Refusal of application for a European Union trade mark

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

Alicante, 08/04/2016

BARDEHLE PAGENBERG PARTNERSCHAFT MBB PATENTANWÄLTE, RECHTSANWÄLTE

Postfach 86 06 20

D-81633 München

ALEMANIA

Application No:	015002702
Your reference:	L137828EMCE/lu
Trade mark:	MUSCLEGUARD
Mark type:	Word mark
Applicant:	Lonza Ltd. Lonzastrasse CH-3930 Visp SUIZA

The Office raised an objection on 22/01/2016 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 03/03/2016, which may be summarised as follows:

• When examining the descriptiveness of a sign, this shall be examined as a whole. However, the Office dissected ‘MUSCLEGUARD’ into the words ‘MUSCLE’ and ‘GUARD’, and based on this dissection it came to a wrong conclusion. The term ‘MUSCLEGUARD’ is an invented, fanciful and imaginary term not found in any dictionary and, therefore, does not convey any standard or direct message to the public. The absence of space between the words ‘MUSCLE’ and ‘GUARD’ make the sign more complex and fanciful and difficult to comprehend, and several mind steps will be needed until the relevant public come to a conclusion that it comprises the words ‘MUSCLE’ and ‘GUARD’. However, even in the relevant public would recognize in the mark the individual words ‘MUSCLE’ and ‘GUARD’, still several mind steps would be required for the establishment of a link between these individual words and the goods at issue.

• The Office has not provided a sufficient explanation of why the words ‘MUSCLE’ and ‘GUARD’ will be directly linked to the goods at issue. The definition of ‘GUARD’ given by the Office is indeed one of the various definitions; ‘GUARD’ also describes a person who keeps a protecting watch over people, and the use of this term in relation to pharmaceutical preparations and nutritional substances is unusual. ‘MUSCLE’ and ‘GUARD’ are words that belong to the basic English vocabulary. When referring to goods that have a medical use, such as the goods at hand, the relevant public is accustomed to a more complex and specific terminology, not including terms of everyday use. Since everyday terms are not commonly used in connection with goods that have a medical use, an effect of surprise is crated in the relevant public’s mind. Thus, the relevant public will not directly associate the goods applied for or their kind or intended purpose with either the words ‘MUSCLE’ or ‘GUARD’ or with ‘MUSCLEGUARD’.

• It is clear from the wording of Article 7(1)(b) EUTMR that a minimum level of distinctiveness is sufficient for the registration of a sign as a mark, and not certain level of creativity or linguistic imagination is required for its registration; the only important factor is that the in the relevant public’s perception the mark serves as an indication of commercial origin. In fact, the mark applied for exhibits at least the required minimum level of distinctiveness for its registration as a mark.

• The applicant wishes to draw the Office’s attention to the fact that the mark ‘MUSCLEGUARD’ has already been successfully registered as a US Trademark for identical goods.

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.

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.

(See judgment of 23/10/2003, C‑191/01 P, ‘Wrigley’, paragraph 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’ (judgment of 26/11/2003, T‑222/02, ‘ROBOTUNITS’, paragraph 34).

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 word mark which consists of a combination of elements, each of which is descriptive of characteristics of the goods or services, in respect of which registration is sought, itself remains descriptive of those characteristics even if the combination creates a neologism. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned (judgment of 12/07/2004, C-265/00, ‘Biomild’, para. 39 and 43).

A word mark which consists of a combination of descriptive elements remains descriptive of the characteristics, unless there is a perceptible difference between the word and the mere sum of its parts. This assumes either that, because of the unusual nature of the combination in relation to the goods or services, the 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 (judgment of 12 February 2004, C-363/99, ‘Postkantoor’, para. 100).

The rejected goods are ‘formulations of proteins, or their salts and derivatives’ and pharmaceutical preparations, medicinal preparations, dietetic substances, drinks and foodstuffs, and dietary and nutritional supplements containing L-Carnitine, leucine, creatine formulations, or their salts thereof’. The creatine helps to supply energy to all cells in the body, primarily muscle . The leucine is the only dietary amino acid with the capacity to directly stimulate muscle protein synthesis. As far as carnitine is concerned, it plays a critical role in energy production; given this key function, carnitine is concentrated in tissues like skeletal and cardiac muscle that utilize fatty acids as a dietary fuel. Therefore, there is a direct link between the word ‘MUSCLE’ and the goods applied for.

The Collins English Dictionary, amongst others, lists the following meanings for the words ‘MUSCLE’ and ‘GUARD’:

MUSCLE Noun 1. A tissue composed of bundles of elongated cells capable of contraction and relaxation to produce movement in an organ or part. 2. An organ composed of muscle tissue.

GUARD Anything that provides or is intended to provide protection

The Office finds that the term ‘MUSCLEGUARD’, in light of the targeted goods and as a whole, could be used to describe at least one of its possible meanings, i.e., substances intended to provide protection to the muscles or to any organ composed of muscle tissue.

Contrary to the applicant’s argument, the mere joining of the words ‘MUSCLE’ and ‘GUARD’, does not serve to change the descriptiveness of the term as a whole (see also judgment of 12/02/2004, C-265/00, ‘Biomild’, para. 39 and 43). Since there is no unusual variation, in meaning or in syntax, in the combination formed by the two basic English terms ‘MUSCLE’ and ‘GUARD’, the resulting term ‘MUSCLEGUARD’ designates the nature and the purpose of the goods: a substance intended to protect muscles or any organ composed of muscle tissue against possible harm or damage. From the above it follows that, other than what the applicant has asserted, there is a sufficiently direct and specific relationship between the mark applied for and the goods in question, without further thought being required from the relevant public.

Moreover, on the one hand, the applicant has not contradicted that the words of which the mark applied for consists may each be perceived as descriptive (or at least one of their possible meanings defined above), and, on the other hand, the applicant has failed to indicate how and for which reasons the mark applied for as a whole is more than the sum of its parts. In this respect, the Office notes that it is not sufficient to merely state that the mark applied for ‘MUSCLEGUARD’ does not exist in dictionaries, that other words could be used to describe the goods, or that the words of which the mark applied for consists also have other meanings than the meanings cited in the notification dated 22/01/2016. It is established case-law (see, for instance, judgement of 23/10/2003, C-191/01 P, ‘Doublemint’, para. 32), that a word mark is refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned. As has been explained above, this applies to the present case.

For a trade mark to possess distinctive character for the purposes of Article 7(1)(b) EUTMR, it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings.

The sign applied for also lacks any distinctive character and also falls foul of Article 7(1)(b) EUTMR, not only because a descriptive word mark necessarily also lacks distinctiveness, but also because, bearing the above considerations in mind, it is incapable of performing the essential function of a trade mark, namely that of identifying the origin of the goods, 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 (see judgment of 03/07/2003, T-122/01 ‘Best Buy’, para. 20).

As regards the national decisions referred to by the applicant (the mark ‘MUSCLEGUARD’ has already been successfully registered as a US Trademark for identical goods), according to case-law:

The European Union 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 European Union trade mark must be assessed by reference only to the relevant Union rules. Accordingly, the Office and, if appropriate, the Union judicature are not bound by a decision given in 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.)

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 15 002 702 is hereby rejected for all the goods claimed.

According to Article 59 EUTMR, you have a right to appeal this decision. According to Article 60(1) EUTMR, 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 720 has been paid.

Ignacio IGLESIAS ARROYO