CANCELLATION DIVISION
CANCELLATION No C 39 061 (INVALIDITY)
Cook Medical Technologies LLC, P.O. Box. 2269 750 Daniels Way, 47402 Bloomington, United States of America (applicant), represented by Wuesthoff & Wuesthoff Patentanwälte PartG mbB, Schweigerstr. 2, 81541 Munich, Germany (professional representative)
a g a i n s t
Karl Storz SE & Co. KG, Dr. Karl-Storz-Straße 34, 78532 Tuttlingen, Germany (EUTM proprietor), represented by Witte, Weller & Partner Patentanwälte mbB, Phoenixbau Königstr. 5, 70173 Stuttgart, Germany (professional representative).
On 26/02/2021, the Cancellation Division takes the following
DECISION
1. |
The application for a declaration of invalidity is partially upheld. |
The applicant filed a request for a declaration of invalidity against European Union trade mark No 14 719 611 ‘SPECTRA’ (word mark) (the EUTM), filed on 22/10/2015 (with priority from 28/04/2015) and registered on 27/11/2018. The request is directed against some of the goods covered by the EUTM, namely:
Class 9: Stereoscopes; Stereoscopic apparatus; Industrial endoscopes.
Class 10: Acupuncture needles; Artificial respiration apparatus; Nursing appliances; Apparatus for the treatment of deafness; Microdermabrasion apparatus; Instrument cases for use by surgeons and doctors; Respirators for artificial respiration; Feeding bottle receptacles; Basins for medical purposes; Receptacles for applying medicines; Teething rings; Blood testing apparatus; Bougies for surgery; Artificial breasts; Incubators for medical purposes; Incubators for babies; Surgical apparatus and instruments; Surgical implants comprised of artificial materials; Surgical cutlery; Suture needles; Sponges (Surgical -); Surgical mirrors; Defibrillators; Surgical bougies; Dialyzers; Drainage tubes for medical use; Insufflators; Electric acupuncture instruments; Electrodes for medical use; Endoscopes for medical use; Finger guards for medical purposes; Feeding bottle teats; Dental burs; Galvanic belts for medical purposes; Galvanic therapeutic appliances; Gastroscopes; Uterine syringes; Cattle (Obstetric apparatus for -); Obstetric apparatus; Forceps; Hearing protection devices; Body cavities (Appliances for washing -); Urinals [vessels]; Urethral probes; Urethral syringes; Invalids' hoists; Cardiac stimulators; Hearing aids; Ear trumpets; Corn knives; Injection syringes; Inhalers; Injectors for medical purposes; Incubators for babies; Douche bags; Enema apparatus for medical purposes; Cannulae; Castrating pincers; Catgut; Catheters; Cases fitted for use by surgeons and doctors; Ambulance stretchers; Draw-sheets for sick beds; Artificial eyes; Artificial limbs; Artificial skin for surgical purposes; Artificial jaws; Lenses [intraocular prostheses] for surgical implantation; Artificial teeth; Lamps for medical purposes; Lancets; Spoons for administering medicine; Masks for use by medical personnel; Medical guidewires; Spoons for administering medicine; Knives for surgical use; Breast pumps; Commode chairs; Needles for medical purposes; Anaesthetic apparatus; Anaesthetic masks; Non-chemical contraceptives; Ear picks; Ear plugs [ear protection devices]; Operating tables; Pessaries; Balling guns; Condoms; Artificial limbs; Pulse meters; Pulse measuring devices; Pumps for medical purposes; Quartz lamps for medical purposes; Radiological apparatus for medical purposes; Fumigation apparatus for medical purposes; Saws for surgical purposes; Feeding bottle receptacles; Feeding bottle valves; Scissors for surgery; Surgical splints; Dummies for babies; Cupping glasses; Love dolls [sex dolls]; Scalpels; Probes for medical purposes; Containers especially made for medical waste; Spirometers [medical apparatus]; Medical syringes; Spittoons for medical purposes; Bed pans; Stents; Stethoscopes; Thermometers for medical purposes; Veterinary apparatus and instruments; Stretchers, wheeled; Trocars; Droppers for medical purposes; Dropper bottles for medical purposes; Incontinence sheets; Abdominal pads; Urological apparatus and instruments; Vaginal syringes; Sprayers for medical purposes; Bed vibrators; Hydrostatic beds for medical purposes; Resuscitation apparatus; Brushes for cleaning body cavities; Surgical staples; Dental apparatus and instruments; Dental apparatus, electric; Mirrors for dentists; Dental examination chairs; Dental prostheses; Orthodontic apparatus; Pins for artificial teeth; Nebulizers for medical use; Tongue scrapers; Strait jackets.
The applicant invoked Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that the contested trade mark was already partially declared to be descriptive and non-distinctive by the Board of Appeal after the examination of absolute grounds for refusal during the process of registration. It contends that the EUTM is also descriptive for contested goods, which have the same characteristics described by the trade mark. It explains that the word ‘spectra’ is the plural form of the word ‘spectrum’, and submits its meanings according to the Collins dictionary. The applicant puts forward specific arguments regarding the individual products contained in the specification of the EUTM, which will be reproduced and assessed below. They are mainly two-fold: according to the applicant, some of the contested goods can use specific sections of electromagnetic spectrum to fulfill their functions, and others cover wide spectrum of certain aspects or are designed for a wide spectrum of clients/patients. It submits the following documents to support its arguments:
Annex 1: decision of the Fourth Board of Appeal of 25/04/2017 in case R 1501/2016-4.
Annex 2: excerpt from the Collins dictionary regarding the word ‘spectrum’.
Annex 3: excerpt from Wikipedia regarding ‘instruments used in general surgery’ and ‘laser surgery’.
Annex 4: the EUTM proprietor’s catalogue in which it is explained that a product under the name ‘SPECTRA’, as an innovative visualization tool for surgery and diagnosis by shifting the color spectrum, makes it easier to differentiate between tissue types because the color spectrum is altered.
Annex 5: excerpt from the website of the Urology Care Foundation, www.urologyhealth.org, containing an explanation of ‘urologic radiology’.
Annex 6: a printout from www.siemens-healthineers.com containing product information about urological X-ray apparatus.
Annex 7: excerpt from Wikipedia regarding ‘dental radiography’.
Annex 8: printouts from www.kavo.com where dental X-ray machines are displayed.
Annex 9: excerpts from Wikipedia regarding ‘blood test’.
Annex 10: excerpt from Wikipedia regarding ‘hearing aid’.
Annex 11: excerpt from Merriam-Webster Medical Dictionary regarding ‘quartz lamp’.
Annex 12: printout from https://jamanetwork.com containing an abstract of the article ‘Quartz light therapy in skin diseases’.
Annex 13: printout from www.medicinet.com containing a definition of endoscopy, printout from www.cancer.gov containing a definition of ureteroscopy and printout from https://medical-dictionary.thefreedictionary.com regarding the definition of ureterorenoscope.
Annex 14: excerpts from Merriam-Webster Medical Dictionary regarding gastroscope.
Annex 15: printout from www.karlstorzndtec.com with product description of a videoscope.
Annex 16: excerpt from Wikipedia regarding ‘radiology’.
The EUTM proprietor argues that the Board already found that the EUTM fulfills the registration requirements for the contested goods. It provides a definition of the word ‘spectra’ (and submits an excerpt from www.dictionary.com to this effect), and contends that an unambiguous conceptual content of the word ‘spectrum’ or the plural form ‘spectra’ can only be obtained by specifying what kind of spectra it is referred to, e.g. a light spectrum, an electromagnetic spectrum, an X-ray spectrum. Without such explanation, according to the EUTM proprietor, the term remains vague as to what kind of spectrum is meant. It puts forward that it may be the case that light, electromagnetic radiation or X-rays are measured or used in relation to some of the contested goods but in order to derive a descriptive meaning form the indication ‘spectra’ to such devices, a large number of mental steps is required. The EUTM proprietor is of the opinion that the relationship between the word ‘spectra’ and the contested goods is not sufficiently direct and specific for the mark to fall under the specification of Article 7(1)(c) EUTMR. Moreover, the EUTM proprietor rejects some of the applicant’s arguments regarding specific goods arguing that although radiography tools are used in some medical fields such as dentistry or urology, such radiological imaging tools are not considered dental or urological apparatus or instruments. Regarding the applicant’s arguments that the contested mark describes the fact that some of the contested goods cover a wide spectrum of certain features, the EUTM proprietor argues that a high degree of imagination and lots of mental steps would be required to come to such conclusions. For some of the goods, the EUTM proprietor argues that it is not even clear what particular characteristics of the products are described by the word ‘spectra’, according to the applicant. Furthermore, it explains that the definitions given by the applicant of endoscopes do not in fact describe endoscopes. It concludes that if the applicant needs a full page to explain why consumers will establish, without further thought, a direct and specific relationship between the goods and the trade mark, it is evident that such a relationship does not exist.
The applicant puts forward that the meaning of ‘spectra’ is not only that in the field of physics and that all its meanings have to be taken into account. It argues that the relevant public for the majority of the contested goods are medical professionals. It reiterates its previous arguments and insists that certain contested goods function by use of electromagnetic radiation over a broader spectrum, that is, using ‘spectra’. It describes the principles of functioning of some medical instruments in more detail. It maintains that the reasoning of the Board of Appeal in the above-mentioned decision applies to many of the contested goods. It analyses some of the contested goods individually and maintains its previously expounded position. It submits two more documents to further support its arguments:
Annex 17: printout from www.bostonscientific.com where a digital ureteroscope is displayed among urology products.
Annex 18: printout from www.dentistryiq.com containing an article dated in 21/09/2018 entitled ‘Why Every Office Needs a Dental Endoscope’.
The EUTM proprietor submits a Wikipedia excerpt regarding ‘spectrum’ and argues that this term can be used in many fields and a further specification is needed to identify any specific concept it can have. It claims that the word is inherently characterized by a lack of clarity since it relates to any values that can vary within a continuum. It puts forward that the applicant does not make an attempt to interpret the nature of goods from an objective point of view but makes efforts with the aim of finding atypical goods falling under the respective generic term, to which a descriptive meaning of the word ‘spectra’ can be assigned due to their non-conformity with the prototype of the respective goods. It reiterates it previous arguments regarding the individual contested goods and maintains that the contested mark does not refer to any essential characteristic of those categories of goods. It concludes that the application should be rejected.
ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 7 EUTMR
According to Article 59(1)(a) and (3) EUTMR, a European Union trade mark will be declared invalid on application to the Office, where it has been registered contrary to the provisions of Article 7 EUTMR. Where the grounds for invalidity apply for only some of the goods or services for which the European Union trade mark is registered, the latter will be declared invalid only for those goods or services.
Furthermore, it follows from Article 7(2) EUTMR that Article 7(1) EUTMR applies notwithstanding that the grounds of non‑registrability obtain in only part of the Union.
As regards assessment of the absolute grounds of refusal pursuant to Article 7 EUTMR, which were the subject of the ex officio examination prior to registration of the European Union trade mark, the Cancellation Division, in principle, will not carry out its own research but will confine itself to analysing the facts and arguments submitted by the parties to the invalidity proceedings.
However, restricting the Cancellation Division to an examination of the facts expressly submitted does not preclude it from also taking into consideration facts that are well known, that is, that are likely to be known by anyone or can be learned from generally accessible sources.
Although these facts and arguments must date from the period when the European Union trade mark application was filed, facts relating to a subsequent period might also allow conclusions to be drawn regarding the situation at the time of filing (23/04/2010, C-332/09 P, Flugbörse, EU:C:2010:225, § 41 and 43).
It is settled case-law that each of the grounds for refusal to register listed in Article 7(1) EUTMR is independent and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them. The general interest to be taken into consideration must reflect different considerations according to the ground for refusal in question (16/09/2004, C‑329/02 P, SAT.2, EU:C:2004:532, § 25).
DESCRIPTIVENESS – ARTICLE 7(1)(c) EUTMR
Under Article 7(1)(c) EUTMR, ‘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.
By prohibiting the registration as EU trade marks of the signs and indications to which it refers, Article 7(1)(c) EUTMR 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 (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 31).
According to settled case-law, the signs and indications referred to in Article 7(1)(c) EUTMR are those which may serve in normal usage, from a consumer’s point of view, to designate, either directly or by reference to one of their essential characteristics, goods such as those in respect of which the contested mark is registered (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 24).
In accordance with case-law, for a sign to be caught by the prohibition set out in Article 7(1)(c) EUTMR, there must be a sufficiently direct and specific relationship between the sign and the goods in question to enable the public concerned immediately to perceive, without further thought, a description of the goods in question or one of their characteristics (22/06/2005, T‑19/04, Paperlab, EU:T:2005:247, § 25). Moreover, in order to be caught by Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark actually be in use at the time of the application for registration in a way that is descriptive but it is sufficient that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).
The existence of the above mentioned relationship must be assessed, first, in relation to the goods or services in respect of which registration of the sign is sought and, second, in relation to the perception of the section of the public targeted, which is composed of the consumers of those goods or services (27/11/2003, T‑348/02, Quick, EU:T:2003:318, § 29).
The contested goods target medical professionals (most of the goods in Class 10), general public (some of the goods in Class 10, for example condoms, dummies for babies or love dolls [sex dolls]) and professionals in industry (goods in Class 9).
The contested mark is composed of an English word. The evidence and arguments submitted by the applicant refer to the meaning of the sign in English and to its use in English-speaking environment. The Cancellation Division will focus the assessment on the perception of the English-speaking public of the European Union.
As the Board of Appeal mentioned in the decision referred to by the applicant (25/04/2017, R 1501/2016-4, SPECTRA, § 10), English‑speaking members of the public targeted will read the sign ‘SPECTRA’ as the plural of the English word ‘spectrum’. This word has a number of dictionary definitions. From those, the applicant relied on the meaning of
1) the entire range of wavelengths (or frequencies) of electromagnetic radiation, from the longest radio waves to the shortest gamma rays of which the range of visible light is only a small part; any one part of this larger range
2) the entire range or extent of something, arranged by degree, quality, etc.
Both definitions are from Oxford English dictionary online, www.oed.com.
The Cancellation Division will assess the registrability of the trade mark in relation to the individual contested goods as per the arguments of the applicant.
The applicant correctly points out that the Board in the decision referred to above (25/04/2017, R 1501/2016-4, SPECTRA) already decided that the contested trade mark is descriptive in relation to veterinary apparatus and instruments, because the relevant public will perceive the indication ‘spectra’ as a specific reference to the type of device indicating that it uses parts of electromagnetic spectrum such as laser or X-rays (25/04/2017, R 1501/2016-4, SPECTRA, § 13). However, due to an oversight, the mark was registered for these goods. This was corrected by the Office pursuant to Article 102 EUTMR, the correction was registered on 19/02/2021 and the EUTM proprietor was notified of the correction and the modified list of goods on 22/02/2021. Therefore, at the time of taking of this decision, the contested mark is not registered for veterinary apparatus and instruments.
The applicant claims that the same reasons as those given by the Board for the veterinary apparatus and instruments apply to surgical apparatus and instruments, because also these goods may be used either to analyse the range of electromagnetic radiation or enable the emission of different spectra of electromagnetic radiation. It gives examples of surgical apparatus and instruments that use parts of electromagnetic spectrum. The applicant submitted excerpts from Wikipedia regarding surgical apparatus (Annex 3), among which e.g. a vessel sealing device is displayed that uses radio frequency energy to weld the tissue. It also submitted Wikipedia excerpt regarding laser surgery (also Annex 3). Indeed, laser scalpels must be considered surgical apparatus and they do use parts of electromagnetic spectrum, laser, to operate. Finally, the applicant also submitted a part of the EUTM proprietor’s catalogue (Annex 4), in which a tool is presented under the title ‘Innovative Visualisation Tools for Surgery and Diagnosis by Shifting the Color Spectrum’ and it is explained that the product allows recognition of the finest tissue structures by filtering out the red portions of the visible spectrum and expanding the remaining colour portions. This would indeed be an apparatus the essential characteristic of which is directly connected to a specific part of the electromagnetic spectrum, as its function is based on distortion of the visible light spectrum.
The EUTM proprietor argues that the product in its catalogue is software and not a surgical apparatus or instrument. However, from the product catalogue it appears that it is a camera system used in connection with endoscopes. In any event, there is nothing to indicate that this would be a software product offered as such that could be installed in different hardware but it is advertised as a visualisation tool for surgery and diagnosis. Therefore, even if the tool uses software to function, it is marketed together with the hardware and has to be considered to be an actual medical tool.
The EUTM proprietor also argues that the applicant is not looking for objective characteristics of the contested goods but makes systematic efforts to find exceptions among the categories and fit them into its purpose. However, when a trade mark is registered for a broad category within which products for which the trade mark is descriptive exist, and the owner of the trade mark did not make a limitation excluding such products from the broad category, the trade mark must be refused registration for the entire broad category. In the present case, it is clear that products for which the mark is descriptive exist within the category of surgical apparatus and instruments, and this is supported by the EUTM proprietor’s own marketing of the goods.
Considering all the above, it must be concluded that the contested trade mark is descriptive also for surgical apparatus and instruments and scalpels, because it will be perceived, by the relevant public consisting of medical professionals, as a reference to the nature of the specific device which uses certain spectra of the entire electromagnetic range for its operation.
The same arguments are presented by the applicant as regards industrial endoscopes; endoscopes for medical use and gastroscopes. It submits excerpts from online medical dictionaries regarding specialised endoscopes such as ureteroscope or ureterorenoscope (Annex 13). Endoscopes are tools, normally thin tubes with a powerful light and a camera at their end, used for exploring of places or objects that would be impossible to reach otherwise without larger disruptions. Medical endoscopes are used for exploring the interior of a human body for medical reasons, industrial endoscopes are used for inspecting other objects, for example the inside of walls, pipes, motors, machine components, etc. Gastroscope is a type of endoscope specialised for inspecting the interior of the stomach (Annex 14).
The excerpt from the EUTM proprietor’s catalogue is again relevant as far as these goods are concerned. Despite the EUTM proprietor’s claims that the product at issue is software, as explained above, there is nothing to suggest that this is an independent software product. It is marketed as a tool for visualisation and in connection with an endoscope camera system. The camera is the technologically most important part of an endoscope and in the age of digital cameras, it is inevitable that the entire product is governed by software. This does not, however, mean, that the product is a software product rather than an endoscope camera. It indicates there are types of endoscopes the special feature of which is to distort the visible light spectrum with the aim to improve visibility. Moreover, spectroscopy is sometimes used for diagnosis during endoscopy. While spectroscopy may be mostly known as a popular and rather fascinating method for measuring the movement of celestial bodies in relation to the Earth, it is also used in medicine for tissue analysis and imaging. Spectral diagnostic may be used in relation to endoscopy and some technologies of diagnostic spectroscopies may be incorporated in endoscopic instruments. In other words, when the relevant medical professionals encounter the sign ‘spectra’ in endoscopes or gastroscopes, they are likely to assume that this is an indication that the particular device may be specifically designed to use spectroscopy for the imaging or that it otherwise works with the electromagnetic spectrum, e.g. the abovementioned visible light spectrum distorting apparatus. The same applies to the industrial endoscopes. In addition, as regards the industrial endoscopes, as shown by an excerpt from the EUTM proprietor’s website (Annex 15), these products may also be designed to be available for UV inspection and in infrared versions, thus showing another relationship with specific smaller spectra within the broad entire electromagnetic radiation range. In the latter case, the mark may be again perceived as an indication of a type of device that works with different spectra or enables different spectra visualization.
Consequently, the contested trade mark is also descriptive for industrial endoscopes; endoscopes for medical use and gastroscopes.
According to the applicant the mark is also descriptive in relation to urological apparatus and instruments; dental apparatus and instruments; dental apparatus, electric, because these goods include apparatus and instruments using X-rays. To this effect, it submitted Annexes 5 to 8 which include excerpts from several websites showing connections between radiology and urological and dental apparatus and instruments. The website www.urologyhealth.com offers a description of ‘urologic radiology’ which includes ways to look inside organs using imaging tools from basic x-rays to more complex tools. The website of Siemens displays a section on ‘urology equipment’ and presents X-ray systems such as X-ray imaging machines specifically designed for use by urologists. The Wikipedia contains specific page for ‘dental radiography’ and describes ‘dental radiographs’, X-ray machines for dentists. The applicant also submitted a website of a company KaVo which offers dental X-ray machines. Moreover, endoscopes are often used in urology, and specific endoscopes such as ureteroscope or ureterorenoscope for these purposes exist, as shown by Annexes 13 and 17. Annex 18 shows that specific endoscopes are also designed for use by dentists.
The EUTM proprietor argues that such apparatus would not be considered urological or dental apparatus or instruments but would be considered radiological apparatus. However, the Cancellation Division notes that nothing prevents such devices to belong to both categories. It was sufficiently shown by the applicant that specific X-ray machines and endoscopes are designed for use specifically by dentists and urologists. Such products will be presented and marketed to urologists and dentists, respectively, as well as to radiologists, or in some cases maybe even exclusively to urologists and dentists. They will be sold to urology and dental clinics and used by these specialists. Therefore, this EUTM proprietor’s argument must be dismissed and it is concluded that the above mentioned categories of contested goods do include X-ray apparatus and instruments and endoscopes.
The Board of Appeal already decided that the contested mark is descriptive for X-ray apparatus and instruments for the same reasons as explained above (25/04/2017, R 1501/2016-4, SPECTRA, § 13) and it was also concluded above that the trade mark is descriptive in relation to medical endoscopes. It follows from this and the fact that such apparatus and instrument are included in urological apparatus and instruments; dental apparatus and instruments; dental apparatus, electric, that the contested mark also falls short of the requirements of Article 7(1)(c) EUTMR as far as these goods are concerned.
The same applies for radiological apparatus for medical purposes. These apparatus include X-ray machines and machines for magnetic resonance imaging (MRI). The Board already declared the contested trade mark descriptive for these goods because they use certain spectra of electromagnetic radiation (such as X-rays), using magnetic resonance imaging as an example, as machines based on nucleic excitation by means of long-wave magnetic radiation. The Board concluded that the relevant public will read the sign ‘spectra’ in connection with X-ray apparatus and other medical apparatus such as the mentioned MRIs as a specific reference to the type of device (25/04/2017, R 1501/2016-4, SPECTRA, § 13). It is clear that this must be applied also to radiological apparatus for medical purposes.
Finally, the applicant correctly points out that the Board of Appeal already rejected the mark for ultraviolet lamps for medical purposes because these goods enable the emission of certain spectrum of electromagnetic radiation (25/04/2017, R 1501/2016-4, SPECTRA, § 13 and 14). The Cancellation Division has to agree with the applicant in that the contested lamps for medical purposes are a broad category that includes ultraviolet lamps for medical purposes and, therefore, the same reasoning applies to these goods. Moreover, according to Merriam-Webster Medical Dictionary, a quartz lamp is a mercury-vapor lamp in a tube of quartz glass that transmits most of the ultraviolet radiation (Annex 11). Consequently, the contested quartz lamps for medical purposes may be considered a type of ultraviolet lamps and they are also goods the purpose of which is to transmit a certain specific spectrum (ultraviolet) of the entire electromagnetic one. Therefore, the Board’s reasoning applies to these contested goods as well and it must be concluded that the contested trade mark is also descriptive for these goods.
The Cancellation Division therefore concludes that, from the viewpoint of the public addressed, there is a sufficiently clear and specific relationship between the word mark ‘SPECTRA’ and the abovementioned contested goods, and therefore, the mark has been registered contrary to the provision of Article 7(1)(c) EUTMR in relation to these goods. All of the abovementioned goods may either have a specific function based on certain spectra within the entire range of electromagnetic radiation, or enable the emission of different ranges of electromagnetic radiation with respect to their wavelength or frequency.
Although the documents submitted by the applicant are not dated before the time of filing/priority of the contested mark (22/10/2015 / 28/04/2015), they contain a rather general information unlikely to have changed since that time. Moreover, as stated above, to refuse to register a trade mark under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications, of which the mark is comprised, need actually to be in use at the time of the application for registration in a way that is descriptive of the goods or services, or of characteristics of those goods or services. It is sufficient, as the wording of that provision (Article 7(1)(c) EUTMR) indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (23/10/2003, C‑191/01 P, Doublemint, EU:C:2003:579, § 32).
The EUTM proprietor argues that the Board already assessed the registration criteria for the contested trade mark and decided that they are fulfilled as regards the goods for which the mark is now registered. In fact, with the exception of veterinary apparatus and instruments (for which the Board already rejected the trade mark in the previous proceedings), the Board did not assess registrability of the contested goods. It merely decided on the appeal filed by the EUTM proprietor and the scope of the examination covered only those goods that were objected to by the examiner in the first instance. Therefore, the Board did not decide on the registrability of the goods contested in these proceedings (with the exception of veterinary apparatus and instruments).
The EUTM proprietor also argues that the word ‘spectra’ is on its own too vague and that a name of the particular spectrum would have to be specified in order to give a sufficiently specific concept to the mark. The Cancellation Division considers, in view of the previously referred to decision of the Board of Appeal, that the context to the word is provided by the individual goods. In connection with the abovementioned contested goods, it will be evident, for the relevant public, that the spectra at issue are specific sections of the electromagnetic spectrum.
Furthermore, the applicant argues that the contested mark is descriptive for blood testing apparatus because ‘blood test results should always be interpreted using the ranges provided by the laboratory that performed the test’. The applicant relies on the meaning of ‘range’ of the word ‘spectrum’ here. It is true that results of blood analysis are given in the context of ranges of acceptable values for each aspect analysed. However, this does not relate to any feature of the blood testing apparatus but it is the result of a convention of laboratories that indicate such ranges with the aim to make the results of the analysis understandable and its interpretation possible even to a laic. It is not clear what characteristic the word ‘spectra’ could describe in relation to these contested goods. The figures showing what is a low and high value for each substance analysed, which are normally shown in the blood testing results, are created and agreed on by medical experts and added by the laboratories for information purposes, without any involvement of the blood testing apparatus. Therefore, the applicant failed to show that there is a sufficiently direct and specific connection between the contested mark and these contested goods.
The applicant also contends that the contested mark is descriptive for artificial eyes; lenses (intraocular prostheses) for surgical implantation because these products are only useful if they cover the correct light spectrum and the mark will be perceived as an indication pointing to the fact that they do cover the correct spectrum. The Cancellation Division notes that unless the relevant public operates in a fantasy or extraterrestrial environment, it goes without saying that these artificial eyes and lenses function for the purpose of seeing the visible light. This is indeed a specific spectrum within the entire electromagnetic range, but the applicant provided no evidence that any such products that would be intended to function for other sub-spectra exist. There are no artificial eyes or lenses that would enable their wearers to detect X-rays, gamma rays or microwaves. Therefore, from the perspective of the relevant public, the information that these contested goods are designed for seeing the visible light is irrelevant as this is true for all these products. Moreover, the term ‘spectra’ does not even convey this information. Since there are no different types of artificial eyes or lenses with regard to the type of light they enable to see, it is not likely that the relevant public would associate the term ‘spectra’ with the indication that the goods function within a certain spectrum of light. It is also not clear what other information, that would be sufficiently direct and specific, this word could convey in relation to these goods.
Finally, the applicant argues that the contested mark is descriptive for the remaining contested goods. The applicant relies on the meaning of the word ‘spectrum’ in the sense of ‘continuous range or entire extent’. It argues that as regards hearing aids and related goods, the mark will be perceived as that the goods cover the relevant range of sound frequencies, regarding cardiac stimulators; defibrillators; electrodes for medical use, that the mark indicates that the goods cover certain range of electrical current strength and voltage, as regards pulse meters and thermometres, that the mark indicates that the goods make use of the spectrum of possible pulse frequencies and possible body temperatures and that the goods may analyse a range of figures and, finally, as far as the rest of the contested goods is concerned, that the mark indicates that the goods are offered in a wide range of sizes and specifications. The characteristics that the applicant relies on are common to the vast majority of the products in general. Essentially all the products are available in more sizes and/or specifications, meters measure values in different ranges, electric goods cover certain types of electric current and hearing aids cover certain range of sound frequencies. The consumers are aware of that and they either do not expect such information to be explicitly displayed on products or they are used to the common ways of transmitting such information. By way of example, should a hearing aid only be available for certain frequencies, this should be specifically indicated as values of those frequencies. The electric goods will have specific indications as to the voltage and meters will show the minimum and maximum value which they are able to measure. To use the word ‘spectra’ to indicate that goods are provided in different sizes or specifications or to indicate that the goods relate to a certain unspecified range, is neither common nor sufficiently specific. The relevant public will not expect that this word indicates such information and in any event, the link between the word ‘spectra’ and the above described characteristics is not sufficiently clear and unambiguous. The word, in its meaning of ‘range’, is rather vague and to relate it to the above information requires a mental determination and a motivation to find some connection, as opposed to a natural perception of the mark. The Cancellation Division considers that the relevant public is not likely to associate, without further thought, the trade mark with any of the indications referred to by the applicant. The relationship between the mark and these goods is not sufficiently direct and specific as to declare the trade mark descriptive in relation to them.
Non-distinctiveness – Article 7(1)(b) EUTMR
According to case-law, the signs referred to in Article 7(1)(b) EUTMR are signs which are regarded as being incapable of performing the essential function of a trade mark, namely that of identifying the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (27/02/2002, T‑79/00, Lite, EU:T:2002:42, § 26).
A word mark which is descriptive of characteristics of the goods in an immediately discernible manner is, on that account, necessarily also devoid of any distinctive character (12/02/2004, C‑265/00, Biomild, EU:C:2004:87, § 19). Therefore, the mark was also registered contrary to the provision of Article 7(1)(b) EUTM as regards the contested goods for which the mark was found descriptive.
On the other hand, as far as the goods for which the mark was not found descriptive are concerned, the applicant’s arguments regarding lack of distinctiveness of the EUTM are the same as those mentioned above and they are based on the assumption that the contested sign is descriptive. However, as has been seen above, descriptiveness of the contested sign for some of the goods mentioned above cannot be concluded. Therefore, no lack of distinctiveness of the contested EUTM can be affirmed on account of its alleged descriptiveness as regards those goods.
Conclusion
The contested mark was descriptive pursuant to Article 7(1)(c) EUTMR and non-distinctive pursuant to Article 7(1)(b) EUTMR in relation to the some of the contested goods at the time of its filing and priority date.
In light of the above, the application is partially successful insofar as it is directed against the following goods:
Class 9: Industrial endoscopes
Class 10: Surgical apparatus and instruments; Endoscopes for medical use; Gastroscopes; Lamps for medical purposes; Quartz lamps for medical purposes; Radiological apparatus for medical purposes; Scalpels; Urological apparatus and instruments; Dental apparatus and instruments; Dental apparatus, electric.
Therefore, the contested trade mark must be declared invalid for these contested goods.
The application is not successful insofar as the remaining goods are concerned.
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.
Since the cancellation is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Cancellation Division
Martin LENZ |
Michaela SIMANDLOVA |
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 has been paid.
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