Think Deep: The General Court denies the registration of DeepMind’s trade mark

This decision highlights that what constitutes a descriptive trade mark can be affected by the context of the industry.  Furthermore, it illustrates the General Court’s willingness to engage with trade mark law in new innovative fields (artificial intelligence).

The General Court has refused DeepMind’s appeal of its European trade mark application for the word ‘STREAMS’.

What is Streams?

Streams is a secure mobile phone app that has been developed in collaboration with NHS clinicians, to address situations of ‘failure to rescue’ (when the right nurses or doctors fail to reach the relevant patients in time). Statistically failure to rescue is responsible for the deaths of thousands of patients by sepsis and acute kidney injury. Streams became part of Google Health in November 2018.

DeepMind applied to register the mark for the app with the European Union Intellectual Property Office (‘EUIPO’) in various classes including class 9 (“computer software for accessing and viewing patient medical information”) and class 42 (“application service provider (ASP) featuring computer software for accessing and viewing patient medical information”. 

Background information

Google Inc filed the European trade mark application for the mark STREAMS’ in February 2016. The trade mark was later assigned to DeepMind (a British artificial intelligence company) to register. However, the application was refused by the EUIPO examiner for the following reasons:

1)      A lack of distinctiveness under article 7(1)(b) of the European Union Trade Mark Regulation (‘EUTMR’); and

2)      A finding of descriptiveness under article 7(1)(c) of the EUTMR.

Article 7(1) (b)

The above article comes under the absolute grounds for refusal for trade marks under European law. It states the following:

“1.   The following shall not be registered:

Article 7(1)(c)

The above article comes under the absolute grounds of refusal for trade marks under European Law.  It states the following:

“1.   The following shall not be registered:

In regard to the above point made in connection with article 7 (1) (b), it was found that the word ‘STREAMS’ was descriptive of the process/ service that DeepMind was providing through the mobile app.

DeepMind appealed to the First Board of Appeal (‘the Board of Appeal’) and offered the following limitation to the specification: “excluding computer software for use in streaming media, video content or data over the Internet”.  The Board of Appeal considered the above proposed limitation and decided that it was conditional and thus inadmissible. Furthermore, the Board of Appeal had reasoned that the limitation would not have made a difference.

After the Board of Appeal’s decision, DeepMind submitted an alternative limitation (“computer software for use in streaming medical information”) to the EUIPO. However, it was rejected before the matter came to the General Court.

DeepMind appealed to the General Court and its appeal was dismissed last month.

DeepMind argued that the Board of Appeal had erred in its judgment for the following reasons:

1)      the relevant section of the public would understand that a data streaming device/ service provided transient access to data;

2)      the Board of Appeal had ignored the fact that the goods/ services (the provision of patient data) only works by offering access to patient’s data on a permanent basis; and

3)      the Board of Appeal had failed to distinguish between the singular and plural forms of the word ‘stream’. DeepMind had argued that this was important as the plural form is not used in the context of access to computer data.

Furthermore, DeepMind argued that the EUIPO had contravened the principles of equal treatment, as it had previously accepted other EU trade mark registrations for the word STREAMS in classes 9 and 42.

The General Court’s decision

After considering the above arguments by DeepMind, the General Court came to the following conclusion:

1)      the relevant section of the public consisted of English-speaking healthcare professionals whom would possess sufficient knowledge of IT terminology;

2)      it was irrelevant whether a term is already used to describe a particular good/ service. The only relevant thing to be considered is whether the term could be used descriptively; and

3)      the Board of Appeal had relied upon dictionary definitions of the word stream in both the singular and plural form. These definitions alluded to a descriptive definition of the function/ service of the app. DeepMind had failed to provide any evidence against this.

Consequently, DeepMind’s proposed EU trade mark ‘STREAMS’ fell short of fulfilling the inherent functions of a trade mark.

By Fatima Amedu