On 31 January 2019, the General Court handed down its judgment in Case T-97/18, DeepMind Technologies Ltd. v. EUIPO, in which it denied the registration of the sign STREAMS as a trade mark for being descriptive and for lacking distinctive character under Regulation 2017/1001 of 14 June 2017 on the European Union trade mark (the "Trade Mark Regulation").
On 29 February 2016, Google Inc. had filed an application with the European Union Intellectual Property Office (the "EUIPO") for registration of the sign STREAMS as an EU trade mark. Streams is a mobile app that supports physicians and nurses to deliver care to patients. The application for registration was subsequently transferred to DeepMind Technologies Ltd ("DeepMind") on 11 October 2016. Registration was sought for the sign Streams in respect of the goods and services in classes 9 (computer software for accessing and viewing patient medical information) and 42 (application service provider (ASP) featuring computer software for accessing and viewing patient medical information) of the Nice Classification.
DeepMind's application was provisionally refused by the examiner on the basis of Article 7(1)(b) and 7(1)(c) of the Trade Mark Regulation. According to these provisions, registration must be refused if the trade mark is devoid of any distinctive character or if the trade mark is descriptive, i.e., consists 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.
The examiner's decision became final on 8 November 2016 and was subsequently appealed to the EUIPO where DeepMind sought to limit the goods and services covered by the mark applied for by "excluding computer software for use in streaming media, video content or data over the Internet".
The appeal was nonetheless dismissed on 27 November 2017 by the First Board of Appeal of EUIPO since the applicant's limitation of the goods and services covered by the mark was considered inadmissible because it was unconditional. Furthermore, it was found that the trade mark applied for could not be registered since it designated the characteristics, kind and quality of the goods and services concerned, while also being devoid of any distinctive character. For the First Board of Appeal of EUIPO, this finding could not be put into question by the mere fact that the words "stream" and "streams" had previously been validly registered as trade marks.
DeepMind appealed the Board of Appeal decision before the General Court, seeking either to vary the contested decision or to have it annulled.
The Court acknowledged that a claim for variation could only be taken in limited situations, such as where the Court "after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take". However, assessing the Board of Appeal decision necessarily required first assessing the applicant's pleas for annulment.
DeepMind argued that the Board of Appeal was wrong to conclude that the trade mark applied for would be perceived immediately, without further thought, as a description of the characteristics of the goods/services in respect of which registration was sought, because, inter alia:
- The relevant public would understand that the Streams app is not a data streaming device or service since it does not provide transient access to data;
- The Board of Appeal failed to distinguish between the singular and plural forms of the word "stream".
The General Court first examined whether the Board of Appeal had infringed Article 7(1)(c) of the Trade Mark Regulation by finding that the mark applied for had a descriptive character.
The General Court dismissed DeepMind's arguments. It held that the descriptive character of a sign may be assessed only, first in relation to the understanding of the mark by the relevant public and, second in relation to the goods and services concerned. In the case at hand, as previously held by the Board of Appeal, the relevant public is composed of health care professionals located in the European Union who have a sufficient knowledge of English terminology in the field of information technology.
Furthermore, the General Court held that a word must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. The General Court noted that the mark applied for was the plural form of the word "stream", which, in computing terms, means a continuous flow of data or instructions, in particular a flow with a constant or predictable rate. The General Court also relied on the Board of Appeal's finding that the entry for "stream" in the Oxford Dictionary showed the use of that word in its plural form and with the same meaning. The General Court also found that, although the app does not provide a continuous flow of data (known as streaming), the applicant failed to provide the Court with evidence that the relevant public understands this technical aspect of the app and therefore will not associate the mark "streams" with the goods and services provided by the app.
The General Court did not examine the arguments on distinctiveness under Article 7(1)(b) of the Trade Mark Regulation as it is sufficient that one of the absolute grounds for refusal provided for by Article 7 is found to apply to disqualify a sign as a EU trade mark.
DeepMind also denounced the Board of Appeal's failure to take into account existing EU word marks, namely STREAMS and STREAM+, which had previously been accepted for the registration of goods and services belonging to Classes 9 and 42. The General Court held that even if EUIPO must take into account its previous decisions with regard to similar applications, the examination of a sign must be stringent and comprehensive and must be undertaken in each individual case. Furthermore, the General Court clarified that "the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO are called on to take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the European Union Courts and not on the basis of EUIPO's previous decision-making practice".
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.