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Missing the point

March 23, 2021 - case_law_comment
Missing the point

Missing the point

VROOM and confusing form for function in the classification of goods and services. 24/02/2021, T‑56/20, VROOM, EU:T:2021:103


Stefan Martin, Member of the Second Board of Appeal; Jonathan Boyd, EUIPO Trainee

This article reflects the views and opinions of the authors, and not the position of the EUIPO.

Background

Article 33(2) EUTMR provides that:

  1. The goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

On 6 December 2017, the Bezos Family Foundation (the applicant) filed an application for the word mark ‘VROOM’ for computer software, namely a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education in Class 9. On 27 April 2018, SNCF Mobilités (the opponent) filed an opposition under Article 8(1)(b) EUTMR based on the earlier French word mark ‘POP & VROOM’ registered for, inter alia, computer software and mobile applications in Class 9. On 17 April 2019, the Opposition Division upheld the opposition, refusing the application for registration in its entirety.

The applicant appealed to the Board of Appeal. The Board dismissed the appeal, finding a likelihood of confusion due to, inter alia, the identity of the goods in question (20/11/2019, R 1288/2019‑5, Vroom / Pop & Vroom, § 60). In particular, it rejected the applicant’s submission that computer software and mobile applications are not sufficiently clear and precise within the meaning of Article 33(2) EUTMR and the CJEU’s landmark judgment in IP Translator (19/06/2012, C‑307/10, IP Translator, EU:C:2012:361).

The applicant filed an action before the General Court, relying on a single plea in law: infringement of Article 8(1)(b) EUTMR.

The Court’s reasoning

The case was reasonably straightforward in all aspects except the comparison of the goods. Here, the applicant argued that the broader categories (computer software, mobile applications and computer software design) for which the earlier mark was registered should be constrained to apply only to the field of transport, the opponent’s field of operation, and that they were too unclear and imprecise to satisfy Article 33(2) EUTMR. The Court responded that where an earlier mark covers a broader category within which the goods of the mark applied for are contained, the goods of the two marks are considered identical (07/07/2005, T‑385/03, Biker Miles, EU:T:2005:276, § 32) (§ 33). Moreover, the fact that the mark covered goods and services related to transport and that that was the opponent’s main business did not allow the broader categories of computer software and mobile applications to be read narrowly and restricted to that context. Finally, the Court avoided having to consider whether computer software and mobile applications were sufficiently clear and precise by finding that even if they were not this would not affect the outcome of the comparison of the goods (§ 31). This was because the validity of earlier national marks cannot be called into question in opposition proceedings (24/05/2012, Formula 1 Licensing v OHIM, C‑196/11 P, EU:C:2012:314), lack of clarity and precision was not a ground of invalidity for the earlier mark (29/01/2020, SKY, C‑371/18, EU:C:2020:45) (§ 29), and nowhere in legislation or case-law was it stated or implied that insufficient clarity and precision would prevent a mark being usable to oppose a later registration (§ 30). As such, the goods of the two marks were identical.

Computer software as a clear and precise category

VROOM is a clear example of the problems caused by confusion of the form of the goods for their purpose or function. Simply knowing that something is ‘software’ tells one nothing about what it actually does. It is clear that the form of the goods is digital but not what their function or purpose is. It is true that in 2015 the General Court decided that computer software complied with the requirement of clarity and precision (29/04/2015, T‑717/13, SHADOW COMPLEX / BusinessShadow et al., EU:T:2015:242). It also true that according to the Common Practice on the General Indications of the Nice Class Headings, adopted on 20 November 2013 by all EU national offices, computer software was not included in the list of 11 general indications considered to be lacking clarity and precision (https://www.tmdn.org/network/documents/89965/72f4fcce-106c-4de6-b684-822e5131fbac). On the other hand, in his Opinion in Sky et al. Advocate General Tanchev concluded that the ‘registration of a trade mark for computer software is unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor’ (16/10/2019, C‑371/18, SKY, EU:C:2019:864).

This point is highlighted in other jurisdictions. The United States Patent and Trademark Office (USPTO) guidance is as follows:

  • Any identification of goods for computer programs must be sufficiently specific to permit determinations with respect to likelihood of confusion. The purpose of requiring specificity in identifying computer programs is to avoid the issuance of unnecessary refusals of registration under 15 U.S.C. §1052(d) where the actual goods of the parties are not related and there is no conflict in the marketplace.

    (USPTO Trademark Manual of Examining Procedure, 1402.03(d))

The US guidance shows the flaw in the current European approach. Conflict in the market, or likelihood of confusion, is the focus of trade marks and is ignored by the European approach to software. This approach focuses on taxonomy and categorisation of goods by how conceptually similar they are to each other, and has thus lost its way. While computer software is a clear and precise category in the sense that its limits are defined and ascertainable, this however misses the point. The functional breadth of the category of software means that it is perfectly possible for different developers to produce software under identical marks with a negligible risk of confusion at most. VROOM exemplifies this, as the markets for transport services and educational aids for children must be entirely distinct. By preventing the registration of ‘VROOM’ as a mark for both of these pieces of software concurrently, the European approach subverts the function of a trade mark, impeding economic efficiency rather than promoting it.

As goods and services are increasingly provided digitally, the error of confusing their form for their substance in the market will only become more unsustainable. VROOM provides one example of its injustice and inefficiency. While procedural limits prevented a different outcome in this case, it throws into stark relief the need for reconsideration of the current European approach to computer software as a clear and precise category of goods.


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