In case T-404/13, the General Court (GC) decided on the registrability of the word mark 'SUBSCRIBE'. After several alterations to the initial application, NIIT Insurance Technologies Ltd sought to register the sign as a CTM for various goods and services in Classes 9, 16 and 42.
The sign 'SUBSCRIBE' was successfully registered for some of the goods and services applied for, such as 'computer hardware; printers; pens; paper articles' as well as 'information services related to academic and industrial research', among other things. The examiner and the Board of Appeal (BoA), however, both rejected the remaining part of the application, holding that the mark was devoid of any distinctive character with regard to the following goods and services (i.e., the contested products):
- 'computer software; data storage and retrieval systems; computer programmes; electronic and computer games' (Class 9)
- 'computer programmes (printed form); manuals; operating instructions; books, publications; magazines; instructional and teaching material; printed matters' (Class 16)
- 'services relating to computer design and programming; computer engineering; maintenance, rental and updating of computer software and programmes; computer consultancy and advisory services; information services relating to computers; computer system analysis and recovery of computer data' (Class 42)
The Office established that the mark applied for consisted exclusively of the English term 'subscribe', which referred to the payment of money in order to regularly receive certain goods or services. Therefore, the relevant public would merely understand the term as an invitation to subscribe to the contested products, all of which could be acquired by way of subscription.
In its appeal, the applicant argued that the BoA was wrong to hold that the sign was devoid of any distinctive character. It was generally uncommon to acquire the contested products contained in Class 9 by way of subscription. Therefore, the relevant public would not attach any descriptive meaning to the term 'subscribe' with regard to these products. As for the contested products contained in Classes 16 and 42, the applicant claimed that they were frequently acquired through a subscription system. The relevant public would see this delivery method as being a matter of course and consequently not perceive the mark as being descriptive of these products either. As a result, the sign could serve as a slogan indicating the commercial origin of all the contested products. According to the applicant, the BoA’s decision also violated the principle of equality and was contrary to Art. 56 of the TFEU.
The GC dismissed the appeal in its entirety. First, the Court confirmed the finding of the BoA concerning the mark’s lack of distinctive character in relation to the contested products, Art. 7(1)(b) CTMR. All of these products could be acquired using a subscription. Therefore, when confronted with the sign 'SUBSCRIBE' in connection with the contested products, the relevant public would effortlessly understand the mark as hinting at the possibility to acquire the products by way of subscription. The Court held that the applicant’s arguments on whether or not it was a common practice to subscribe to the contested products were beside the point. Such considerations, casting doubt on the descriptive character of the mark, could merely have become relevant if the objection had been raised on the basis of Art. 7(1)(c) CTMR.
With regard to the sign’s quality as a slogan, the Court referred to the criteria laid out in 'Vorsprung durch Technik' (see case C-398/08 P, reported here). In this case, the CJEU established that even an advertising slogan could indicate the commercial origin of goods. This could be the position, in particular, if the slogan possessed a certain originality that required at least some interpretation by the relevant public. The GC, however, found that these requirements were not fulfilled in the current case. The applicant failed to show alternative ways in which the average consumer would interpret the term 'subscribe'.
Second, the BoA did not violate the principle of equality. The Court confirmed that the OHIM had to adhere to this principle and take into account the decisions already taken in respect of similar applications. However, this did not allow the applicant to benefit from a possibly unlawful act committed to the benefit of someone else. Each decision had to be based on the circumstances of the case at hand and previous registrations did not confer a right to registration in respect of the mark applied for (for a similar position see cases Tâ€‘291/12 and T-539/11, reported here).
Third, the BoA’s decision did not constitute a breach of Art. 56 of the TFEU, since refusing to register the mark did not distort the conditions of competition or hinder the free movement of goods and services. Trade marks constituted an essential element in the system of undistorted competition. The possibility of registering a trade mark, however, could be limited for reasons relating to the public interest. Accordingly, Art. 7(1)(b) CTMR pursued the general interest of guaranteeing the origin of the marked good or service to the consumer, without any possibility of confusion.
The Court’s reasoning when assessing the mark’s distinctive character is sound and convincing. Art. 7(1)(b) CTMR prevents the registration of a sign that consumers would exclusively perceive as an invitation to purchase (or in the current case, to subscribe to) the products covered by the application. Following the GC’s logic, it is plausible to assume that the average consumer is less likely to understand the sign 'SUBSCRIBE' as an indication of commercial origin, if the sign is used for goods or services that the average consumer expects to be able to subscribe to.
Nonetheless, the overall result is not entirely satisfactory. It remains difficult for practitioners to reliably predict for which goods or services the sign 'SUBSCRIBE' can be registered as a trade mark. For instance, it is hard to find a reason why the sign at issue was successfully registered for 'information services related to academic and industrial research', whereas it was not deemed to be distinctive for 'information services related to computers'. Given the similarity of these services, one could argue that the trade mark application should have been treated alike in both instances.