effect 4 May 1999 May , C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 25).
10. For a sign to be caught by the prohibition set out in that provision, there must be a sufficiently direct and specific relationship between the sign and the goods and services in question so as to enable the public concerned to, immediately and without further reflection, perceive a description of the goods or services in question or one of their characteristics (see, to that effect, 20 July 2004, T-311/02, Limo, EU:T:2004:245 § 30).
11. The descriptiveness of the sign, consequently, has to be assessed in relation to the contested goods or services and by reference to the relevant public’s perception of it.
12. In the present case, the relevant goods and services are the following:

Class 9 – Computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models;

Class 42 – Computer software design, namely, design of computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models; computer software development, namely, development of computer software for data mining, predictive analytics, data exploration (analysing and summarizing the features of a dataset), and the development and deployment of predictive models.

13. The goods and services at stake are tools and services related to information technology and are aimed at both average consumers with some basic IT skills as well as professionals.
14. The goods and the services in question do not fulfil basic needs and are not bought or purchased on a daily basis, which accordingly, leads to the assumption that the public’s degree of attention will be rather high (13 October 2009, T-146/08, Redrock, EU:T:2009:398, § 45). Furthermore, when choosing the goods or services in question, there are a variety of surrounding circumstances which should be considered, such as the level of security of the tools, the price of the services delivered, the complexity of the installing of the software, the compatibility with the IT systems, etc. Whether consumers are average or professionals, they are therefore likely to display a relatively high level of attention.
15. As correctly stated by the examiner, the expression KNOWLEDGEMANAGER consists of two English words. The relevant public in relation to which the absolute ground of refusal must be assessed is an English-speaking public since the word sign at issue consists of two conjoined English words.
16. KNOWLEDGE was defined as ‘the fact or condition of knowing something; the fact of knowing or being acquainted with a thing, person, etc.; acquaintance; familiarity gained by experience; the apprehension of fact or truth with the mind; clear and certain perception of fact or truth; the state or condition of knowing fact or truth’ (information extracted from Oxford English Dictionary).
17. MANAGER was defined by the examiner as ‘a computer program that organizes a resource, such as a set of files or a database’ (information extracted from Oxford English Dictionary).
18. The two words when combined together therefore refer to a computer programme that organises a resource, such as a set of files or a database or specific information about a subject, as stated by the examiner.
19. When applied to ‘computer software for data mining, predictive analytics, data exploration, and the development and deployment of predictive models’ in Class 9, ‘KNOWLEDGEMANAGER’ will be understood as referring to software and computer programs which, through data mining, predictive analysis, exploration of data and predictive models, allow the user to manage this knowledge. The goods can be used to coordinate, combine parts or elements of something into a structure whole, or to predict future events or behaviours. The same applies to the services in Class 42 since they are related to the knowledge manager.
20. The applicant argues that the two words of the mark applied for have other meanings and therefore should be accepted. However, it is established case law that, the simple fact that it can, in at least one of its possible meanings, be used as an indication of descriptive characteristics of the contested goods or services, is sufficient to bring it within the scope of the Article 7(1)(c) EUTMR (23 October 2003, C191/01 P, Doublemint, EU:C:2003:579, § 32.
21. The applicant claims that the contested goods do not ‘manage’ or ‘organise’ information or data and that the computer software analyses a resource, conducts complex calculations and predicts future events or behaviour. However the Board finds that the meaning of the sign is quite clear and obvious and therefore the sign is descriptive of the goods and services claimed.
22. It further argues that ‘KNOWLEDGEMANAGER’ in relation to computer software and related services is incongruous and alien, and that the mark is fanciful and imaginative. Moreover, the mark may be considered allusive and suggestive. Furthermore, it considers that ‘KNOWLEDGEMANAGER’ does not provide any information about the goods or services to the average consumer: It is not known what knowledge is being managed, why, how, or even by whom. As such the mark does not give any information about the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of the rendering of the services.
23. Finally the applicant claims that the sign is a clever brand from a marketing perspective in automatically forging a connection between the mark and the user without giving away any specific information.
24. The Board cannot follow this argumentation. The conjoined word combination could have several different meanings but, in connection with the relevant goods and services, the mark conveys obvious and direct information regarding the intended purpose of the goods and services claimed.

Article 7(1)(b) EUTMR

25. According to Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered. The signs referred to in Article 7(1)(b) EUTMR are, in particular, those which 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 (21 October 2004, C-64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 33). Article 7(2) EUTMR provides that Article 7(1) of that Regulation is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.
26. As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks, registration of such marks is not excluded as such by virtue of such use. As regards the assessment of the distinctive character of such marks, the Court has already held that it is inappropriate to apply to slogans criteria which are stricter than those applicable to other types of sign (21 January 2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 35-36).
27. However, it is apparent from case-law that, while the criteria for the assessment of distinctive character are the same for different categories of marks, it may be that, for the purposes of applying those criteria, the relevant public’s perception is not necessarily the same in relation to each of those categories and it could therefore prove more difficult to establish distinctiveness in relation to marks of certain categories as compared with marks of other categories (21 October 2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 34).
28. While the Court has not excluded the possibility that that case-law may, in certain circumstances, be relevant to word marks consisting of advertising slogans, it has however stated that difficulties in establishing distinctiveness which may be associated with word marks consisting of advertising slogans because of their very nature – difficulties which it is legitimate to take into account – do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness as interpreted in case-law (21 October 2004, C64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 36).
29. Moreover, the mere fact that a mark is perceived by the relevant public as a promotional formula, and that, because of its laudatory nature, it could in principle be used by other undertakings, is not sufficient, in itself, to support the conclusion that that mark is devoid of distinctive character (21 January 2010, C98/08 P, Vorsprung durch Technik, EU:C:2010:29, § 44 and of 12 February 2014, T570/11, La qualité est la meilleure des recettes, EU:T:2014:72, § 26).
30. On that point, it should be noted that the laudatory connotation of a word mark does not mean that it cannot be appropriate for the purposes of guaranteeing to consumers the origin of the goods or services which it covers. Thus, such a mark can be perceived by the relevant public both as a promotional formula and as an indication of the commercial origin of goods or services. It follows that, in so far as the public perceives the mark as an indication of that origin, the fact that the mark is at the same time understood – perhaps even primarily understood – as a sign consisting of a promotional formula has no bearing on its distinctive character (21 January 2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 45, and of 12 February 2014, T-570/11, La qualité est la meilleure des recettes,EU:T:2014:72, § 27).
31. On the other hand, a word mark is devoid of distinctive character when its semantic content indicates to the consumer a characteristic of the product or service relating to its market value which, whilst not specific, comes from promotional or advertising information and which the relevant public will perceive at first glance as such, rather than as an indication of the commercial origin of the goods or services in question (30 June 2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198, § 31; 12 March 2008, T-128/07, Delivering the essentials of life, EU:T:2008:72, § 20; 6 June 2013 June , T-126/12, Inspired by efficiency, EU:T:2013:303, § 25).
32. Finally, distinctive character, within the meaning of Article 7(1)(b) EUTMR must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public’s perception of the mark (cited above, 21 January 2010, C-398/08 P, Vorsprung durch Technik, EU:C:2010:29, § 34 and the case-law cited).
33. The expression ‘KNOWLEDGEMANAGER’ is not grammatically unusual. The only departure from the rules of English grammar exists in the direct juxtaposition of the word components without spaces. However, the mere juxtaposition of several words with or without spaces does not amount to evidence any creative aspect capable of distinguishing the applicant goods and services form those of other undertakings (9 February 2010 February , T113/09, SupplementPack, EU:T:2010:34, § 35, 36; 7 June 2005 June , T316/03, MunichFinancialServices, EU:T:2005:201, § 37).
34. Therefore the message conveyed by the mark ‘KNOWLEDGEMANAGER’ is clear, concrete and direct, and not vague. There is nothing unusual in the expression, which in fact simply highlights the purpose of the goods and services. The message transmitted to the consumer is that the goods and services are applications that allow users to manage knowledge. Accordingly, the expression ‘KNOWLEDGEMANAGER’ is far from being fanciful. Taken as a whole, it exclusively consists of a non-distinctive term that will be perceived as such by consumers in relation to the goods in Class 9 and services in Class 42.
35. The appeal therefore, is unfounded and must be dismissed.
36. The Board would like to note obiter dictum that the decision taken by the examiner in the present case is not consistent with the total refusal of the word mark ‘KNOWLEDGESEEKER’ filed by the same applicant and refused for all goods and services by decision of 5 May 2016. The Board confirmed this total refusal in case R 1089/2016-5.

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Order

 

 

On those grounds,

 

 

THE BOARD

hereby:

 

Dismisses the appeal.

 

 

 

 

 

 

Signed   G. Humphreys

Signed   V. Melgar

Signed   A. Pohlmann

 

 

Registrar:   Signed   H.Dijkema