General Court refuses DeepMind's trade mark for STREAMS

January was already a great month for avid watchers of (i) the IP filing activities of Google’s DeepMind; and (ii) CJEU judgments dealing with descriptive trade marks for software. Now, presumably as part of a 2-for-1 deal, the General Court has refused DeepMind’s application to register an EUTM for STREAMS (Case T-97/18 DeepMind Technologies Ltd v EUIPO).

In February 2016, Google Inc. filed an application (later assigned to DeepMind) to register STREAMS, for the following goods and services:

• Class 9: “Computer software for accessing and viewing patient medical information”; 
• Class 42: “Application service provider (ASP) featuring computer software for accessing and viewing patient medical information”. 

Streams is a mobile app developed by DeepMind in collaboration with NHS clinicians. The aim is to use patient data to allocate hospital resources more effectively, in order to reduce the rate of preventable deaths from conditions such as sepsis and acute kidney injury (AKI) – so-called “failure to rescue”. The software is currently in use at the Royal Free and Imperial College Healthcare NHS Trusts. Somewhat controversially, Streams became part of Google Health in November 2018.

Not a huge fan of streams

DeepMind’s application was refused by the Examiner on the basis of (i) lack of distinctiveness (Article 7(1)(b) EUTMR); and (ii) descriptiveness (Article 7(1)(c)). DeepMind appealed to the First Board of Appeal. DeepMind offered to limit the specification (“excluding computer software for use in streaming media, video content or data over the Internet”) should the Board of Appeal be minded to dismiss the appeal. The Board of Appeal deemed the proposed limitation to be inadmissible, because it was conditional (and noted that the limitation would not have made a difference anyway). DeepMind’s arguments regarding distinctiveness and descriptiveness were also batted away.

Not to be deterred, DeepMind appealed to the General Court. On 31 January 2019, the Court dismissed the appeal.

DeepMind had submitted to the EUIPO an alternative limitation – excluding “computer software for use in streaming medical information” – after the Board of Appeal’s decision. This limitation application was rejected before the General Court considered the case, so the point became moot. The Court nevertheless noted its scepticism regarding the admissibility of the limitation.

Islands in the stream(s)

The most interesting aspect of the judgment is the General Court’s reaction to DeepMind’s arguments regarding descriptiveness. DeepMind argued 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:

1. The relevant public would understand that a data streaming device or service provides transient access to data; 
2. The Board of Appeal ignored the fact that the goods/services in question (i.e. the provision of patient medical data) can only work by offering access to patient data on a permanent (non-transient) basis; and
3. The Board of Appeal failed to distinguish between the singular and plural forms of the word “stream”; the plural form is not used in the context of access to computer data (and, relatedly, the Board of Appeal should not have relied solely on dictionary definitions of the word “stream”). 

Following the recent EZMIX decision [IPKat report linked above], the General Court proved itself just as tech-savvy as the CJEU. After the usual blast through the relevant legal principles, the General Court dismissed DeepMind’s arguments:

• The relevant public for these purposes comprised English-speaking healthcare professionals with sufficient knowledge of IT terminology.
• It does not matter whether a term is already used to describe a particular good or service; what matters is whether the term could be used descriptively. 
• The dictionary definitions on which the Board of Appeal relied indicated that in the context of computing, the singular form of stream means “a continuous flow of data or instructions, in particular a flow with a constant or predictable rate”; and the Oxford English Dictionary demonstrated use of the plural form of “streams”, with the same meaning. DeepMind did not provide any evidence contradicting these findings.  
• The General Court did not offer a view on whether non-transient access to patient data is necessary in this context, but found that DeepMind had not proven that the relevant public would understand the word “streams” to mean access to transient sources of data only.  
• Per Article 7(2), descriptiveness in the eyes [and ears and minds] of the English-speaking public is enough to kill the EUTM in its entirety.  

The General Court therefore rejected the appeal, and did not see a need to consider DeepMind’s arguments regarding distinctiveness [although one suspects that the outcome would have been the same].

There were also a couple of interesting subsidiary points. First, DeepMind argued that the Board of Appeal had breached its duty to state the reasons for its finding that even if the proposed limitation to the specification had been permissible, this would not have affected the outcome. The General Court noted that this conclusion was added for the sake of completeness and was not operative, and therefore the failure to state reasons did not matter. Second, DeepMind argued that because the EUIPO had previously registered word marks for STREAMS and STREAM+ in classes 9 and 42, the Board of Appeal’s decision had breached the principles of equal treatment and sound administration of justice. This argument was given short shrift: these principles underline the importance of the EUIPO carefully assessing each application on its own merits. The General Court concluded that the EUIPO, as required, gave clear reasons for departing from its decisions regarding the earlier trade marks.

Sometimes life isn't fair

In too Deep? 

There is currently no indication whether DeepMind will appeal to the Court of Justice (it has two months to do so). Many in the IP world are eagerly watching DeepMind as it begins to harness and commercialise its AI development work more publicly. Its next move might give a clue as to DeepMind’s (and Google Health’s) strategic direction, and in particular their estimation of the value of devoting resources to the digital health / “medtech” sector.

For now, the General Court’s decision has averted, or at least postponed, what could have been some interesting arguments around whether providers of other digital health software are using the word “stream” (or perhaps “streaming”) in a descriptive sense or a trade mark sense…