Refusal of application for a Community trade mark

(Article 7 CTMR and Rule 11(3) CTMIR)

Alicante, 01/12/2015

VIERING, JENTSCHURA & PARTNER mbB

Grillparzerstraße 14

D-81675 München

ALEMANIA

Application No:	014393904
Your reference:	WZ60084
Trade mark:	Toothfilm
Mark type:	Word mark
Applicant:	Toothfilm Inc. 1F., No. 5, Lane 89, Sec. 1, Jinshan S. Rd. Taipei City 10056 TAIWÁN

I. The Office raised an objection on 24/07/2015 pursuant to Article 7(1)(b) and (c) and 7(2) CTMR because it found that the trade mark applied for is descriptive and devoid of any distinctive character, for the reasons set out in the attached letter.

II. The applicant submitted its observations on 24/09/2015, which may be summarised as follows:

1. A minor degree of stylisation is sufficient; a mark must purely describe the goods; a definite description of characteristics is required.

2. The examiner has taken one or more mental steps to arrive at his conclusion, ‘a thin flexible sheet that is applied to a tooth’ therefore the mark is not purely descriptive but sufficiently distinctive.

3. “Speaking trademarks” are common and admissible, i.e. “facebook”.

4. “Toothfilm” is an inventive word and has been granted trade mark protection in Taiwan and China.

5. The objection has not targeted the specific goods that could be descriptive, and some are not open to objection – the global assessment is too broad, and some limited terms could be acceptable.

6. The mark is not restricting other traders’ use.

7. The OHIM Office has accepted earlier ‘tooth’ marks – all of which have been properly accepted.

8. The trade do not analyse trademarks or separate them into their single components.

III. Pursuant to Article 75 CTMR, it is up to the Office to take a decision based on reasons or evidence on which the applicant has had an opportunity to present its comments.

Under Article 7(1)(c) CTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) CTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest underlying each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (judgment of 16/09/2004, C‑329/02 P, ‘SAT.1’, paragraph 25).

By prohibiting the registration as Community trade marks of the signs and indications to which it refers, Article 7(1)(c) CTMR

pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 31.)

‘The signs and indications referred to in Article 7(1)(c) [CTMR] are those which may serve in normal usage from the point of view of the target public to designate, either directly or by reference to one of their essential characteristics, the goods or service in respect of which registration is sought’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

After giving due consideration to the applicant’s arguments, the Office has decided to maintain the objection.

This is because the sign ‘Toothfilm’ is immediately perceived as meaning a thin flexible sheet applied to a tooth, or even a thin coating of any substance that can be applied to or coat a tooth. The Office respectfully disagrees that more than one step is required to be taken before an obvious and logical interpretation will be formed in the mind of the relevant consumer, and instead refers to the term as self-contained.

Both immediately, and without the need to dissect the mark into it’s individual constituent parts, the relevant consumer will understand that the term refers to a film applied to, or for coating, a tooth. The mark therefore remains directly descriptive of a tooth film for the goods that were the subject of the original objection.

Speaking trade marks can work as a badge of origin provided that they fulfil the criteria of a trade mark as set out in the Guidelines. In the example provided, ‘facebook’ it is difficult to ascertain when assessing the mark what a face book actually is. It may allude to a ‘book of or containing faces’ which would typically be called a directory or such like; the term ‘facebook’ therefore appears unusual and surprising enough to create a recognisable brand in the mind of the consumer. The mark in question here however, ‘Toothfilm’ fails this test and doesn’t possess that unusual surprising element to imbue it with sufficient distinctive character, and instead serves as an apt descriptor with a clearly comprehensible meaning a tooth film.

With regard the applicant’s claim that the word is an invented word, the Office acknowledges that the conjoined word or neologism applied for is not currently in the dictionary, however, the conjoining of two dictionary words to create a new meaningful term does not necessarily make the new term distinctive.

Since the trade mark at issue is made up of several components (a compound mark), for the purposes of assessing its distinctive character it must be considered as a whole. However, this is not incompatible with an examination of each of the mark’s individual components in turn (judgment of 19/09/2001, T‑118/00, ‘Tablette carrée blanche, tachetée de vert, and vert pâle’, paragraph 59).

A trade mark consisting of a neologism or a word composed of elements each of which is descriptive of characteristics of the goods or services in respect of which registration is sought is itself descriptive of the characteristics of those goods or services for the purposes of Article 7(1)(c) [CTMR], unless there is a perceptible difference between the neologism or the word and the mere sum of its parts: that assumes that, because of the unusual nature of the combination in relation to the goods or services, the neologism or word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts . (See judgment of 12/01/2005, joined cases T 367/02, T 368/02 and T 369/02, ‘SnTEM’, paragraph 32.)

In the present case, the words tooth and film have meaningful definitions that can be readily understood by the relevant consumer, and therefore in merely conjoining the two words no distinctive character has been added. The term as a whole will therefore immediately be understood in plain English language as ‘a thin flexible sheet that is applied to a tooth’ and no further though is required on the part of the consumer to reach this conclusion.

As regards the national decisions referred to by the applicant, according to case-law:

the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it is self-sufficient and applies independently of any national system … Consequently, the registrability of a sign as a Community mark must be assessed by reference only to the relevant Community rules. Accordingly, the Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark. That is so even if such a decision was adopted under national legislation harmonised with Directive 89/104 or in a country belonging to the linguistic area in which the word sign in question originated.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 47.)

‘In addition … references to national registrations conferred by Member States which do not have English as their language, where the sign may well be distinctive without necessarily being so throughout the Community, cannot be accepted as relevant in this case’ (judgment of 03/07/2003, T‑122/01, ‘BEST BUY’, paragraph 40).

The objection wording addressed only the pertinent goods that are affected by the objection. Although it may not appear at first impression that a ‘dental beaching gel’ or that ‘medicines for human or veterinary purposes’ would consist of a film applied to a tooth, when considering the meaning with regards a ‘coating’ for teeth above, then naturally a gel or medicine could be in the form of a tooth coating (film). In this regard I feel that the objectionable terms remain as per the previous report.

As regards the applicant’s argument that third parties, and more particularly its competitors, do not need to use the sign at issue to designate the goods to which the application relates, it must be observed that … the application of Article 3(1)(c) of Directive 89/104, which corresponds to Article 7(1)(c) [CTMR], does not depend on there being a real, current or serious need to leave a sign or indication free.

(See judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 39).

As you will note in the above, although the mark may not be restrictive of other traders’ use, it still does not preclude it from objection, as there may be a future requirement for use, and therefore a requirement to keep the term free.

As regards the applicant’s argument that a number of similar registrations have been accepted by OHIM, according to settled case‑law, ‘decisions concerning registration of a sign as a Community trade mark … are adopted in the exercise of circumscribed powers and are not a matter of discretion’. Accordingly, the registrability of a sign as a Community trade mark must be assessed solely on the basis of the CTMR, as interpreted by the Community judicature, and not on the basis of previous Office practice (judgment of 15/09/2005, C‑37/03 P, ‘BioID’, paragraph 47 and judgment of 09/10/2002, T‑36/01, ‘Surface d’une plaque de verre’, paragraph 35).

‘It is clear from the case-law of the Court of Justice that observance of the principle of equal treatment must be reconciled with observance of the principle of legality according to which no person may rely, in support of his claim, on unlawful acts committed in favour of another’ (judgment of 27/02/2002, T‑106/00, ‘STREAMSERVE’, paragraph 67).

IV. For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) and 7(2) CTMR, the application for Community trade mark No 14 393 904 is hereby rejected for the following goods:

Class 03 Stain removers; dentifrices; color-removing preparations; colour-removing preparations; toiletries; bleaching preparations [decolorants] for cosmetic purposes; preparations for cleaning dentures; dental bleaching gels; breath freshening strips; deodorants for pets; douching preparations for personal sanitary or deodorant purposes [toiletries].

Class 05 Dental abrasives; adhesives for dentures; antiseptics; pharmaceutical preparations; dressings, medical; surgical dressings; gelatine for medical purposes; germicides; sterilising preparations; veterinary preparations; adhesive bands for medical purposes; adhesive tapes for medical purposes; medicines for dental purposes; medicines for human purposes; medicines for veterinary purposes; disinfectants.

The application is accepted for the remaining goods.

According to Article 59 CTMR, you have a right to appeal this decision. According to Article 60 CTMR, notice of appeal must be filed in writing with the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

Richard PRYCE