Refusal of application for a European Union trade mark

(Article 7 EUTMR and Rule 11(3) EUTMIR)

Alicante, 01/08/2016

BOULT WADE TENNANT

Verulam Gardens

70 Gray's Inn Road

London WC1X 8BT

REINO UNIDO

Application No:	014988001
Your reference:	JMW/RSM/T145180EM00
Trade mark:	PHACOKIT
Mark type:	Word mark
Applicant:	Help Me See Inc. 20 West 36th Street, Floor 4 New York New York 10018 ESTADOS UNIDOS (DE AMÉRICA)

The Office raised an objection on 02/02/2016 pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR 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.

The applicant submitted its observations on 02/06/2016, which may be summarised as follows:

1. The applicant submits that there is no direct and specific association between the word PHACOKIT and the relevant goods. The term KIT is vague and imprecise whereas the goods claimed are specific tools that medical practitioners will be familiar with. As PHACOKIT does not reveal what is in the kit, there can be no direct association between the mark PHACOKIT and the relevant goods. PHACOKIT is merely allusive in relation to the characteristics of the goods; it is not possible to tell what it is without further analysis and Article 7(1)(c) does not apply to terms which are only suggestive of certain characteristics of the goods.

2. The applicant submits that PHACOKIT does not lack distinctive character. The word KIT is a word in its own right and is not used as a suffix in the English language. This renders the combination of the prefix PHACO with the suffix KIT an unusual combination. The applicant submits that the joining of PHACO and KIT as one word is unique and renders the mark visually unusual, giving it distinctive character.

Pursuant to Article 75 EUTMR, 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.

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

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.

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 underlying 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).

By prohibiting the registration as European Union 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).

‘The signs and indications referred to in Article 7(1)(c) [EUTMR] 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’ (26/11/2003, T‑222/02, Robotunits, EU:T:2003:315, § 34).

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) [EUTMR], 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 …(12/01/2005, T‑367/02 - T‑369/02, SnTEM, SnPUR & SnMIX, EU:T:2005:3, § 32).

The applicant argues that part of the applied for sign, KIT, is vague and imprecise. However, as shown in the notification of the Office of 02/02/2016, the word KIT in the Collins Dictionary is defined as “a set of tools, supplies, construction materials, etc, for use together or for a purpose ⇒ ■ a first-aid kit”. There is nothing vague or imprecise with this definition. Furthermore, KIT is a noun and is the base of the expression PHACOKIT. There cannot be a prefix and suffix without a base. In the expression PHACOKIT, the prefix is PHACO- and the base is KIT. There is no suffix.

Instruments, tools, and supplies are all found in kits. When the relevant public is confronted with the sign PHACOKIT and goods such as, Surgical apparatus and instruments; surgical clips, namely, clips for microsurgery and for ophthalmic surgery; medical kit containing medical instruments and related medical supplies for use in cataract surgery, they will not understand the sign as an indication of origin, but rather as a description of the type and intended purpose of the goods that are in front of them.

As stated in the notification of 02/02/2016, the word ‘PHACOKIT’ immediately informs consumers without further reflection that the goods applied for are for a set of tools to be used on the lens of the eye or in procedures involving the lens of the eye. A common procedure related is called PHACOEMULSIFICATION CATARACT SURGERY, which is a procedure in which an ultrasonic device is used to break up and then remove a cloudy lens, or cataract, from the eye to improve vision. The insertion of an intraocular lens (IOL) usually immediately follows phacoemulsification. (information extracted from Encyclopedia of Surgery on 02/02/2016 at http://www.surgeryencyclopedia.com/Pa-St/Phacoemulsification-for-Cataracts.html).

For a trade mark to be refused registration under Article 7(1)(c) EUTMR, it is not necessary that the signs and indications composing the mark that are referred to in that Article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself 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).

It follows that the link between the word ‘PHACOKIT’ and the goods referred to in the application for registration is sufficiently close for the sign to fall within the scope of the prohibition laid down by Article 7(1)(c) and Article 7(2) CTMR.

Furthermore, given that the mark has a clear descriptive meaning in relation to the goods applied for, the impact of the mark on the relevant public will be primarily descriptive in nature, thus eclipsing any impression that the mark could indicate a trade origin.

Consequently, taken as a whole, the mark applied for – ‘PHACOKIT’ – is devoid of any distinctive character and is not capable of distinguishing the goods for which registration is sought within the meaning of Article 7(1)(b) and Article 7(2) CTMR.

For the abovementioned reasons, and pursuant to Article 7(1)(b) and (c) EUTMR and Article 7(2) EUTMR, the application for European Union trade mark No 014988001 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal against this decision. According to Article 60 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.

Herbert JOHNSTON