Salesforce, a global US-based leader in Cloud computing, applied for an EUTM for the word SOCIAL.COM in respect of a broad range of goods and services in Classes 9 (including software and electronic publications), 35 (covering advertising, PR, market research, arranging of contracts for others, compilation of information), 41 (including publication of periodicals, production of video and radio programmes, conducting of training events and various online games and entertainment) and 42 (covering scientific and technological research, design, provision or maintenance of computer software, hardware and websites).
This application was rejected by the examiner and the Board of Appeal on the ground that the sign applied for was devoid of any distinctive character and descriptive under Articles 7(1)(b) and (c).
On appeal, addressing Article 7(1)(c), the General Court stressed that signs which designate the characteristics of goods or services are incapable of performing the essential function of a trade mark, namely enabling a customer to identify the commercial origin of those products. This was assessed from the point of view of the relevant class of persons for the goods and services in question. If at least one of the sign’s possible meanings designated a characteristic of the products, registration had to be refused under Art 7(1)(c).
The applicant argued that the Board of Appeal used vague terms, without any definitions, to interpret the meaning of the sign.
The General Court observed that the sign was composed of “SOCIAL” and “.COM”. It found that “SOCIAL”, which had clear general dictionary definitions as well as context-related meanings, would be perceived under its normal and immediate meaning which was related to the concept of “society”, echoing points raised by the Board of Appeal which had quoted the Oxford English Dictionary and the Oxford Learner’s Dictionaries in its earlier decision.
Thus, the fact that there may be specific and subtle context-related meanings for “SOCIAL” was deemed irrelevant, even more so as none of those other meanings had been specified by the applicant.
The General Court stated that “.COM” would be immediately recognised by the relevant public as referring to a website, and may also indicate that the goods and services covered by the mark are available from, or connected to, the Internet.
It also reiterated the Board of Appeal’s point that SOCIAL.COM would be understood as “Internet-based social interaction”. It would be perceived as a reference to the contemporary expressions “social media” and “social networks” which referred to (in the words of the Court and the Board) “computer-mediated tools which allow the creation, sharing or exchange of information, ideas, photographs and videos in virtual networks and communities.”
The applicant also argued that the Board of Appeal should have carried out a detailed examination of the goods and services in the applicant when it sought to link those with SOCIAL.COM.
The court reiterated that it was sometimes possible to apply general grounds of refusal to a group of goods of services in an application when those were sufficiently connected to comprise a category of product of sufficient homogeneity. It was clear from the summary of the specification by the Board of Appeal that all the goods and services were related to social media or social networks, and they formed a group of goods and services of sufficient homogeneity.
Therefore, the applicant’s argument that a detailed examination of those goods and services would have shown that some of them where not directly related to the concept of “social interaction on the Internet” was dismissed.
It was therefore held that the Board of Appeal had correctly found that SOCIAL.COM was descriptive within the meaning of Article 7(1)(c). Since it was sufficient for a sign to fail one of the absolute grounds for refusals to be ineligible for registration, the General Court deemed it unnecessary to review Article 7(1)(b).